MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
2.4 Use in Commerce To succeed in an infringement action, the proprietor must show that the defendant’s use is: (i) in a trade mark sense (ie, indicator of origin); (ii) in the course of trade; and (iii) in relation to goods or services. Prohib - ited uses include: • affixing the sign to goods or packaging; • selling, offering, or stocking goods under the sign; • importing or exporting goods under the sign; • using the sign as a trade or company name; • using the sign in business papers or advertising; and • using the sign in comparative advertising contrary to Directive 2006/114/EC. A proprietor may prohibit the use of a sign only to the extent that its rights are not subject to revocation. Non-use can be used as a defence in infringement proceedings and, at the defendant’s request, the pro - prietor may be required to furnish proof of genuine use of the mark in the five years preceding the action. Occasional, sporadic or token use is generally insuf - ficient. 2.5 Notices and Symbols Owners may use the ® or TM symbol, but this is not mandatory and they have no legal status per se. Use of ® or similar symbols is reserved for registered marks. Where a mark is not registered, it would con - stitute an offence to make use of such markings on it or imply that it is registered. 2.6 Related Rights Logos, designs and other creative works used as trade marks can also be protected by copyright under the Copyright Act if they qualify as eligible works (eg, have an original character). Dual protection is not in principle barred under Maltese law. A distinctive logo may, for instance, be registered as a trade mark and simultaneously also enjoy copyright protection. Malta recognises moral rights under the Copyright Act, including the right to be identified as the author of a work. In practice, moral rights should not operate to prevent the registration or use of a surname as a trade mark, provided it does not misrepresent authorship or
harm the individual’s reputation. Lack of distinctive - ness would be the more likely obstacle in such case.
3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works Copyright protection arises automatically upon crea - tion of an eligible work and is not conditional upon registration. No registration, deposit or other formality is required to enforce copyright in a protected work. There is also currently no system of voluntary copy - right registration or deposit in Malta. For a work to qualify for protection under the Copyright Act, the author must be a citizen of Malta, domiciled or perma - nently resident in Malta, or the work must otherwise qualify for protection by virtue of Malta’s obligations under international copyright treaties. Legal entities constituted or established under Maltese law, or under the law of a country benefiting from reciprocal protec - tion, may also hold and enforce copyright. The cat - egories or types of eligible works that are explicitly recognised are as follows. • Artistic works – including paintings, drawings, sculptures, photographs, works of architecture, works of artistic craftsmanship. • Audiovisual works – films, video recordings and multimedia presentations. • Databases – collection of independent works, data or materials that are arranged in a structured or methodical way and individually accessible by electronic or other means. • Literary works – including novels, plays, letters, textbooks, choreographic works, reports and com - puter programs. • Musical works – for example, compositions, includ - ing lyrics and scores. The Copyright Act also grants neighbouring rights to performers, producers and broadcasters. These rights grant exclusive control over the fixation, reproduction, distribution and communication to the public of their performances, sound recordings and broadcasts. It also provides for a sui generis database right for databases where there has been a substantial invest- ment in obtaining, verifying or presenting the contents,
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