MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
establishment in, a Paris Convention country. While the mark needs to be well-known in Malta, its proprie - tor does not actually have to carry on business or have goodwill in Malta. 2.2 Essential Elements of Trade Mark Protection Under Maltese law, a sign must meet certain essential requirements to obtain registration. • Distinctiveness: (a) the mark must be capable of distinguishing the goods or services of one undertaking from those of others. • Capability of representation: (a) the mark must be represented clearly and pre - cisely in the trade mark register. For example, this could require providing images, or MP3 files in the case of sound marks, or MP4 marks in the case of motion or multimedia trade marks. • Absolute grounds: (a) marks that are contrary to public policy, moral - ity, or excluded under functionality rules (eg, shapes necessary for technical results) cannot be registered; and (b) the mark must not fall afoul of any of the other absolute grounds for refusal. When a mark does not possess minimum inherent distinctiveness, it may still be eligible for registration if it has acquired distinctiveness through use in Malta (secondary meaning). A party can demonstrate acquired distinctiveness by providing evidence on: • length and scope of use in Malta; • market share and sales figures showing commer - cial recognition; • advertising and marketing campaigns demonstrat - ing public awareness; • customer surveys or testimony indicating public association of the mark; and • recognition in trade publications or awards.
The Industrial Property Registrations Directorate (IPRD or the “Office”) or, in the case of an appeal, the courts would consider factors such as: • duration and continuity of use (eg, longer, consist - ent use strengthens the case); • geographical extent of use; • intensity and extent of advertising under the mark; • volume of sales – high sales may indicate recogni - tion in the market; and • evidence of recognition (such as consumer sur - veys, media coverage, awards). 2.3 Trade Mark Rights Trade mark registration confers various benefits under Maltese law, including: • exclusive rights are granted to the proprietor of the mark for the use of that mark in connection with the goods and services covered by it; • the proprietor of a registered trade mark may prevent the use in the course of trade of any identi - cal or similar sign in relation to identical or similar goods or services, where such use gives rise to a likelihood of confusion, including association. Where the registered mark has acquired a reputa - tion, the proprietor may also prevent the use of an identical or similar sign in relation to any goods or services, including dissimilar ones, where the use is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or reputation of that mark. These (relative) grounds can also be used by a proprietor to oppose and prevent the registration of a later mark; • a registered trade mark entitles its proprietor to anti-counterfeit measures (see 10.5 Customs Sei- zures of Counterfeits or Parallel Imports ); and • registered trade marks may also be given as secu - rity (eg, pledges). Not all trade mark rights necessarily subsist for the entire duration of the registration; for example, reg - istrations may become liable to revocation for non- use for a period of five years or where it has become generic or misleading (such as to the nature, quality etc).
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