MALTA Law and Practice Contributed by: Deo Falzon, Fenech & Fenech Advocates
measures can help it retain exclusivity beyond the expiration of patent protection. 8.2 Cumulative and Overlapping Protection There are no judicial or statutory limits on claiming overlapping protection as long as each IP regime’s requirements are independently satisfied. Naturally, some IP rights are better suited than others to protect specific creations and it is always advis- able to assert the most appropriate IP right. If multiple rights are asserted in a dispute, it depends on whether they are asserted concurrently in the claims or in a hierarchical manner. It is expected that if an earlier hierarchical right is established, the court would not have to delve further into the other rights and would decide based on the first right claimed and proven. 8.3 Patents and Trade Secrets Confidential know-how or technical information may be protected as a trade secret before and during a patent application, provided it satisfies the criteria of a trade secret. Only information actually disclosed in the patent fil- ing is affected. Publication of a patent application (or grant of a patent) destroys trade secret protection for the disclosed subject matter, as it enters the public domain and trade secrets cannot be used to extend exclusivity over what has been publicly taught. However, undisclosed ancillary or implementation know-how, such as manufacturing processes, opti- misation data or improvements not revealed in the patent, may technically continue to enjoy trade secret protection (subject to the ongoing satisfaction of the trade secret criteria). Theoretically, trade secret pro- tection can survive the expiry or invalidation of a pat- ent, but solely in respect of information that was never publicly disclosed. 8.4 Trade Marks, Trade Dress and Industrial Designs Trade marks and industrial designs have separate and distinct criteria, as set out in the relevant sections
above. Trade Dress, as such, is not a recognised right; however, trade dress or get-up can be protectable under a variety of rights, depending on the elements of the trade dress itself. If it can act as a source of origin, it can be protected via a trade mark or unfair competition rights, which protect distinctive signs. If it meets the criteria for a design right, it may also be eligible for design protection. 8.5 Copyright and Trade Marks Under Maltese law, logos, artistic elements and brand- ing may benefit from cumulative copyright and trade mark protection where they satisfy the independent requirements of each IP right. Copyright arises auto- matically where the branding element constitutes an original work of authorship, protecting its expressive and artistic aspects, while trade mark law protects the same sign insofar as it functions as a source of origin and meets the requirements of distinctiveness and registrability. There is no statutory hierarchy between the two rights: copyright cannot be used to secure trade mark-like exclusivity over non-distinctive or functional signs, nor can trade mark protection be enforced to control purely artistic expression that does not give rise to a likelihood of confusion. 8.6 Enforcement and Remedies Across Multiple IP Rights In multi-faceted infringement cases, it is common to assert multiple IP rights. However, when determining damages, courts focus on the actual economic harm suffered and any unjust enrichment, rather than the number of rights infringed. 8.7 International and Cross-Border Considerations Malta is a Member State of the European Union and therefore, cross-border considerations can arise when asserting regional rights, such as the European Union Trademark and its own jurisdictional cascade rules set out in the EU TM Regulation. More broadly, Brus- sels I Recast is also applicable from a private interna- tional law perspective and, in general, the courts rely on CJEU interpretations on matters that have been transposed from the directive into Maltese Law.
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