Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Malta is the Trademarks Act (Chapter 597 of the Laws of Malta) (the Act) and any subsidiary legislation promulgated thereunder from time to time. The Act transposes the provisions of Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the member states relating to trademarks. The Act was promulgated on 14 May 2019 and repeals and replaces the previous Trademarks Act (Chapter 416 of the Laws of Malta).

In addition to the Act, the Intellectual Property Rights (Cross-Border Measures) Act, the Trademark Search and Opposition Rules (Subsidiary Legislation 597.03) and the Enforcement of Intellectual Property Rights (Regulation) Act also form part of the body of laws regulating trademarks and their enforcement. The Commercial Code (Chapter 13 of the laws of Malta) also provides protection for trademarks.

Being a member state of the European Union, Malta is also subject to EU legislation, including Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark and Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union Trade Mark, and repealing Delegated Regulation (EU) 2017/1430 (the Regulations).

International law

Which international trademark agreements has your jurisdiction signed?

Malta is a member of the World Trade Organization (WTO) and is therefore bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The Paris Convention for the Protection of Industrial Property is also applicable in Malta.

Regulators

Which government bodies regulate trademark law?

The Industrial Property Registrations Directorate (the Malta IPRD) within the Commerce Department is the relevant government body that regulates trademark law in Malta.

Registration and use

Ownership of marks

Who may apply for registration?

Any natural or legal person may apply for registration of a trademark.

Scope of trademark

What may and may not be protected and registered as a trademark?

The Act applies to every trademark in respect of goods and services that are the subject of registration or of an application for registration in Malta as an individual trademark, a certification mark or a collective mark or of an international registration having effect in Malta.

The previous Trademarks Act tied the scope of a trademark to a ‘graphical representation’ requirement; however, this has been done away with in the new Act, thereby widening the scope to include the registration of non-traditional Maltese trademarks such as colours and sounds. Service marks, collective marks and certification marks are also covered by the Act.

A registered trademark is defined as a property right obtained through the registration of the trademark under the Act and 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 of trademarks in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

The Act stipulates that the following shall not be registered as trademarks or, if already registered, shall be liable to be declared invalid (absolute grounds for refusal or invalidity):

i. signs that cannot constitute a trademark;

ii. trademarks that are devoid of any distinctive character;

iii. trademarks that consist exclusively of signs or indications that 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;

iv. trademarks that consist exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

v. signs that consist exclusively of:

  • the shape, or another characteristic, that results from the nature or the goods themselves;
  • the shape, or another characteristic, of the goods that is necessary to obtain a technical result; or
  • the shape, or another characteristic, which gives substantial value to the goods; and

vi. trademarks that are contrary to public policy or to accepted principles of morality;

vii. trademarks that are of a nature as to deceive the public or are likely to deceive the public, such as to the nature, quality or geographical origin of the goods or services;

viii. trademarks that have not been authorised by the competent authorities and are to be refused or invalidated pursuant to article 6-ter of the Paris Convention;

ix. trademarks that are excluded from registration pursuant to Paris Union legislation, the Laws of Malta or international agreements to which the Paris Union or Malta is a party, providing protection of designations of origin and geographical indications;

xi. trademarks that are excluded from registration pursuant to Paris Union legislation or international agreements to which the Paris Union is a party, providing for protection of traditional terms for wine;

xii. trademarks that are excluded from registration pursuant to Paris Union legislation or international agreements to which the Paris Union is a party, providing for protection of traditional specialities guaranteed; or

xiii. trademarks that consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Paris Union legislation or the Laws of Malta, or international agreements to which the Paris Union or Malta is a party, providing protection for plant variety rights and that are in respect of plant varieties of the same or closely related species.

A trademark shall not be refused registration in accordance with points 2, 3 or 4 above, if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it in Malta. Similarly, a trademark shall not be declared invalid for the same reasons outlined above if, before the date of action for a declaration of invalidity, following the use that has been made of it, it has acquired a distinctive character as a result of the use made of it in Malta.

In addition, a trademark will be liable to be declared invalid where the application for registration of the trademark was made in bad faith by the applicant.

Moreover, a trademark shall not be registered or, if registered, will be liable to be declared invalid where and to the extent that:

  • its use is prohibited pursuant to any law other than trademark law of Malta or of the Paris Union;
  • it includes a sign of high symbolic value, in particular a religious symbol; or
  • it includes badges, emblems and escutcheons other than those covered by article 6-ter of the Paris Convention and that are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the laws of Malta.

A trademark that consists of or contains any of the following shall not be registered unless it appears to the Comptroller that consent has been given by or on behalf of the President or the Archbishop of Malta; provided that the Minister may make regulations that extend the applicability of this provision to religions other than the Roman Catholic Apostolic Religion:

  • 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 colourful 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.

A trademark that consists of a representation of the national flag of Malta shall not be registered. Furthermore, a trademark that contains a representation of the national flag of Malta shall not be registered if it appears to the Comptroller that the use of the trademark would be misleading or grossly offensive.

A trademark that consists of or contains the flag of a Paris Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Comptroller that use of the flag in the manner proposed is permitted without such authorisation. In a similar manner, a trademark that consists of or contains the armorial bearing of any other state emblem of a country that is protected under the Paris Convention shall not be registered without the authorisation of the competent authorities of that country.

A trademark that consists of or contains 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, without the authorisation of the competent authorities of the country concerned.

With respect to armorial bearings, flags or other emblems, and the names and their abbreviations of international intergovernmental organisations of which one or more Paris Convention countries are members, a trademark that consists of or contains of any emblem, abbreviation or name that is protected under the Paris Convention, the Act provides that these shall not be registered without the authorisation of the international organisation concerned, unless it appears to the Comptroller that such use is not such that it suggests to the public that a connection exists between the organisation and the trademark; or is not likely to mislead the public as to the existence of a connection between the user and the organisation.

Further to the above, a trademark may not be registered if it falls foul of the relative grounds for refusal or invalidity, as shall be set out hereunder:

  • it is identical with an earlier trademark, and the goods or services for which the trademark is applied for or is registered are identical with the goods or services for which the earlier trademark is protected;
  • because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public, including the likelihood of association by the public with the earlier trademark;
  • the mark is identical with, or similar to, an earlier trademark, regardless of whether the goods or services for which the trademark is applied are identical with, similar or not similar to those for which the earlier trademark is protected where the earlier mark has a reputation in Malta or, in the European Union in the case of an EU trademark, has a reputation in the Paris Union and the use of such later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark;
  • the agent or representative of the proprietor of the trademark applies for registration thereof in his or her own name without the proprietor’s authorisation, unless the agent or representative justifies his action;
  • an application for a designation of origin or a geographical indication had already been submitted in accordance with Paris Union legislation or the laws of Malta prior to the date of application for registration of the trademark or the date of the priority claimed for the application, subject to its subsequent registration;
  • the above-mentioned designation of origin or geographical indication confers the right to prohibit use of a subsequent trademark on the person authorised under the relevant law to exercise the rights arising therefrom;
  • the rights to a non-registered trademark or to another sign used in the course of trade, were acquired prior to the date of application for registration of the subsequent trademark, or the date of priority claimed for registration of the subsequent trademark, and that non-registered trademark or other sign confers on its proprietor the right to prohibit the use of the subsequent trademark; or
  • to the extent that the use of the trademark may be prohibited by virtue of an earlier right, subject to some exceptions, and protected by means of copyright, registered designs or other rights that the Minister may prescribe by regulation.
Unregistered trademarks

Can trademark rights be established without registration?

Under the Commercial Code (Chapter 13 of the Laws of Malta), unregistered trademark rights may be established without registration on the basis of prior use. In this regard, the Commercial Code provides that irrespective of whether a name, mark or distinctive device has been registered as a trademark under the Act, traders may not make use of any name, mark or distinctive device that is capable of creating confusion with any other name, mark or distinctive device lawfully used by others. Nor may traders make use of any firm name or fictitious name capable of misleading others as to the real importance of the firm.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A proprietor of a foreign trademark that is entitled to protection under the Paris Convention as a well-known trademark is entitled to restrain, by means of a warrant of prohibitory injunction, the use of a trademark in Malta that is, or the essential part of it is, identical or similar to their mark (as well as in relation to identical or similar goods or services for which the mark is well-known). It is therefore necessary to prove that the use of such mark is likely to create confusion amongst the relevant public. This subject to the fact that if the proprietor of the well-known mark has acquiesced for a period of five successive years in the use of a later trademark registered in Malta, they shall no longer be entitled, on the basis of an earlier trademark, to apply for a declaration that the later trademark is invalid with respect to the goods or services for which the later trademark has been used, unless registration of the later trademark was applied for in bad faith.

The benefits of registration

What are the benefits of registration?

Trademark registration confers various benefits, such as:

  • Exclusive rights to the proprietor of the trademark for the use of mark in connection with the goods and services covered.
  • The proprietor of a registered trademark shall be entitled to prevent all third parties not having its consent from using in the course of trade, in relation to goods of services, any sign where the sign is either:
    • identical with its trademark and is used in relation to goods and services that are identical with those for which it is registered; or
    • the sign is identical with, or similar to, the trademark and is used in relation to goods or services that are identical with, or similar to, the goods or services for which the trademark is registered.

There is also an additional requirement that there must exist a likelihood of confusion on the part of the public and that this includes the likelihood of association between the sign and the trademark. The proprietor may also prevent third parties from using a sign where the sign is identical with, or similar to, the trademark irrespective of whether it is used in relation to goods or services that are identical with, similar to, or not similar to, those for which the trademark is registered, where the latter has a reputation in Malta and where use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

  • The proprietor of a registered trademark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into Malta, without being released for free circulation there, where such goods, including the packaging thereof, come from third countries and bear without authorisation a trademark that is identical with the trademark registered in respect of such goods, or that cannot be distinguished in its essential aspects from that trademark.
  • The proprietor also has the right to prohibit the following acts, in the course of trade, such as:
    • affixing a sign that is identical with, or similar to, the trademark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed; and
    • offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed.
  • The option of applying symbols to goods and services covered by a trademark denoting that the mark is a registered trademark.
  • In enforcement, a registration allows its owner to bring a civil court action for trademark infringement rather than just on the basis of unfair competition.
  • Allowing the owner of a registered trademark to record the mark with the Malta Customs Authority (Customs), the government agency in charge of preventing trademark counterfeiting by monitoring Malta’s borders.
  • Constituting a bar to later-filed applications on the basis of confusing similarity with the earlier trademark.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

An application for registration of a trademark shall be filed in the Maltese or English Language in the prescribed form and shall contain the following:

  • a request for registration of a trademark;
  • information identifying the applicant;
  • a statement of the goods or services in relation to which it is sought to register the trademark;
  • a representation of the trademark;
  • the name and address of the representative or attorney, in cases where one has been appointed;
  • a declaration claiming priority in cases where the applicant wishes to take advantage of an earlier application;
  • an indication that the trademark is being used by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be used;
  • a statement containing the name or names of the colour or colours being claimed in cases where the application wishes to claim a colour as a distinctive feature of the mark; and
  • the prescribed fee.

The Comptroller is able to request the submission of documentary evidence before undertaking any act required of them by law.

If the trademark to be registered is an image, a graphical representation is required along with a power of attorney in situations where representatives act on behalf of the trademark owner. Various other documents may also be required such as priority certificates or regulations when dealing with applications for collective or certification marks. The representation of the mark contained in the trademark application must be such as to enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Maltese law does not specifically state that a power of attorney is required to be submitted where an agent is submitting a trademark application on a proprietor’s behalf; however, it is recommended that where one wishes to authorise a representative to register a trademark or conduct matters ancillary to a trademark, on his behalf, a power of attorney is executed. Notarisation or legalisation is not a requirement but is recommended, to ascertain the authenticity of the document.

Electronic filing of a trademark application is available and it is deemed to be the preferred method owing to the various benefits it provides over a manual application. The date of filing of a trademark application shall be the date on which the documents containing the request for registration, information identifying the applicant, a list of goods or services in respect of which the registration is requested and a clear representation of the trademark, are filed with the office by the applicant.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

Trademark applications that do not encounter any objections or oppositions typically take between six to eight months from the date of filing to the date of registration.

The fee of €116.47 is due to the Malta IPRD per class of goods or services and such fee covers filing, registration and publication of the new trademark.

Upon the registration of a trademark, the Comptroller shall publish the registration in the prescribed manner on the official Online IP Journal or any other official publication and issue a certificate of registration to the applicant. When an opposition has been received within the prescribed time, the Comptroller shall only proceed to publish such registration in the event that the opposition has been rejected, thereby extending the time frame and costs associated with registration. If one or more of the oppositions have been accepted, this will result in the publication not taking place. If there are any amendments to the application that would need to take place, this would also increase the estimated time and cost, as there are additional fees that would need to be paid.

Generally, applicants would instruct lawyers to draft the specification of goods and services as well as to file an application on their behalf, incurring applicable legal fees.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The trademark classification system implemented by the Malta IPRD regarding the goods and services in respect of which trademark registration is to be applied for is the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks 1957 (Nice Classification). Multi-class applications are available and permitted by the Malta IPRD’s online trademark application portal. The Act provides that where the applicant requests registration for more than one class, the goods and services must be grouped according to the classes of the Nice Classification and each group must be preceded by the number of the class to which that group of goods or services belongs and be presented in order of the class. Every class applied for is subject to a fee of €116.47.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

Upon the receipt of a trademark application, the Malta IPRD shall examine whether the application falls foul of any of the absolute or relative grounds of refusal set out in the Act. If it appears to the Comptroller that the requirements for registration are not met, the applicant will subsequently be informed and be provided with the opportunity to make representations or to amend the application within the specified time period. If this is not carried out, the Comptroller shall refuse the application. If, however, all the necessary requirements are met, the application will be accepted as eligible for registration.

As part of the examination procedure, the Malta IPRD will conduct a search to ascertain whether a similar or identical trademark is already registered or has been applied for, both in Malta and in the European Union. The application will also be examined on the basis of absolute grounds of law namely public morality, descriptiveness amongst others.

Letters of consent would typically be accepted to overcome an objection raised by the Malta IPRD in relation to a third-party mark. When applicants receive an objection to their application from the Malta IPRD, they are given the opportunity to make representations to the Malta IPRD or make amendments to the application.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark is not a prerequisite for successful trademark registration; however, it may assist in proving that the mark is to be registered, as it would have acquired distinctiveness through prior use. The Act holds that if the proprietor has not put the trademark to genuine use in Malta in connection with the goods or services for which it is registered within a period of five years following the date of completion of the registration procedure or if such use has been suspended during a continuous five-year period, the trademark in question will be subjected to potential limits and sanctions.

With respect to proof of such use, if a question arises regarding the use of a registered trademark, the burden of proof shall lie on the proprietor.

By means of an application submitted before the First Hall of the Civil Court, third parties may successfully obtain revocation of a registered trademark on the grounds of it not having been put to genuine use in Malta within the above-stated five-year period following its date of registration.

Further to the above, it should be noted that trademarks of a foreign country that is a member of the WTO or a party to the Paris Convention, are granted a right to priority to trademark registration in Malta for a period of six months from the date of filing of the first of such application.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Markings such as the word ‘registered’ and any other symbol or word importing a reference to registration may be used to indicate that a good or service is protected by a trademark. However, use of such markings is not mandatory. Furthermore, there are no strict legal benefits in using the ‘registered’ or similar symbols; however, this may serve as a deterrent to potential infringers by making it evident that the mark is a registered trademark.

It is an offence to make use of these markings, or otherwise represent that a mark is registered, if it is not.

With the coming into force of the Act, a proprietor of a trademark is now afforded the possibility of requesting that the reproduction of the trademark in an encyclopaedia or reference work be accompanied by an indication that the mark is actually a registered trademark. The benefit of this is that it is expected to be of assistance to trademark holders with regards to the prevention of trademark dilution, which involves giving the impression that the trademark constitutes the generic name of the goods or services for which the trademark is registered and thereby no longer enjoys trademark protection.

Appealing a denied application

Is there an appeal process if the application is denied?

Any decision of the Comptroller may be appealed from before the Court of Appeal by means of an application submitted within 15 days of service of the Comptroller’s decision. The minister responsible for the protection of industrial property is able to make rules governing appeals to the Court of Appeal under the Act and present a scale of costs and fees in relation to such appeals.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

The Act now provides for a third-party adversarial opposition procedure before the Malta IPRD and applications are indeed published for opposition on the IP Online Journal.

A notice of opposition may be filed on the basis of one or more earlier marks or other rights, provided that they all belong to the same proprietor, and on the basis of part or the totality of the goods or services in respect of which the earlier right is protected or applied for. In the case of an earlier mark having more than one proprietor or where an earlier right may be exercised by more than one person, an opposition is available to be filed by any or all of the proprietors or authorised persons. With the coming into force of the Act, third parties are now able to oppose an application prior to registration, with the relevant rules and procedures set out in the Trademark Search and Opposition Rules (Subsidiary Legislation 597.03). This allows for earlier trademark holders to begin such proceedings regarding opposition before the IPRD itself as opposed to seeking the revocation of a registration before the courts of Malta.

The primary basis of such challenges are the relative grounds of refusal set out in the Act, including that an opposition may be submitted on the basis that a trademark shall not be registered or if registered, shall be liable to be declared invalid, where:

  • the trademark itself (or the goods and services for which the trademark has been applied for) is identical to an earlier trademark or such earlier trademark’s goods and services; or
  • due to its identity with, or similarity to, an earlier trademark or to its goods and services thereby creating a likelihood of confusion on the part of the general public.

Another ground of opposition is if on the date of application for registration of the trademark or where appropriate of the priority claimed in respect of the application for registration, there exists another mark that is well known in Malta. Opposition may be based on the fact that a trademark is not to be registered or if so, declared invalid to the extent that the rights to a non-registered trademark or to another sign used in the course of trade, were acquired prior to the date of application for registration of the subsequent trademark, or the date of the priority claimed for the application for registration of the subsequent trademark and that non-registered trademark or other sign confers on its proprietor the right to prohibit the use of the subsequent trademark.

Opposition could also be based on an earlier designation of origin or geographical indication.

The opposition procedure is the following:

  • the IPRD will carry out a search on the National Trademark Register, followed by the applicant being notified as to the existence of an earlier mark;
  • the applicant is given opportunity to continue or withdraw the application. If the applicant decides not to withdraw the application, the owner of earlier mark will then be informed and advised that they have 60 working days to oppose the registration of the trademark;
  • the application will be published on the IP Online Journal in order to allow for any opposition, in which case the applicant will then be notified of such and be given the possibility of withdrawing the application, restricting the goods and services covered by the application or submitting a counter-statement outlining grounds against the opposition;
  • the office is then at liberty to accept or refuse the opposition and there is also the possibility of bringing an appeal before the Court of Appeal; and
  • the registration of the application will proceed to publication on the IP Online Journal that is normally done on the first working day of the week.

In accordance with article 32 of the Commercial Code, one may be an unregistered trademark holder and still be able to institute proceedings in order to oppose a bad-faith application for a trademark.

The fee for a notice of opposition is €50 and €150 for a notice of maintaining opposition.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A Maltese trademark registration initially remains in effect for 10 years from the date of filing of the application, with the possibility to renew for further periods each of 10 years when due for expiry.

Use of a trademark is required for its maintenance as the Act holds that if within a period of five years following the date of completion of registration, the trademark has not been put to genuine use in Malta by the proprietor in relation to the goods and services in respect of which it was registered or if such use was suspended during a continuous five-year period, then the trademark shall be subject to various limits and sanctions unless justified by proper reasons for non-use. The five-year period shall be calculated from the date when the trademark can no longer be rejected or opposed.

The following shall constitute use within the meaning of the Act:

  • use of the trademark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, irrespective of whether or not the trademark in the form as used is also registered in the name of the proprietor;
  • affixing of the trademark to goods or to the packaging thereof in the name of the proprietor; and
  • use of the trademark with the consent of the proprietor shall be deemed to constitute use by the proprietor.

In any civil proceedings under the Act, if a question were to arise as to the use to which a registered trademark has been put, the burden of proof that a particular use has been made shall lie on the proprietor.

Surrender

What is the procedure for surrendering a trademark registration?

A registered trademark may be surrendered by the proprietor by sending a notice to the Comptroller in the prescribed form, in respect of all of the goods or services for which it is registered or of those specified by them in the notice. The notice shall be without effect unless the proprietor includes the name and address of any person having a contractual interest in the mark or any other interest as specified under the Act and certifies that such person has been provided with not less than 90 days’ notice of the proprietor’s intention to surrender the mark or is not affected by such surrender or if so, consents thereto.

Upon the surrender taking effect, the Comptroller shall make the appropriate entry in the register and make the necessary publication.

The Act holds that notwithstanding the act of surrendering the trademark, a provision may be made by means of rules with regards to the manner and effect of the surrender, as well as for protecting the interests of other persons having a right in the registered trademark.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademarks could be eligible for protection under other IP legislation, provided that the trademark in question satisfies the requirements relating to protection under the relevant IP laws.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Act would cover the protection of trademarks online. Malta does not provide for specific legislation that allows for the protection of domain names.

The Network Information Centre Malta (NIC) is the entity responsible for the administration of the '.mt' top-level domain (TLD). The holder of the domain must declare the right to use the name preceding the second-level domain (SLD) of the proposed domain name as either a full trademark or business name, in accordance with Maltese law.

Prior to registering a domain, an individual or organisation is required to register for a ‘handle’, which will allow the person to log into the NIC website, to register and manage domains by means according to its role. Subsequently, a domain name registration form is to be submitted for evaluation by NIC. On acceptance of the domain name application, the domain name and contact details of the holder are entered in the ‘WHOIS’.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence may be recorded in the Malta IPRD trademarks register and may be either exclusive or non-exclusive. A trademark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of Malta.

The proprietor of a trademark may invoke the rights conferred by that trademark against a licensee who contravenes any provision found in his licensing contract with regards to:

  • its duration;
  • the form covered by the registration in which the trademark may be used;
  • the scope of the goods or services for which the licence is granted;
  • the territory in which the trademark may be affixed; or
  • the quality of the goods manufactured or of the services provided by the licensee.

Upon an application made to the Comptroller by the persons entitled to bring an action under the Act, the following particulars of registrable transactions in relation to the grant of a licence under a registered trademark shall be entered into the register:

  • the name and address of the licensee;
  • whether the licence is an exclusive one or not;
  • where the licence is limited;
  • a description of such limitation; and
  • the duration of the licence if same is ascertainable as a definite period.
Assignment

What can be assigned?

Both registered and unregistered trademarks may be assigned under Maltese law. A registered trademark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property. It is possible for a registered trademark to be transferred separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered. If the whole of the undertaking is to be transferred, this shall also include the transfer of the trademark, unless there is an agreement stating otherwise.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

The assignment of a registered trademark shall not become effective unless it is made in writing and signed by or on behalf of the assignor or by a personal representative, depending on the particular case at hand.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

Assignment registration is not necessary for the purposes of its validity under Maltese law. However, the assignment becomes effective against third parties upon its recordal in the Malta IPRD trademarks register.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A trademark may, independently of the undertaking, be given as security or be the subject of rights in rem. The minister may make regulations for the recordal of a security or of rights in rem in the register.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark proprietors may enforce their trademark rights in Malta by instituting an action before the Civil Court. The remedies available include destruction of infringing merchandise and recall of its circulation, injunctions to prevent continued infringement and awards of pecuniary damages. It may also be possible for a successful party to recover legal costs.

In terms of criminal law provisions regarding trademark infringement, it should be noted that both the Act and the Criminal Code (Chapter 9 of the Laws of Malta) provide for an array of acts that may amount to criminal offences. Broadly, the acts that may amount to a criminal offence are those relating to intentional unauthorised use, false trademark representations, and commercial and industrial trademark fraud.

Procedural format and timing

What is the format of the infringement proceeding?

An infringement of a registered trademark is actionable by the proprietor of the trademark by sworn application that is to be filed in the First Hall of the Civil Court. In such an action, all such relief as would be made available in relation to infringement of any other property right will be made available to the plaintiff.

Burden of proof

What is the burden of proof to establish infringement or dilution?

In civil proceedings, the burden of proof lies with the claimant and is established on a balance of probabilities. In criminal proceedings, the burden of proof also lies on the claimant; however, the criminal offence must be proved beyond reasonable doubt.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Trademark owners have the right to commence an action for trademark infringement, whereas a licensee is entitled, unless the licence specifically provides otherwise, to call on the owner of the trademark to take infringement proceedings in respect of any matter that affects its interets.

If the owner refuses to do so or fails to do so within two months after being called upon by the licensee, then the licensee may bring the proceedings in its own name as if it were the proprietor. Further, an exclusive licence may provide that the exclusive licensee is entitled to bring infringement proceedings in its own name against any person other than the proprietor.

Criminal proceedings are generally initiated ex officio by the executive police. A complaint procedure is also in place whereby complaints may be lodged with the executive police in order for the police to initiate criminal proceedings.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The Department of Customs plays an important role in border control regarding the halting of imported and exported infringing goods. The Department of Customs seizes such goods and works towards the prevention of such activity by carrying out checks of goods that enter or transit into Malta. This is done where it is prima facie evident that the goods are infringing an IP right. To benefit from ex officio seizure by the Department of Customs, the trademark registration must also be recorded with the Department of Customs' IP database. Both Maltese and European trademarks may be recorded with the Department of Customs.

In such situations, the Department of Customs would seize the goods and proceed to inform the rights holder as to the infringing consignment, following which the rights holder is granted four working days to lodge an application in court. Following such seizure, a civil action at the suit of the Civil Court would be necessary in order for the trademark owner to enforce its rights against such counterfeit goods.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

It is possible to request an order from the Civil Court to the effect that evidence that is in control of an opposing party be presented in court by the opposing party (subject to the protection of confidential information).

Provisional measures to preserve evidence are also available. Before the commencement of proceedings on the merits of the case, a person who has filed reasonably available evidence to support their claim that their trademark rights are infringed or about to be infringed, may request the court to order such prompt and effective provisional measures as it considers appropriate to preserve relevant evidence in respect of the alleged infringement. Such 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 or distribution of the said goods and the documents relating thereto.

A right of information is also available. During proceedings concerning an infringement of a trademark, the Civil Court may order, on the basis of a justified and proportionate request by the claimant to this effect, that information on the origin and distribution networks of the goods or services that infringe a trademark be produced before the court by the infringer or by any person who has been:

  • found in possession of infringing goods on a commercial scale;
  • found to be using the infringing services on a commercial scale;
  • has been found to be providing on a commercial scale services used in infringing activities; or
  • has been indicated by any of the persons referred to above as being involved in the production, manufacture or distribution of the goods or the provision of the services.
Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Preliminary injunctions tend to be very expeditious and frequently decided by only one court sitting. Trial levels and appeals tend to vary greatly in terms of timing depending on the complexity, subject matter and merits of the case. However, cases involving counterfeit goods where the infringer does not present a defence and is represented by the curators tend to be very expeditious and not involve more than two court sittings.

Limitation period

What is the limitation period for filing an infringement action?

Civil actions under the Act shall be barred by the lapse of five years in all cases in which no other period within which such actions may be brought is fixed in said Act.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs associated with trademark cases may vary greatly depending on the complexity of the case and therefore are very difficult to predetermine. Cases involving counterfeits tend to be less expensive since, typically, only around two sittings would be required, given that the alleged infringer would not be opposing the case.

In terms of recovery of legal costs, it is generally possible for the successful party to recover such costs. However, in actions involving counterfeit goods, since the alleged infringer does not generally defend the case, the successful party would have to bear all costs that would be associated with the proceedings.

Appeals

What avenues of appeal are available?

Decisions of the Malta IPRD and the Civil Court may be appealed to the Court of Appeal, whereas decisions of the Criminal Court may be appealed to the Criminal Court of Appeal.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The defences available include:

  • that the mark was not used as a trademark;
  • that the mark was used in relation to goods or services that fall outside the remit covered by registration;
  • that the mark is not similar to the extent that there is no likelihood of confusion or association;
  • use in relation to goods and services not covered by the trademark;
  • use by a person of their own name or address;
  • use of a sign that is descriptive or indicative of characteristics of goods or services that are necessary to indicate the intended purpose of a good or service; and
  • acquiescence to infringing use for a continuous period of five years.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The civil remedies available include the destruction of the infringing items, recall from circulation within the channels of commerce or the definitive removal from circulation within the channels of commerce. The court may, on application of the plaintiff in situations where an infringement of an IP right has occurred, issue an injunction to prevent continued infringement (preliminary and permanent). It is also within the courts’ discretion to award pecuniary damages to the injured party and it may also be possible for a successful party to recover legal costs.

With regards to criminal remedies, the Criminal Court may order both fines and imprisonment depending on the nature of the specific criminal offence.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Recourse to arbitration proceedings is generally slowly gaining traction, largely because arbitration is seen to be cheaper, faster and a more flexible form of dispute resolution. However, it is to be noted that Malta provides for concurrent jurisdiction of courts and arbitral tribunals.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

In June 2019, a judgment (Av Dottor Antoine Camilleri bhala prokuratur specjali ghan-nom u in rapprezentanza tas-socjeta estera Nando’s Limited v Mirale and Lamare Limited (case 853/2017, First Hall Civil Court 13/06/19)) was handed down by the First Hall Civil Court, wherein moral damages were awarded arbitrio boni vini to the UK-based company Nando’s Ltd, on the basis of an IP rights infringement by the defendant company Mirale and Lamare Ltd.

The award of moral damages, particularly in the area of trademark infringement, is not customary under Maltese law. It remains to be seen whether the courts will begin to look towards awarding moral damages in this context.