What is a 'trademark'?
Any sign capable of being represented graphically which distinguishes goods and services of one undertaking from
those of another can be defined as a trademark. Such trademark may
be comprised of words (including
personal names), figurative elements, letters, numerals or the shape
of goods or their packaging (get up).
Applicable Law
The Trademarks Act,
brought into force in Malta on 1st January 2001.
Rights acquired by registering a trademark
When a proprietor registers his trademark, he acquires acquires
exclusive property rights on the trademark.
The term of a
registration has been reduced from 14 years to 10 years and registrations
may be renewed for 10-year periods.
Infringement
The law
provides specific rights in cases of trademark infringement such as
the following:
the use in Malta in the course of trade of a sign identical
or similar to the trademark in relation to goods or services
which are identical or similar to those for which it is
registered; and there is the likelihood of confusion on the part of
the public, including the likelihood of association with the
trademark;
the use in Malta in the course of trade of a sign which is identical
with or similar to a trademark in relation to goods or services
which are not similar to those for which the trademark is
registered, but the trademark has a reputation in Malta and such use
takes unfair advantage of or is detrimental to the distinctive
character or the repute of the trademark.
A provision for the
exhaustion of rights has been introduced. A registered trademark is not
infringed by the use of the trademark in relation to goods which have been
put on the market in Malta under such trademark by the trademark owner or
with his consent.
Classification
Multiclass applications are not admitted and applications for the
registration of a trademark in respect of
different goods and services must be made in a different application
for each category.
Goods and services are classified by the office according to the
International Classification of Goods and Services for the Purposes
of the Registration of Marks under the Nice Agreement.
Classes of Goods & Services
Priority Claims
Under the new Trademarks Act, a person
who has filed an application for protection of a trademark in a
country, which is a member of the World Trade Organisation or a
member of the Paris Convention for the Protection of Industrial
Property, he or his successor in title, has the right to claim
priority in registering the same trademark for any or all of the
same goods or services for which the application has been filed.
Such claim to priority is applicable for a period of six months
from the date of filing of the first application.
Priority Documentation Required:
the standard original certified priority documentation from the
Comptroller of Industrial Property of the country where the
application was made.
Prior to Filing: A certificate
letter from the Assistant Trademark Commissioner is sufficient.
These documents must be translated into English.
Use
The new Trademarks Act has amended the
application form for the registration of trademarks and/or service
marks. A section has been introduced which stipulates that the
trademark or service mark applied for is being used by the applicant
or with his/her consent, in relation to the goods or services stated
in the respective application, or that there is a bona fide
intention that the mark will be used.
The new law has
introduced a user requirement whereby a registered mark that has not been
used for a period of 5 consecutive years is vulnerable to attack on the
ground of non-use.
Opposition
Applications are not
published for opposition purposes. Instead, marks are published upon
registration and third parties may thereafter bring an action before the
Civil Court to invalidate the registration on the ground of confusing
similarity with earlier rights.
Amendment of
an application
An application may be amended at a fee at the request of the
applicant only by correcting: -
the name or address of applicant
errors of wording or of copying, or
obvious mistakes
and only where the corrections do not substantially affect the
identity of the trademark or extend the goods or services covered by
the application.
Collective marks and certification marks
Besides trademarks the industrial property office also receives
applications for collective and certification marks.
A collective mark is a mark distinguishing the goods or services of
members of an association from those of other undertakings.
A certification mark is a mark indicating that the goods or services
in connection with which it is used are certified by the proprietor
of the mark in respect of origin, material, mode of manufacture of
goods or performance of services, quality, accuracy or other
characteristics.
Classes of Goods & Services
Assignment of Trademarks
