Trade Marks 2020 Comparisons

Last Updated February 26, 2020

Contributed By GTG Advocates

Law and Practice

Authors



GTG Advocates is a full service corporate and commercial law firm specialising in technology, media, telecommunications, data protection, gaming and betting, cryptocurrencies and DLTs and intellectual property laws. Established over 20 years ago, GTG Advocates has around 30 personnel with offices in Valletta, Malta. The firm provides expert advisory services in intellectual property, especially in relation to technology clients, and provides the full suite of legal services ranging from litigation, registration and portfolio management, advisory, due diligence and transactional services. GTG Advocates has been at the forefront of major legal developments in Malta over the last two decades, having been notably engaged to contribute on various legal frameworks relating to blockchain, virtual financial assets, telecommunications, data protection and e-signatures. All lawyers at GTG Advocates are eligible to practise before the Supreme Maltese courts.

Under the Trademarks Act (Chapter 597 of the Laws of Malta, the “TM Act”), a “trade mark” may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing  the  goods  or  services  of  one undertaking from those of other undertakings and being  represented  on  the  register  in  a  manner which  enables  the  competent  authorities  and  the  public  to determine the clear and precise subject matter of the protection afforded to its proprietor.

Trade mark rights arise under the TM Act by way of successful registration. Apart from conventional trade marks, the TM Act also caters for famous marks, collective marks and certification marks. 

Trade mark rights arise by way of successful registration under the TM Act. All Maltese trade marks are subject to the same standards for registration purposes, namely they must not fall foul of absolute and relative grounds of refusal (see 1.4 Registration Requirements).

Additionally, the concept of “unregistered marks” is recognized under Maltese Law in terms of the Commercial Code (Chapter 13 of the Laws of Malta) and such concept derives from unfair competition principles. Rights to such unregistered marks arise by way of use.

Malta’s trade mark register is publicly available for free and is operated by the Intellectual Property Registrations Directorate (“Malta IPRD”), forming part of the Commerce Department.

In professional legal circles, it is standard practice to search for prior trade marks, both registered and unregistered, before applying to register a trade mark in Malta.

In terms of sources for trade mark searches, like in most other countries “TMView” is the source that is typically relied upon. The Malta IPRD also operates its own trade mark search engine services through , which is ultimately powered by TMView. Searches of unregistered marks tend to be limited to desktop online searches and searches of certain public trade registers.

For a trade mark to be successfully registered in Malta, it must not fall foul of absolute and relative grounds of refusal as set out within the TM Act. See 1.7 Refusal of Registration for absolute and relative grounds of refusal.

There are no restrictions on who can apply to register a trade mark in Malta, and in fact, Maltese trade marks can be registered by both natural and legal persons, irrespective of whether such are Maltese or otherwise.

In terms of types of trade marks which can be submitted for registration, in principle any type of mark could be submitted for registration, although the Malta IPRD specifically caters for word marks, figurative marks, figurative with words marks, slogans, 3D marks, sound marks, positions trade marks, hologram trade marks, pattern trade marks, shape marks, motion marks and multimedia trade marks.

In terms of the materials necessary to apply for a trade mark, aside from proprietor’s and representative’s details (if applicable) and a description of the goods and services to be covered by the trade mark application in terms of the Nice Classification, the specifics slightly vary depending on the type of trade mark applied for. For example, word marks require provision of the specific word to be protected, while figurative-type marks require provision of an image file depicting the figurative-type mark, together with specifying the colour-value if colour is to be claimed. Sound marks require submission of an MP3 file with the sound mark claimed while holograms, motion marks and multimedia marks typically require an MP4 file or an image. 

Certain technical specifications apply as to the format in which the mark is supplied, for example, figurative marks require provision in JPEG format, having an individual file size which cannot exceed 1MB and should have a maximum image size of 1000 x 1000 pixels, minimum image size of 600 x 600 pixels, maximum 300 DPI and be in RGB colour type.

When external legal counsel is appointed to file a trade mark, it is standard practice that a power of attorney is also required.

A prescribed fee due to the Malta IPRD must also be settled, which fee is due per class covered by a trade mark application.

Once a trade mark application is received by the Malta IPRD, the Malta IPRD reviews it for acceptance purposes both from an absolute and relative grounds of refusal perspective. The application is then published within a month or two from date of filing depending on whether the Malta IPRD requests any clarifications, and third parties may file an opposition. If no prosecutorial issues are raised, a trade mark is registered, typically three to five months from the date of filing.

The trade mark filing system operated by the Malta IPRD does allow for multi-class applications when filing trade marks in practice, although in procedural and legal terms, each class is treated as a separate trade mark application.

Series marks are not recognised as a concept under Maltese Law.

A trade mark may be refused registration by the Malta IPRD either on the basis of absolute grounds of refusal or on the basis of relative grounds of refusal.

The TM Act deems the following to amount to absolute grounds for refusing a trade mark:

  • signs which cannot constitute a trade mark;
  • trade marks which are devoid of any distinctive character;
  • trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
  • trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
  • signs which consist exclusively of:
    1. the shape, or another characteristic, which results from the nature of the goods themselves;
    2. the shape, or another characteristic, of goods which is necessary to obtain a technical result; and
    3. the shape, or another characteristic, which gives substantial value to the goods;
  • trade marks which are contrary to public policy or to accepted principles of morality;
  • trade marks which are of such a nature as to deceive the public or likely to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services;
  • trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention;
  • trade marks which are excluded from registration pursuant to European Union (EU) legislation or the laws of Malta, or to international agreements to which the EU or Malta is party, providing for protection of designations of origin and geographical indications;
  • trade marks which are excluded from registration pursuant to EU legislation or international agreements to which the EU is party, providing for protection of traditional terms for wine;
  • trade marks which are excluded from registration pursuant to EU legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed;
  • trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with EU legislation or the laws of Malta, or international agreements to which the EU or Malta is party, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species;
  • trade marks which consist of a representation of the national flag of Malta. Although on this point one must note that the TM Act appears to create a conflicting scenario when it also provides that a trade mark which contains same representation is not registered if it appears to the Comptroller of Industrial Property that the use of the trade mark is misleading or grossly offensive;
  • the use of the trade mark may be prohibited pursuant to provisions of law other than trade mark law of Malta or of the EU;
  • the trade mark includes a sign of high symbolic value, in particular a religious symbol; and
  • the trade mark includes badges, emblems and escutcheons other than those covered by Article 6 ter of the Paris Convention and which are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the laws of Malta.

Moreover, where the Malta IPRD is not satisfied that consent for the following type of marks, was given by or on behalf of the President of Malta or the Archbishop, such marks will be refused registration:

  • the arms, or any of the principal armorial bearings of the arms appertaining to the President or the Roman Catholic Archbishop of Malta, or any insignia or device so nearly resembling such arms or any such armorial bearing as to be likely to be mistaken for them or it;
  • a representation of the Presidential or Episcopal flags;
  • a representation of the President or the Archbishop, or any colourable imitation thereof; or
  • words, letters or devices likely to lead persons to think that the applicant either has or recently has had Presidential or Episcopal patronage or authorisation.

The TM Act simultaneously outlines several other absolute grounds of refusal in relation to the Paris Convention:

  • trade marks consisting of or containing the flag of a country party to the Paris Convention cannot be registered unless the competent authorities of the party country authorise such use. There may be cases where the Comptroller of Industrial Property deems the requirement of authorisation as unnecessary;
  • trade mark consisting of or containing of the armorial bearing or any other State emblem of a Paris Convention country, protected under the Paris Convention, shall not be registered without the authorisation of the competent authorities of that country;
  • trade marks which consist of or contain an official sign or hallmark indicating control and warranty adopted by a Paris Convention country shall not, where the sign or hall mark is protected under the Paris Convention, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty. Such would not amount to absolute grounds of refusal where authorisation of the competent authorities of the country concerned is granted;
  • trade marks which consist of or contain emblems, abbreviation or name belonging to international intergovernmental organisations which are protected by the Paris Convention. This absolute ground of refusal is also limited in cases where there is authorisation or else the Malta IPRD is of the opinion that the public will not be misled.

In cases where the signs are not flags or emblems but imitate such flags or emblems from a heraldic point of view, the aforementioned absolute grounds of refusal shall also apply.

Grounds of absolute refusal to register a trade mark are also grounds for declaring a trade invalid post registration. To this end, a trade mark may also be declared invalid, even post registration, where the application was made in bad faith. 

On the other hand, relative grounds of refusal constitute instances where the trade mark:

  • is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; and
  • due to its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, including the likelihood of association by the public with the earlier trade mark.

Further relative grounds of refusal include instances where:

  • the trade mark is identical with, or similar to, an earlier trade mark irrespective of whether the goods or services for which the trade mark is applied or registered are identical with, similar to or not similar to those for which the earlier trade mark is protected, where the earlier trade mark has a reputation in Malta or, in the case of an EU trade mark, has a reputation in the EU and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;
  • an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's authorisation, unless the agent or representative justifies his action;
  • to the extent that, pursuant to EU legislation or the laws of Malta providing for protection of designations of origin and geographical indications:
    1. an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the laws of Malta prior to the date of application for registration of the trade mark or the date of the priority claimed for the application, subject to its subsequent registration; and
    2. that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom, the right to prohibit the use of a subsequent trade mark;
  • rights to a non-registered trade mark or to another sign used in the course of trade, were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of the subsequent trade mark; and
  • the use of the trade mark is prohibited by virtue of an earlier right and protected by means of copyright or registered designs.

If it appears to the Malta IPRD that the requirements for registration of a trade mark application are not met, the Malta IPRD informs the applicant and gives an opportunity to the applicant to make representations or to amend the trade mark application within such period as the Malta IPRD may specify. Objections to decision of the Malta IPRD may then be appealed before the Court of Appeal within fifteen days from service of the Malta IPRD’s decision.

The Malta IPRD does consider the existence of prior rights in its examination of an application for registration.

Prior rights may be claimed in relation to earlier registered trade marks, where such trade marks have been registered at an earlier date than the application for a new trade mark, such earlier trade marks may include: marks registered within the EU trade mark system, trade marks registered in Malta and trade marks registered under international arrangements which have effect in Malta. EU trade marks which claim seniority also give rise to prior rights.

Moreover, as outlined in 1.7 Refusal of Registration, prior rights belonging to an earlier registered trade mark may also give rise to relative grounds of refusal of a new trade mark application.

Unregistered trade marks also may prevent a person from registering a trade mark on the basis of relative grounds of refusal. However, it is not a practice of the Malta IPRD to also run searches of unregistered trade marks.

The proprietor of an earlier mark, or authorised persons thereof or interested parties, may participate in the registration procedure of a third party’s trade mark by filing a notice of opposition on the basis of one or more earlier marks owned or licensed to the same persons. A notice must be filed within 60 days from the publication of the trade mark application within the Malta IPRD.

A notice of opposition must contain, at a minimum, a statement which outlines the grounds on which an opposition is based and a reasoned statement on the grounds, the facts and arguments on which the opposition relies, together with supporting evidence.

If an opposition notice is deemed to be admissible, the applicant may either retract the trade mark application, limit the application or else submit a counterstatement. Following such a counterstatement, the opposing party must inform the Malta IPRD whether the opposition will be maintained or retracted.

A trade mark application may be revoked at any stage throughout the process of registration.

Changes, amendments or corrections to the trade mark itself are not permitted. A new trade mark application would be required for an amended trade mark.

Limiting (not increasing) the goods and services covered by an application is possible at any time, together with amendments to the applicant’s details or changes in ownership or licensing.

Assignment and licensing of trade mark applications is permitted for any type of trade mark during its application process.

Any decision of the Malta IPRD can be appealed before the Court of Appeal in its inferior jurisdiction within 15 days from service of the decision. In terms of process, the appeal process follows standard court procedures.

An appeal process is initiated by the filing of an application. Once an appeal application is filed, the court appoints a date for the purpose of hearing and deciding the appeal. 

There is no requirement under Malta’s legal system that an applicant uses the mark in commerce before the registration is issued. Any registered trade mark may, however, have its registration annulled on the basis of lack of genuine use within five years from completion of the registration procedure or on the basis that the use has been suspended during a continuous five-year period.

Evidencing genuine use is subject to standard evidence requirements. It should be noted that genuine use may also consist of: use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor; affixing of the trade mark to goods or to the packaging thereof in Malta solely for export purposes; and use of the trade mark by a third party with the consent of the proprietor.

The applicant or proprietor of a trade mark may divide a Maltese trade mark application or registration into two or more separate applications or registrations by sending a declaration to the Malta IPRD indicating for each divisional application or registration the goods or services covered by the original application or registration which are to be covered by the divisional applications or registrations.

Trade mark protection is conferred for ten years from date of filing. Registered trade marks may be renewed by filing a renewal application with the Malta IPRD from six months before due date. In terms of process, an application and renewal fee need to be filed with the Malta IPRD. Registered trade marks may be renewed for periods of ten years without limitation.

Late renewal is possible, subject to payment of late renewal fees, for a period of six months post due date. A further six months within which to restore and, thereafter, renew a trade mark also exists.

Trade mark exhaustion occurs in Malta upon the first authorised sale in Malta or in another EU Member State.

Malta is not a signatory to the Madrid system. However, as Malta is a Member State of the EU, it is possible for Maltese individuals/companies to file International Trade Marks after filing an EUTM and thereby claiming the EU as office of origin.

Any person who knowingly or having reason to believe that it provides false or incorrect information in connection with a trade mark application or other filing, making or causing to make a false entry in the register of trade marks, is guilty on conviction of imprisonment for a term not exceeding two years or of a fine not exceeding EUR11,650, or potentially both. Such issues are determined by the Maltese courts, not by the Malta IPRD.

Design marks, or as locally referred to “figurative marks”, cannot be updated or refreshed. New trade mark applications are required to cover changes in figurative elements of a mark.

There is no symbol that trade mark owners must use to denote that a mark is registered. Trade marks owners are allowed to voluntarily use marks such as ® or TM to indicate that a mark is registered.

Deceptive use of symbols denoting that a mark is registered as a trade mark is unlawful.

In terms of requirements, an assignment of a registered trade mark or trade mark application only requires that it is made by way of an agreement in writing for effectiveness between the parties. No other restriction or requirement applies.

Validity against third parties may be asserted only upon registration of the assignment with the Malta IPRD.

As between the parties to a trade mark assignment, there is no formal procedure for trade mark assignment per se, in the sense that a trade mark is immediately assigned upon the entering into of an assignment agreement in writing.

See 2.3 Registration or Recording of the Assignment for the procedure for recording an assignment with the Malta IPRD.

Trade mark assignment does not need to be recorded for effectiveness between the parties. However, recordal of an assignment is required for the purposes of effectiveness against third parties and accordingly this is the main risk if an assignment is not registered, or there is a gap in between assignment and recordal of the assignment.

For registering an assignment, a filing needs to be made to the Malta IPRD containing the assignment together with payment of an administrative fee.

A trade mark may be given as a security or be subject to another right in rem.

There are no requirements or restrictions applicable to licensing a trade mark, other than that the licence must be granted through an agreement in writing (insofar as other sector-specific laws do not apply). A licensor is also granted liberty in terms of the type of licence granted and in fact various types of licenses are recognised, including exclusive and non-exclusive licensing, licensing limited by way of territorial scope and licensing limited to certain goods or services.

The licensing procedure in Malta consists in filing a licence request with the Malta IPRD containing the licence and payment of an administrative fee of EUR 58.23.

A trade mark licence does not require registration with the Malta IPRD for effectiveness between the licensor and licensee. Recordal with the Malta IPRD is required for effectiveness of the licence against third parties and, thus, this is the main risk if a licence is not registered, or there is a gap between licence grant and licence recordal.

Perpetual licences are permitted under the TM Act and there are no reasons provided against a trade mark owner granting a perpetual licence.

There are no other requirements that must be met for a licence or assignment to be valid, other than that it must be made via a lawful agreement in writing.

Trade mark oppositions may be filed on the grounds that the application is either identical or confusingly similar to an earlier mark.

An opposition must be filed within 60 working days from when a trade mark application is made public by the Malta IPRD. Opposition filings following this period are rejected and there are no extensions of this time frame that are possible.

Any owner of an earlier mark, or authorised person, may file an opposition against a trade mark application. Representation through an attorney is not imposed although is the practice. A fee of EUR50 is due to the Malta IPRD by the opponent for filing an opposition. If a counterstatement is filed and the opposing party wishes to maintain the opposition, a fee of EUR150 needs to be paid for maintaining the opposition.

In an opposition procedure, following the filing of notice, the Malta IPRD (through the Comptroller for Industrial Property) determines whether the opposition is admissible. Upon determination of admissibility, the trade mark applicant may choose to either retract their application, limit it or else submit a counterstatement.

If a counterstatement is filed by the trade mark application, the Malta IPRD informs the opposing party and provides a copy of the same counterstatement following which a new set of documentation must be filed to sustain one’s own maintenance of the opposition. The parties are also granted a 90 working day cooling off period with the purpose of settling the matter.

If the opposition is not settled, a decision will then be taken by the Malta IPRD based on the written submissions of the parties.

Any decision of the Malta IPRD can be appealed before the Court of Appeal.

Infringement proceedings can be instituted by a trade mark owner against potential infringement at the First Hall Civil Court. This applies irrespective of whether the mark at hand is a registered or unregistered trade mark, although the substantive review of the case will naturally be different depending on the type of trade mark at hand. Injunctions, measures to preserve evidence and rights to information are also available.

It should also be considered that certain trade mark infringements could, in addition to civil and commercial liability, lead to criminal liability under Maltese Law. In cases of criminal liability, it is the Maltese Executive Police which prosecutes the case.

Infringement proceedings can be initiated by the proprietor of a trade mark before the First Hall of Civil Court.

Infringement actions are not determined by the Malta IPRD.

An alleged infringer may bring an action against a party claiming trade mark infringement on the basis of wrongful or groundless threats.

Infringement proceedings are heard at first instance by the First Hall Civil Court and on appeal by the Court of Appeal.

Typically, there are no formal prerequisites to filing a lawsuit, although depending on the circumstances of the case, it is normal practice that before filing a lawsuit, judicial letters are filed in court by the parties’ representatives.

Once proceedings are initiated at the level of the First Hall of Civil Court, a lawyer warranted in Malta is required to represent the parties.

The owner or licensee of a trade mark, has the right to demand the Court that a precautionary measure is issued, with a purpose to prevent any imminent infringement from occurring or from continuing.

An order for the seizure or delivery of the goods suspected of infringing intellectual property rights may also be issued by the court.

In certain cases, the applicant may be asked to provide a security in favour of the alleged infringer for any losses that may be suffered by the defendant in the case where the court finds that no infringement had taken place.

Potential defendants may benefit from declaratory proceedings (outlined in 4.4 Declaratory Judgment Proceedings) and from security deposited in their favour (see 4.8 Interim or Preliminary Injunctions).

Malta’s legal system has mechanisms specific to intellectual property rights by way of which a party to a trade mark matter can obtain relevant information and evidence from the other party or a third party.

In accordance with the Enforcement of Intellectual Property Rights (Regulation) Act (Chapter 488 of the Laws of Malta) proprietors of trade marks and licensees are entitled to file an application with the competent court, asking that same court to order the defendant to present evidence which may be held by the same defendant. Such benefit is granted to the aforementioned persons if sufficient evidence is presented on application that the defendant holds such evidence,

Where trade mark infringement has taken place on a commercial scale, communication may be ordered to the defendant to provide certain sensitive documentation, subject to the protection of confidential information and subject that applicant sustains their claims with own evidence upon application.

The competent court may order all prompt and effective provisional measures to preserve relevant evidence, which measures may include the detailed description, with or without the taking of samples or the physical seizure of the infringing goods and, in appropriate cases, the materials and implements used in the production and, or distribution of the said goods and the documents relating thereto.  The competent court may also take all necessary action to protect the identity of a witness, in so far that this does not impinge on the right to a fair trial.

Such measures may be taken prior to the commencement of proceedings on the merits of the case and prior to having heard the other side for the purpose of avoiding any irreparable harm to be caused to the rightholders. Nevertheless, once such precautionary measures are taken, the other person must be notified without delay and upon an application of any of the affected parties, measures may be either modified, revoked or confirmed,

The applicant must lodge a security or assurance intended to compensate the other party where the other party suffers prejudice especially when no infringement is to be found.

During infringement proceedings, the claimant may also request the competent court, through an application, that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be produced by the infringer or by other persons who have been found in possession of such infringing goods or services on a commercial scale, or found to be providing on a commercial scale services used in infringing activities or was found as being involved in the production, manufacture or distribution of the goods or the provision of the services which infringe an intellectual property rights. The information acquired should ideally comprise of:

  • names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services as well as the intended wholesalers and retailers;
  • information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.

Within a Maltese scenario, a case is instituted by the filing of a sworn application, outlining the facts of the case and claims to the court. Throughout the proceedings evidence is presented and witnesses are examined and cross-examined. Intellectual property lawsuits benefit from the special provisions applicable to intellectual property disputes set out in 4.10 Obtaining Information and Evidence.

Oral pleas are typically made at the final stages of a court case. In the cases where an applicant requests the court to take action regarding evidence, the applicant must provide initial evidence to sustain such claims.

A defendant may make a lawsuit in response of a lawsuit; this is typically done within the same lawsuit by filing a counterclaim.

Collective proceedings are possible in Malta only in specific circumstances in terms of the Collective Proceedings Act (Chapter 520 of the Laws of Malta). For collective proceedings to be instituted under the said Act, they cannot relate to the TM Act only as the collective proceedings must derive from the Competition Act (Chapter 379), the Consumer Affairs Act (Chapter 378) or the Product Safety Act (Chapter 427).

A trade mark owner may not assert its rights in certain instances such as when the rights have been exhausted, or when the assertion of rights has been prescribed.

The owner of a trade mark, co-owner, or exclusive licensee (in which case, to the exclusion of the owner of a trade mark) can initiate an action for infringement.

A licensee is also entitled, unless their licence provides otherwise, to call on the trade mark owner to take infringement proceedings in respect of any matter which affects its licenced trade mark interests. If the trade mark proprietor refuses to do so, or fails to do so within two months after being called upon by the licensee, the licensee may in such case bring proceedings in its own name as if the licensee was the proprietor. When infringement proceedings are accordingly brought by the licensee in its own name, the trade mark owner is joined to the suit.

For the purposes of obtaining compensation for damages suffered by a licensee, the licensee is also entitled to intervene in infringement proceedings brought by the owner of a trade mark.

A trade mark owner may take actions to stop infringements before its mark is registered based on trade mark laws in the case of a pending trade mark application or based on general commercial laws in the case the owner is claiming an unregistered mark.

In determining infringement of a registered trade mark, the courts would examine the degree of similarity between the allegedly infringing use and the registered mark, together with the degree of similarity at the level of the granular goods and services covered by the registered mark. When making such a comparative exercise, the relevant public is taken into consideration.

It is necessary to establish that the defendant has used a sign as a trade mark, in contract to a purely descriptive or other use not amounting to a use restricted to trade mark owners. The burden of proof regarding the use of a trade mark lies on the proprietor.

There are various grounds of defence in cases of alleged trade mark infringement, mainly:

  • non-use of a trade mark; in such case, the defendant may even request that the trade mark proprietor furnishes proof of genuine use of the trade mark in connection to the goods or services originally applied for;
  • where the trade mark was used for the purpose of identifying the goods or services of that other trade mark proprietor especially when use is for the purpose of indicating the purpose of a product to be used as accessories or spare parts;
  • where in the course of trade, the trade mark used is the name or address of the third party in cases where that third party is a natural person;
  • where in the course of trade, the signs or indications used are not distinctive or else concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the services, or other characteristics of goods or services;
  • that the use of a trade mark by a third party is recognised as a right at law or else by virtue of the rule of law; and
  • that the application was filed in bad faith.

Other defences include that the action is time-barred, in which case the claim should be thrown out by the court. Moreover, as outlined in 1.17 Exhaustion of Trade Mark Rights, if rights are exhausted, such exhaustion can amount to a defence against alleged infringement.

Where a mark was used by a third party prior to its registration, such third party may claim defence. Finally, if the alleged trade mark infringer made continuous use for a period of five years of the trade mark and the proprietor consented to such use, then such may also be used as a defence against infringement.

Depending on the nature of the case, a court expert may be engaged and surveys may be admitted.

Where a person make unauthorised use of a trade mark either for the purpose of making a gain or with the intention of causing a loss to another, the person may be found guilty of a criminal offence and may even be liable to imprisonment for a term not exceeding three years or else may face a fine of not more than EUR23,295 and may even face both.

In the case of a criminal offence, it is the Maltese Executive Police who pursue the case. The process involved is the same as the process in other criminal spheres and includes that an investigation is carried out by the Maltese Executive Police, upon which investigation the Police may proceed with prosecution in front of the Court of Magistrates.

Action with regards to counterfeits can be taken by customs, as provided for in the Intellectual Property Rights (Cross-Border Measures) Act (Cap 414 of the Laws of Malta) together with Customs Regulation 1383/2003 concerning customs actions against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed these rights.

The proprietor or licensee of a trade mark may lodge a complaint for action with the Comptroller of Customs for action to be taken. Proof, at a complaint level, is accepted on a prima facie level and in such cases seizure of counterfeits and parallel imports is proceeded to by the Comptroller of Customs.

A separate registration system from trade mark registration is also in place, for the Comptroller of Customs to proceed in seizing counterfeit goods.

A trade mark may be revoked if within a continuous period of five years, the trade mark was not put to genuine good use in Malta, in connection with the goods or services covered by its registration, in so far that there are no proper reasons for non-use.

Where use of the trade mark is made after the expiry of the five-year period or resumed before the action for revocation, the registration of the trade mark shall not be revoked. Nevertheless, where the commencement or resumption of use occurs within the three-month period preceding the filing of action for revocation, such use is to be disregarded where preparations for the commencement or resumption occur only after proprietor becomes aware that the action may be filed.

A trade mark may also be revoked if after its registration and as a result of inactivity, the trade mark became a common name in trade for a product or service. Moreover, a trade mark may also be revoked as a result of use, by its proprietor or with the proprietor’s consent, which use is liable to misleading the public, particularly as to the nature, quality or geographical origin of those goods or services. 

A registered trade mark may be deemed invalid and cancelled for any of the absolute or relative grounds of refusal (see 1.7 Refusal of Registration), on the basis of bad faith among others.

An action for revocation must be brought before the First of Hall of Civil Court. From February 2023, an action for revocation may also be brought in front of the Malta IPRD.

Revocation is time-barred via a five year prescriptive period arising from the relevant revocation event depending on the case at hand.

Any interested party may initiate revocation proceedings against a registered trade mark. A trade mark may also be cancelled at any moment in time by its owner via an administrative filing with the Malta IPRD.

A trade mark owner can choose to cancel their registered trade mark or application limitedly in relation to certain goods and services.

Furthermore, where revocation is instituted by a third party against a trade mark owner and the grounds of revocation cited apply only in respect of only some of the goods or services for which that trade mark has been registered, revocation covers only those goods or services only.

Amendments to revocation proceedings in court are possible if there are administrative mistakes when filing an application.

Combining revocation and infringement proceedings is possible and the validity of the claimed trade mark is typically brought up as a defence in infringement proceedings. When infringement and cancellation proceedings are combined, the decision on both infringement and cancellation is made at the same time by the courts.

As highlighted in previous sections, trade mark proceedings are covered by the special procedural provisions catered for intellectual property purposes in terms of the Enforcement of Intellectual Property Rights (Regulation) Act (Chapter 488 of the Laws of Malta).

The Act outlines several procedural tools that can be made recourse to by trade mark proprietors or licensees for the purpose of protecting their rights. As highlighted in 4.10 Obtaining Information and Evidence, action may be taken with regards to measures to acquire and protect evidence and to acquire information.

Provisional and precautionary measures may also be taken through the filing of an application to prevent the imminent infringement of rights belonging to proprietors of trade marks of licensees or the continuous infringement of such rights by imposing a recurring penalty payment. An interlocutory injunction may also be issued against intermediaries whose services are used to infringement trade mark rights.

  • the competent court may also order that goods suspected of infringing intellectual property rights are seized; the court may take other corrective measures such as a recall from circulation within the channels of commerce;
  • definitive removal from circulation within the channels of commerce; or
  • destruction of the items.

The court, on application filed by an injured party, may order an infringer, engaged in an infringing activity, to pay the right holder damages commensurate with the actual prejudice suffered by the right holder as a result of the infringement.

Trade mark infringement cases are determined by a judge. The parties have no influence on which judge is selected to determine the case, although in certain circumstances in terms of the Code of Organization and Civil Procedure (Chapter 12 of the Laws of Malta), a party may request that the appointed judge recuses themselves.

Aside from the cooling off period for opposition purposes, in trade mark litigation proceedings it is always possible for the parties to settle the case irrespective of the nature of the litigation proceedings and stage that the ongoing litigation would have reached. For settlement purposes, there are no formally imposes mechanisms such as court mediation or settlement conferences – the practice is that such settlement would be reached via exchanges by the legal representatives of the parties.

Maltese civil procedure allows the parties involved to make a plea to the court to stay proceedings in the case where separate cases may affect each other such as when infringement proceedings are instituted in Malta and the validity of a European Trade Mark is questioned.

For parallel revocation and infringement proceedings of a Maltese trade mark, it is typical that such cases would be combined. A case is generally stayed and not determined if its result is influenced or depends on another case.

Remedies available for trade mark owners include damages, injunctions and declarations, destruction or delivery of infringing goods, rectification, specific performance and freezing of bank accounts. The judge has discretion in ordering remedies insofar as a remedy has been requested.

As outlined in 7.1 Special Procedural Provisions for Trade Mark Proceedings, the court may order the infringer to pay damages commensurate to the actual prejudice suffered. In such cases, the court will take into account negative economic consequences that may have been suffered by the injured party, including loss of profits and unfair profits made by the infringer.

Compensation and other remedies may be awarded to prevailing defendants although this is up to the discretion of the court, inclusive of whether each party is to bear their own attorney fees.

The remedies set out in 8.1 Remedies for the Trade Mark Owner apply, irrespective of the type of trade mark.

There are no special provisions concerning the appellate procedure for trade mark proceedings within the Court of Appeal.

Appellate review is available on points of law or points of fact.

It is typical that appeals take a few years to be appointed, following which the court at appeal stage usually decides the case in a matter of months.

The TM Act recognises trade mark dilution as a ground for claiming the successful revocation of a trade mark. Trade marks in Malta are liable to be revoked on the basis of dilution concepts if, after the date of trade mark registration:

  • as a result of acts or inactivity of the proprietor, the trade mark becomes the common name in the trade for a product or service in respect of which the trade mark is registered; or
  • as a result of the use made of the trade mark by the proprietor of the trade mark or with the proprietor’s consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Malta confers protection to well-known trade marks under the Paris Convention, if well-known in Malta, yet irrespective of whether they are in business use in Malta or registered in Malta. For this recognition to arise, the well-known trade mark proprietor must be a person who is a national of a country signatory to the Paris Convention, domiciled in, or have real and effective industrial or commercial establishment in a Paris Convention country.

Maltese rules on geographic indicators primarily derive from other sector-specific laws. In terms of the TM Act, signs indicating the origin of a good or service cannot be trade marked. However, the TM Act does provide that geographical indicators may amount to certification marks and, in such case, right holders still cannot prevent third party use insofar as it is carried on in accordance with industry standards.

Certification marks are regulated in terms of specific provisions under the TM Act. 

An applicant seeking to register a certification mark must file with the Malta IPRD the regulations governing the use of the certification mark, the persons allowed to make use of such mark, the characteristics to be certified by the mark and also any applicable fees. Such regulations cannot go contrary to public policy or accepted principles of morality. Aside from this, there is little regulation specifically applicable to certification marks.

Registering one’s own name or surname as a trade mark is possible in Malta. The trade mark owner, however, cannot stop a third-party natural person from using their own name and surname irrespective of any registered trade mark.

Certain pre-litigation costs may arise in relation to warning letters, whether filed through court or not, negotiations and possibly precautionary warrants and precautionary actions. While the cost of warning letters sent by a party’s lawyer is dependent on fees charged by that same lawyer, a judicial letter filed in court amounts, at a minimum, to around EUR15. A precautionary warrant may at a minimum amount to EUR150.

The costs to bring an infringement action to conclusion in the first instance depend on applicable court fees and attorney fees, which may run into some thousands of Euros.       

Litigation costs, including court fees and attorney fees, are to be paid by each party, although the court may order the losing party to pay the court fees of the winning party, however, attorney’ fees are not subject to reimbursement and must be paid by each party.

Alternative dispute resolution through arbitration, mediation or conciliation is not common in Malta although the majority of the cases involving trade mark litigation tend to be settled out of court, through private negotiations between the legal counsel of the respective parties.

It is possible to have overlapping trade mark and copyright protection, especially in instances where the mark is a figurative type mark or other non-traditional mark. It is also possible to trade mark the name of a patented invention.

GTG Advocates

66 Old Bakery Street
Valletta
Malta

+356 212 42713

+356 212 42714

info@gtgadvocates.com www.gtgadvocates.com
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Law and Practice in Malta

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GTG Advocates is a full service corporate and commercial law firm specialising in technology, media, telecommunications, data protection, gaming and betting, cryptocurrencies and DLTs and intellectual property laws. Established over 20 years ago, GTG Advocates has around 30 personnel with offices in Valletta, Malta. The firm provides expert advisory services in intellectual property, especially in relation to technology clients, and provides the full suite of legal services ranging from litigation, registration and portfolio management, advisory, due diligence and transactional services. GTG Advocates has been at the forefront of major legal developments in Malta over the last two decades, having been notably engaged to contribute on various legal frameworks relating to blockchain, virtual financial assets, telecommunications, data protection and e-signatures. All lawyers at GTG Advocates are eligible to practise before the Supreme Maltese courts.