Registration of marksi Inherent registrability
The Office will examine a trademark application with regard to the inherent registrability of the trademark (absolute grounds); for instance, if the trademark is considered exclusively descriptive in nature, it will be refused on absolute grounds, although the applicant will be provided with an opportunity to file submissions or amend the trademark application with a different version that may be considered registrable if the registration is limited to the distinctive manner of presentation (and with this limitation being a condition of the registration).ii Prior rights
The Office will additionally examine a trademark application with regard to prior rights in respect of the trademark (relative grounds); however, this will only be done with respect to earlier trademarks on the Register of Trademarks of Malta, and, if an earlier trademark of relevance is detected, the Office will send a communication to the proprietor thereof at the address on record, informing them about the examined trademark application.iii Inter partes proceedings
Inter partes proceedings at application stage are now regulated, and in this regard, a third party may file an opposition (inclusive of all relevant documentary evidence) on certain defined grounds (as provided in EU Directive 2015/2436), within 60 working days of the date of publication of the trademark. Upon receipt of the opposition, the applicant has a period of 60 working days within which to file a counterstatement (inclusive of all relevant documentary evidence) should the applicant wish to maintain the application. At that stage, it will be up to the Office to make a decision on the matter (unless the parties plan to settle, or have settled, matters during a cooling-off period that may be requested), and once the decision is issued, it is possible for an aggrieved party to file an appeal to the Court of Appeal within 15 days therefrom. The judgment of the Court of Appeal (Inferior Jurisdiction) is final and unappealable.
In the event of registration of a trademark on the Register of Trademarks of Malta, it is possible for an interested party to proceed judicially (within defined periods) with a request for a declaration of invalidation or revocation of the registered trademark on relative and or absolute grounds. The lawsuit is filed before the competent court of first instance, namely the First Hall of the Civil Court, and the registrant is allowed the right of reply. A contested lawsuit usually extends over a period of between one and three years at first instance, and a further three to four years before the Court of Appeal (in the event of an appeal being filed).iv Appeals
Appeals are available:
- to the Court of Appeal (Inferior Jurisdiction), in relation to any appeal against a decision of the Comptroller of Industrial Property (e.g., an appeal against a decision in opposition proceedings); and
- to the Court of Appeal (Superior Jurisdiction), in relation to any appeal against a judgment of the court of first instance in respect of trademark invalidation or trademark revocation proceedings.