MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
resentation is customary and advisable, particularly for managing correspondence with the registry and dealing with Office notices and actions. 4.5 Use in Commerce Prior to Registration There is no use requirement under Maltese law to be able to obtain registration. The TM Act does not require evidence of prior use, submission of an intent to use or specimens, at filing or renewal stage. How - ever, registered marks are subject to post-registration use obligations. • A trade mark must be put to genuine use in Malta within five years following the date of registration. The initial five years amount to a grace period. Fail - ing this, it would become liable to revocation for non-use upon application by a third party. • Revocation may similarly arise if its use is suspend - ed for a continuous period of five years following the lapse of the grace period, and without there being proper reasons. “Genuine use” must be for the mark as registered and in relation to the goods and services in respect of which it is registered. Use must be real and actual (ie, not merely token) and in the course of trade. Minimal use may be acceptable if justified by the nature of the market. Cancellation or revocation is not done by the Office ex officio; it requires a third-party action. 4.6 Consideration of Prior Rights in Registration In practice, the Office’s examination is limited to for - mal admissibility and the absolute grounds. Conflict - ing prior rights may be raised at opposition stage by interested third parties. Prior rights include earlier reg - istered trade marks (EUTMs, trade marks registered in Malta, international registrations designating the EU under the Madrid Protocol, “well-known” marks); ear - lier unregistered trade marks used in Malta; and earlier rights obtained in copyright or designs. 4.7 Revocation, Change, Amendment or Correction of an Application An applicant may amend a trade mark application during the registration procedure, subject to certain limitations. Amendments are generally allowed only to correct:
• the name or address of the applicant; • errors of wording or copying; or • obvious mistakes,
provided it does not substantially affect the identity of the trade mark or extend the goods or services covered by the application. An applicant may also restrict or limit the goods and services covered by the applications. A request for amendment must be made to the Comptroller for approval. Amendments cannot materially alter the character of the mark as filed. Typical examples of impermissible changes include: • changing a word mark to a logo mark or vice versa; • altering the essential visual elements of a figurative mark; and • adding new goods or services outside the scope of the original application. Substantial changes that go beyond clerical correc - tions or limitation of goods/services typically require a new application. 4.8 Dividing a Trade Mark Application An applicant may divide a national trade mark applica - tion into two or more separate applications by sending a declaration to the Office. This must indicate, for each divisional application, the goods or services covered by the original application which are to be covered by the divisional applications. Division of trade mark registrations is also possible. 4.9 Incorrect Information in an Application As mentioned in 4.7 Revocation, Change, Amend- ment or Correction of an Application , correction is generally permitted for clerical or obvious errors (eg, applicant name, address, classification errors). Mate - rial changes (eg, change of applicant, addition of new goods/services outside the original scope, or changes affecting the distinctive character of the mark) are not permitted and would generally require a new applica - tion filing.
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