Act XII of 2019 has been published in the Government Gazette on the 9th of April 2019, meant to repeal and replace Malta’s existing Trademarks Act (Cap 416 of the Laws of Malta, “Previous Trademarks Act”) with a new Trademarks Act (“New Trademarks Act”).
The New Trademarks Act is being promulgated in order to transpose into Maltese trademark law the provisions of the Trademarks Directive (EU) 2015/2346, of 16 December 2015 (“Trademarks Directive”).
As at the date of writing, it has not yet been published when the New Trademarks Act shall become effective.
Below is a brief analysis of some of the main changes that will result in Maltese trademark law in view of the adoption of the New Trademarks Act.
1.Widening of the Definition of a Trademark
The Previous Trademarks Act ties the scope of a trademark with a graphical representation requirement. Under the New Trademarks Act, this requirement will be removed, and trademarks will only need to be capable of being represented in the trademarks register in a manner which enables the IP Office and the public to determine the clear and precise subject matter of the protection conferred. As such, any type of trademark should be capable of registration if it can be adequate described with generally available technology and thus this paves the way for new trademarks such as non-conventional marks to be able of successfully being registered in the Malta IP Office.
2. Grounds of Refusal
The sections pertaining to grounds of refusal have also seen changes, for instance, specific reference to EU and international trademarks. Crucially, the New Trademarks Act expands the scope of the previous functionality exclusion under the Previous Trademarks Act.
A trademark was deemed as “functional” and thus excluded from registration under the Previous Trademarks Act, if it consisted of a shape which results from the nature of a product, or necessary to achieve a technical result or simply adds value to a product. In this regard, the New Trademarks Act introduces the wording “or another characteristic”, meaning that now any feature of a trademark could possibly be deemed functional depending on the trademark at hand, and naturally thus reflecting the changes in the definition of a trademark.
3. Right to Require Indication that a Mark is a Trademark
A noteworthy addition under the New Trademarks Act is that the proprietor of a trademark can request that publishers of encyclopaedias, dictionaries or similar reference works (irrespective whether in print or electronic form) include an indication that the trademark is a registered trademark. This is expected to assist right-holders in preventing trademark dilution, in other words, that the trademark becomes a generic term and no longer benefits from trademark protection.
4. Opposition Procedure
The New Trademarks Act also provides for a third-party adversarial opposition procedure before the IP Office for trademark applications. As such, this is primarily a consolidation of previous changes introduced for compliance with the Trademarks Directive, namely the changes introduced on the 26th October 2018 under the Trademark Search and Opposition Rules (SL 416.03 of the Laws of Malta).
5. Resulting Increased Harmonization
Once the New Trademarks Act becomes effective, it will result in an increased harmonization of Malta’s trademark law with that of the EU. Matters relating to the classification of goods and services, application proceedings, rights provided and permitted use of a trademark will all benefit from such resulting increased harmonization.