MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
with a further EUR100 payable if the opponent main - tains its opposition following receipt of the applicant’s counterstatement or amendment. Maltese law does not expressly limit who may initi - ate revocation or invalidation proceedings before the courts; however, claimants must demonstrate a sufficient juridical interest. By contrast, revocation or invalidation actions before the Comptroller as an office action are generally limited to proprietors of earlier trade marks. 5.4 Opposition or Revocation/Cancellation Procedure Oppositions Please see 5.1 Timeframes for Filing an Opposition or Cancellation . An opposition may be based on one or more earlier rights and may target all or part of the goods or ser - vices covered by the application. Where a counter - statement is filed, the opponent has 90 days to con - firm whether it wishes to maintain the opposition and to submit further arguments and evidence, followed by a final response from the applicant. Proceedings are conducted in writing, typically without hearings or oral submissions, and conclude with a decision of the Comptroller, which is notified by email and subject to appeal. Revocation and Invalidation Revocation and invalidation actions may be brought either before the Comptroller as an office action or before the First Hall of the Civil Court by sworn appli - cation. Once concluded before the Comptroller, the same action on the same grounds cannot be brought before the courts, and standing requirements may limit who can initiate it before the Comptroller. Such actions may be brought against all or part of the regis - tered goods or services, and a mark may be declared partially invalid or revoked, including for non-use. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Decisions of the Comptroller and Civil Court are sub - ject to appeal before the Court of Appeal. Timeframes are 15 days from the date of service (in the case of Comptroller decisions) and 30 days from the date of
the decision (in the case of court decisions). Decisions need to be final before they can be appealed. How - ever, where a revocation or invalidity action has first been instituted before the Comptroller, the claimant may at any stage bring the same action on the same grounds before the court, in which case the Comptrol - ler proceedings will discontinue. 5.6 Amendment in Revocation/Cancellation Proceedings The proprietor of the contested trade mark may, including in the course of any revocation or cancel - lation proceedings, surrender the mark’s registration in respect of some or all its goods or services. Oth - erwise, amendments are generally not possible post- registration. The claimant may withdraw all or some of the grounds relied upon; however, in principle new grounds cannot be raised once the proceedings have been instituted (aside from exceptional situations). 5.7 Combining Revocation/Cancellation and Infringement In Malta, infringement actions can only be brought before the courts. A claim for revocation or invalidation may be raised as a counterclaim in an infringement action; in such cases, both matters are heard together and typically determined in a single judgment. Coun - terclaims may also be raised to an invalidation action – eg, to challenge the earlier rights relied upon. 5.8 Measures to Address Fraud Trade mark applications can be refused registration and, if registered, declared invalid if shown to have been made in bad faith. These would require either bringing an opposition or invalidation action. If bad faith is established, the trade mark will be refused or cancelled.
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
Under Maltese law, both registered and unregistered trade marks may be assigned. In particular, a regis - tered trade mark is: (i) transmissible by assignment, testamentary disposition or operation of law as other personal or moveable property; and (ii) may be trans -
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