MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration
be filed within the six months prior to the registration expiry date. A trade mark may still be renewed within six months after its expiry date, subject to payment of a late renewal fee. If, however, the registration is still not renewed within this additional grace period, the Comptroller will proceed to remove the trade mark from the register. No proof of use is required at renewal stage. However, a mark that has not been put to genuine use for a continuous period of five years following registration, and without legitimate reasons, may be vulnerable to revocation actions for non-use. These would be third- party actions. If a trade mark has been removed from register, its restoration could be possible if the Comptroller, after considering the circumstances of the case, is satisfied that it is just to do so. A request for restoration must be filed within six months from the date of removal and must be accompanied by the appropriate renewal and restoration fees. 4.4 Application Requirements The standard procedure includes: • filing a trade mark application with the IPRD; • examination by the office (formalities and absolute grounds); • publication of the application; • opposition period for third parties; and • registration if no opposition is filed or if opposition is unsuccessful. A single application needs to be filed for each different class of goods/services under the Nice Classification. A filing fee of EUR115 is currently levied per applica - tion. Separate fees apply for renewal, opposition and other actions. A trade mark can be applied for by any natural or legal person and, in the case of collective marks, by any associations of manufacturers, produc - ers, suppliers of services or traders as well as legal persons governed by public law. There are no nationality or residency restrictions on ownership. Foreign applicants are not required by statute to appoint a Maltese attorney or trade mark agent to file and register a mark. However, local rep -
Registration is not strictly required to acquire rights in the use of a trade mark. Unregistered signs used in the course of trade in Malta can benefit from protection through the unfair competition provisions in the Com - mercial Code. The TM Act also extends protection to “well-known” marks within the meaning of Article 6bis of the Paris Convention. Please refer to 2.3 Trade Mark Rights , outlining the rights and benefits that can be obtained from registra - tion. In addition, being able to produce a registration certificate could serve as useful evidence for facilitat - ing the grant of interim measures, such as preliminary injunctions (PIs). Registrability is in principle assessed according to the same requirements, regardless of the type of mark (ie, distinctiveness, capable of representation and absolute grounds of refusal). In practice, secondary meaning may be required for trade dress and other non-traditional marks. 4.2 Trade Mark Register Malta maintains an official trade mark register admin - istered by the Commerce Department. It records national Maltese trade mark applications and regis - trations. This register is publicly available and may be searched by third parties. It is normal and recommended practice to conduct pre-filing clearance searches. Company name registers, domain name registers and online searches can also be used to identify any existing unregistered trade marks that are in use in Malta. Unregistered trade marks having prior use can be used in Malta as the basis to oppose a trade mark application. 4.3 Term of Registration A registered trade mark in Malta is protected for a term of ten years from its date of filing. The registration may be renewed indefinitely for successive ten-year peri - ods, subject to renewal procedures. Renewals may
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