MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
goods and services that are dissimilar, or there otherwise exists no likelihood of confusion; • in the context of an action claiming unfair advan - tage or detriment to distinctive character or repu - tation, that the earlier trade mark does not have a reputation in Malta or, where based on an EUTM, a substantial part of the European Union and there is due cause for the use of the contested sign; or • that the defendant, in accordance with honest commercial practices: (a) is a natural person making use of their own name or address; (b) is using a sign or indication that is not distinc - tive or is otherwise descriptive in relation to the goods and services (including their character - istics); or (c) is using the mark to identify or refer to goods or services as those of the trade mark owner, such as to indicate the intended purpose of a product. Enforcement is also restricted by rules relating to acquiescence, invalidation and revocation. A trade mark proprietor who has not put the mark to genuine use in Malta for a continuous five-year period risks revocation. Likewise, where the proprietor of an earlier trade mark has acquiesced for five successive years in the use of a later registered trade mark, they are pre - cluded from seeking invalidity or opposing use, unless the later mark was applied for in bad faith. In addition, the doctrine of exhaustion is incorporated in the TM Act. It prevents a trade mark proprietor from opposing further commercialisation of goods that have been lawfully placed on the EU market under that trade mark by or with the proprietor’s consent, save where legitimate reasons exist, such as where the condition of the goods has been changed or impaired. Civil actions under the TM Act are also subject to a limitation period of five years. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Malta does not have a specific statutory “fair use” or “fair dealing” exception for copyright actions. The Copyright Act does however include an extensive list of exceptions and limitations referring to specific situ -
ations; most of which are directly reproduced from Articles 5 and 6 of the Information Society Directive. Amongst them are an exception permitting the repro - duction or communication to the public of a work of caricature, pastiche or parody. The concept of parody would be assessed in Malta in accordance with EU law and related CJEU case law (which has held in cases such as Deckmyn that it is an autonomous con - cept of EU law). Neither the TM Act nor the Copyright Act include a specific free speech defence, although there is a copyright exception relating to the use of quotations for criticism or review. Freedom of expres - sion is also constitutionally guaranteed and protected The TM Act recognises exhaustion; a proprietor can - not prevent use of a trade mark in relation to genuine goods that have been lawfully placed on the market in the Union by the proprietor or with its consent. Exhaustion does not apply where the goods are not genuine goods or where there exist legitimate reasons for the proprietor to oppose further commercialisation, such as where the condition of the goods has been altered or impaired after being placed on the market (eg, through repackaging, relabelling or co-branding). Copyright The concept of exhaustion also exists under the Copyright Act, specific to the distribution right. The first sale or other transfer of ownership of an original work or its copies within the EU, made by or with the consent of the copyright owner, exhausts the exclu - sive distribution right. The market in this context refers to the European Union. The Copyright Act does not include specific exhaustion rules relating to digital content; however, EU rules and case law would gen - erally apply (eg, exhaustion can in principle arise for perpetual software licences). under Maltese law. 9.3 Exhaustion Trade Marks
10. Remedies 10.1 Injunctive Remedies
The IPR Enforcement Act provides for specific pro - visional and precautionary measures in cases of IP rights infringement. In relation to PIs, case law
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