MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
• applicable EU copyright and trade mark laws; and • Malta’s domestic implementation of its internation - al obligations, including the principles of “national treatment” and “most-favoured-nation treatment” under the Paris Convention, Berne Convention and TRIPS. 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Maltese law recognises a broad range of possible trade mark types, including: • word marks; • figurative marks consisting of logos, stylised text or graphic elements; • composite marks, combining word and figurative elements; and • non-traditional marks, such as shapes, slogans, sounds, patterns, positions. Effectively, any sign (including “non-traditional” types) could in principle be eligible for trade mark registra - tion in Malta so long as they meet the requirements of distinctiveness, are capable of being represented in a clear and precise manner and do not fall foul of any absolute grounds for refusal. However, some non- traditional marks, such as scents or tastes, are difficult to register in practice, due to difficulties in meeting the representation requirements. The TM Act expressly recognises collective marks, which distinguish the goods or services of members of an association from those of non-members; and certification marks, which certify characteristics such as quality, origin, material or method of manufacture. Both are subject to specific regulatory requirements, including the filing of governing regulations describing conditions of use. Trade Dress Trade dress, including the overall appearance of a product or its packaging, may be protected as a reg - istered trade mark only where it is capable of distin - guishing origin and is not excluded by functionality rules. Unregistered distinctive devices can benefit
from protection against confusing uses under the unfair competition provisions in the Commercial Code. Geographical Indications Geographical indications (or designations of origin) are not protected as trade marks per se under Maltese trade mark law. They are protected under separate EU regimes applicable to foodstuffs, wines and spirits. Signs that consist exclusively of geographical indica - tions for protected products are generally excluded from trade mark registration. Surnames Surnames may in principle be registered as trade marks, provided they are distinctive. In practice, com - mon surnames are likely to face objections and would possibly require a showing of acquired distinctiveness through use to obtain registration. Shapes and Functionality Maltese law excludes from registration signs that con - sist exclusively of: • the shape or characteristics resulting from the nature of the goods; • shapes necessary to obtain a technical result; and • shapes that give substantial value to the goods. Industrial Designs Industrial designs may obtain trade mark registration if the design has a distinctive character and, in par - ticular, does not fall within the functionality exclusions. Statutory Protection for Special Marks State emblems, flags and official insignia are excluded from registration under the TM Act (unless authori - sation is obtained) and protected under international conventions. At time of writing, Malta has not formally acceded to the Nairobi Treaty, but conditions on the use of Olympic symbols are imposed on the Malta Olympic Committee and its members. Well-Known Marks Well-known marks in terms of the Paris Convention are also afforded protection in Malta. The TM Act defines these as trade marks that are well-known in Malta and belong to a person who is a national of, or has a real and effective industrial or commercial
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