MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
4.10 Refusal of Registration Article 5 of the TM Act sets out the absolute grounds for refusal or invalidity, which may be raised ex offi - cio at examination stage by the Office. These include (amongst others) signs that cannot constitute a trade mark, including trade marks devoid of distinctive char - acter; trade marks consisting exclusively of descrip - tive indications relating to the purpose, value, qual - ity, kind, geographical origin, time of production, or other characteristics of the goods or services; signs consisting solely of the shape or other characteris - tics resulting from the nature of the goods, neces - sary to achieve a technical result, or giving the goods substantial value; and trade marks that are deceptive or contrary to public policy or accepted principles of morality. Potential refusals relating to non-distinctiveness, descriptiveness or shape marks may be overcome by establishing that the mark acquired a distinctive character through use in Malta prior to its date of filing. Applicants are given the opportunity to provide repre - sentations in reply to an examination deficiency notice or amend the application, typically under a timeframe of 90 days. If the refusal is maintained, the applicant may appeal to the Court of Appeal. 4.11 The Madrid System At the time of writing, Malta is not yet formally a con - tracting party to the Madrid Protocol and relies on its EU membership to benefit from the advantages offered through the Madrid system. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Upon completion of examination, the application is published for opposition for 90 days. If an opposition is filed within this period, registration is suspended pending the opposition’s withdrawal or rejection. However, if upheld, the application is refused, subject to appeal before the Court of Appeal. Late opposi - tions are not considered. The Office first examines the admissibility of the opposition and, if accepted, notifies the applicant, who has 90 days to withdraw
the application, limit the goods or services, or file a counterstatement. Revocation and invalidation actions are not subject to statutory limitation periods in Malta; however, invalida - tion is barred where the proprietor has acquiesced for five successive years to the use of a later registered trade mark, unless the later mark was filed in bad faith. 5.2 Legal Grounds for Filing an Opposition or Cancellation Opposition The grounds on which an opposition may be brought are the relative grounds for refusal set out in the TM Act. These include cases of double identity, a likeli - hood of confusion, and situations where the use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier mark. Additional grounds may arise where, on the application or priority date, there exists a mark that is well known in Malta, or where a person holds earlier rights in an unregis - tered trade mark or an earlier right under copyright or a design right entitling that person to prohibit the use of the filed mark. Cancellation and Revocation An invalidation action may be brought on the ground that it should not have been registered in the first place based on the absolute grounds for refusal, or because it conflicts with an earlier right on the basis of the relative grounds for refusal (outlined above). Revo - cation actions may be brought on the basis of non-use (please see 4.5 Use in Commerce Prior to Registra- tion ). If the action is successful, the registration will be cancelled from the register. Where invalidated, the trade mark will also be deemed to not have had, as from the outset, the effects of its registration. 5.3 Ability to File an Opposition or Revocation/Cancellation Oppositions may be filed primarily by proprietors of earlier rights. Licensees and other persons entitled under applicable law (such as GI holders) may also oppose, subject to proof of authorisation or entitle - ment. The main categories of earlier rights are outlined in 4.6 Consideration of Prior Rights in Registration. A notice of opposition is subject to a EUR100 filing fee,
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