In generic and simplistic terms, trademarks can be described as names, signs or other marks that are affixed to goods or services to enable distinguishing between one trader from another. As such, in commerce trademarks serve multiple functions. They act as an indicator of the origin and quality of goods and services as well as have inherent advertising and investment functions.
Under Maltese Law, trademarks are regulated primarily under the Trademarks Act, Chapter 416 of the Laws of Malta. Trademarks are granted subject to successful registration and the authority which handles registrations of local trademarks is the Malta Industrial Property Registrations Directorate (“Malta IPRD”), colloquially known as the Malta IP Office.
The concept of unregistered trademark rights, rights which arise by way of use instead of registration, is also present under Maltese Law and derive from general principles of Maltese Law as codified in the Commercial Code, Chapter 13 of the Laws of Malta. In this respect, the Commercial Code provides that regardless of whether a name, mark or distinctive device has been registered as a trademark in terms of the Trademarks Act, traders may not make use of any name, mark or distinctive device capable of creating confusion with any other name, mark or distinctive device lawfully used by others.
Types of Trademarks
A trademark can take various forms. For instance, one can register a “word mark”, resulting in protection over the registered words. It is also possible to register “figurative marks” such as logos, and in the said case the protection would extend to the registered representation of the figurative elements. Combining a word and figurative elements is also possible, together with various other forms of trademarks such as 3D marks and slogans.
However, it should be noted that to date, the Trademarks Act defines a “trademark” as “any sign that is capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings” (emphasis added).
Effectively the Trademark Act’s definition of a trademark implies that it is not possible to register trademarks that are not capable of being represented graphically, including ‘non-conventional’ marks such as scents, textures, tastes and holograms. However, it should be noted that in October 2018, Bill 60 of 2018 was tabled and the same will transpose into Maltese Law the Trademarks Directive 2015/2436 and in the process, it will amend and replace the existing Trademarks Act, also resulting in the removal of the graphical representation requirement. Thus, it is soon expected that non-conventional marks will be able to be registered in Malta.
Trademark protection is not granted for all forms of use of a trademark; it is qualified in terms of the classification of the trademark as registered. For this purpose, Malta implements the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) by way of practice.
The Nice Agreement consists in a trademark classification system under which goods and services are classified into 45 distinct classes. Classes 1 to 34 are assigned to goods, whereas classes 35 to 45 to services.
For example, Class 15 covers “Musical Instruments”. Thus, a trademark application for goods such as guitars, drums and other musical instruments would need to designate Class 15. However, it should be noted that protection is conferred to the specific goods or services indicated in the application, thus, if one indicates only guitars within Class 15, the protection conferred would be limited to guitars and would therefore not cover other musical instruments falling within Class 15.
It is typical that more than one class would be required to adequately cover the scope of protection sought. In this respect, it should be noted that the concept of a multi-class trademark application is alien to Maltese trademark law. Each class covered by a trademark is considered as an individual mark, attributed a unique application number and examined on its own merits. Individual renewal procedures and fees are also due. However, this is of little relevance in practical terms at application stage as the Malta IPRD’s application portal permits the submission of multi-class applications and only from a legal and examination perspective is the said distinction relevant.
From a high-level perspective, there are two main registration requirements that must be satisfied for a trademark to be granted registration. These are known as (i) absolute grounds of refusal and (ii) relative grounds of refusal.
Absolute grounds for refusal include that the:
- Trademark does not fall within the definition of trademarks;
- Trademark is devoid of distinctive character;
- Trademark consists exclusively of signs or indications that may serve, in trade, to indicate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics;
- Trademark consists exclusively of signs or indications that have become customary in the current language or established practices of trade;
- Sign is a shape resulting from the nature of the goods;
- Sign is a shape of goods that is necessary to obtain a technical effect;
- Sign is a shape that gives substantial value to the goods;
- Trademark is contrary to public policy or accepted principles of morality;
- Trademark may or is likely to deceive the public as to the nature, quality or origin of goods or services;
- Use of the trademark is prohibited in Malta by Law;
- Trademark application was made in bad faith; and
- Trademark consists of specially protected emblems in Malta or under Malta’s international commitments such as the Paris Convention.
On the other hand, relative grounds for refusal include that the:
- Trademark is identical to an earlier trademark and the goods or services are also identical;
- Trademark is identical or similar to an earlier trademark registered for identical or similar goods or services, and a likelihood of confusion exists on the part of the public, including the likelihood of association to the earlier trademark;
- Trademark is identical or similar to an earlier mark with a reputation in Malta and the use of the later trademark would take unfair advantage or be detrimental to the distinctive character or reputation of the earlier mark; and
- Use of the trademark in Malta is liable to be prevented as a result of unregistered trademarks or other signs used in the course of trade, copyright or registered designs.
Essentially therefore, absolute grounds of refusal concern matters relating to the nature of the trademark itself whilst relative grounds of refusal relate to conflicts with earlier marks or rights.
Effects of Registration
As noted above, trademark rights are only conferred subject to successful registration. Following registration, protection is conferred for an initial 10-year period. This 10-year period can, when due for expiry, be renewed for additional 10-year periods without limit and without the need of proving actual use of the trademark.
Aside from protection, trademark registration also provides various other benefits including:
- Serving as a bar to later trademark applications;
- Providing a presumption of ownership by the registered owner and exclusive rights in connection with the goods and services covered by the registration; and
- Permitting the application of symbols denoting that a good or service is covered by trademark protection.
Trademark Protection & Infringement
Trademarks are infringed if a third party uses a registered trademark in the course of trade which is identical, or confusingly similar, with the registered trademark and in relation to identical or confusingly similar goods or services for which the mark has been registered. As such, the proprietor of a trademark is bestowed specific legal rights exercisable against third parties which bestow protection against unauthorized use or reproduction of the mark. At their core, trademark rights prevent unfair competition between traders, as well deceit of consumers.
However, not all unauthorised uses of trademarks amount to infringement. In fact, trademark defences include:
- That the trademark was not used as a trademark;
- That the trademark was used in relation to goods or services that fall outside the remit covered by the registration of that trademark;
- That the mark used is not similar to the extent that it results in a likelihood of confusion;
- That the use is in relation to goods or services that are not covered by the registration of the mark;
- That the use is by a person using his or her own name or address;
- That the use of a sign is descriptive or indicative of characteristics of goods or services that are necessary to indicate the intended purpose of a good or service; and
- That there was acquiescence to infringing use for a continuous period of five years.
Additionally, it should be noted that trademark protection is territorial in scope. Thus, the protection conferred by a Maltese trademark is limited to Malta’s territorial confines. European Trademarks also exist, and such confer protection through one unitary trademark across all European countries. An International Trademark system is also in place, however, to date Malta is not a party to the relevant international agreement establishing the International Trademark system and thus, benefitting directly from the International Trademark system is not possible for a Maltese entity or person. Still, benefitting therefrom in indirect ways is possible by claiming an earlier European Trademark application.