MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
6.3 Registration or Recording of an Assignment or Licence Please refer to previous responses in 6. Assignments and Licensing . 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Civil actions under the TM Act are subject to a limita - tion period of five years. Invalidation actions are also precluded where the proprietor has acquiesced to the use of a later, registered trade mark for a period of five successive years, unless it was filed in bad faith. Actions for damages arising from copyright infringe - ment are subject to the general two-year limitation period for tort actions under the Civil Code, Chapter 16 of the laws of Malta. Delay is normally a relevant factor in interim measures, such as PIs, and could be detrimental to their grant, particularly where deemed to have been unreasonable. 7.2 Legal Claims for Infringement Lawsuits and Their Standards In trade mark matters, registration is not an absolute prerequisite for legal protection; however, the nature and extent of remedies available differ according to whether the mark is registered. Unregistered marks may be protected on the basis of prior use pursu - ant to the Commercial Code, which prohibits traders from using a name, mark or other distinctive sign that is capable of creating confusion with a sign lawfully used by another trader, irrespective of registration. Remedies available include damages and interest or (at the claimant’s option) a penalty to be fixed by the court and capped at EUR4,658.75, injunctive relief and destruction orders. For registered trade marks, infringement actions under the TM Act arise in situations of: (i) double identity, namely the use of identical marks for identical goods or services; (ii) likelihood of confusion, involving identi - cal or similar marks used for identical or similar goods or services; and (iii) cases where a later mark, without due cause, takes unfair advantage of, or is detrimental
ferred separately from any transfer of the undertaking and in respect of some or all of the goods or services for which it is registered. The assignment of a reg - istered mark is not effective unless made in writing. Recordal of the assignment is not mandatory for its validity. However, until such time that it is recorded, it will be ineffective against good-faith third parties who acquire conflicting rights. Copyright and neighbouring rights are also transmis - sible by assignment, operation of law or by testamen - tary disposition as movable property. An assignment of copyright or neighbouring must be made in writing to have effect. Moral rights of authors or performers are not transmissible during their lifetime. They may be limited in scope, duration and/or territory, and apply to all or only to certain exclusive acts. They can be granted for the whole term of protection or only part of it. 6.2 Licensing Requirements or Restrictions A registered trade mark or pending application may be licensed for some or all of the goods or services and for the whole or part of Malta, on an exclusive or non-exclusive basis. Recordal of the licence is not required. However, until it is filed, the licence is inef - fective against good-faith third parties who acquire conflicting rights. The licensee cannot bring infringe - ment proceedings in its own name and is not entitled to damages or an account of profits unless the licence is recorded, or an application for recordal is filed with - in six months of the grant, or as soon as practicable thereafter where timely filing was not possible. Copyright and neighbouring rights may also be the subject of a licence. A licence may be granted for all or some of the acts controlled by copyright or neigh - bouring right. It may be exclusive or non-exclusive, limited to a specified territory or part of the copyright term. The licence must be made in writing in order to have effect. An assignment, licence or testamentary disposition may be granted or made in respect of a future work or an existing work in which copyright or a neighbouring right does not yet subsist.
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