Aug 07, 2019 (Newsletter Issue 10/19)New Malta Trademark ActIn Malta, Act XII of 2019 was enacted to transpose the provisions of Directive EU 2015/2436 and to substitute the old Trademarks Act (Cap 416 of the Laws of Malta). Act XII of 2019 came into force on May 14, 2019, and the New Trademarks Act is now Chapter 596 of the Laws of Malta.
The old Trademarks Act will continue to apply for pending trademark proceedings started under the old Act. All existing trademarks registered under the Old Trademarks Act shall be transferred under the new Trademark Register under the new regime of Chapter 596.
The following are some of the salient changes following the adoption of the new EU Directive and the Malta Trademarks Act:
- Representation of new types of trademarks such as sound, movement and olfactory marks
- Graphical representation requirement eliminated
- Grounds of refusal: Scope of the functionality exclusion expanded and wording “shape, or another characteristic” of a trademark introduced.
- Administrative opposition proceedings introduced
For more information, on the new opposition proceedings, please check the article of our Country Index Partner Mamo TCV Advocates from Malta.
Please note that the amendments have been included and the Maltese survey has been updated thanks to our contributor Mamo TCV Advocates, Malta. May 17, 2013 (Newsletter Issue 7/13)
Becomes Member to Implement Seniority Project
Malta has become the 14th EU National Office to implement the Seniority Project. The Maltese office joins Lithuania, Estonia, Latvia, Sweden, the Slovak Republic, Bulgaria, Benelux, Slovenia, Ireland, Hungary, Portugal, the Czech Republic and Romania in implementation.
Having accurate seniority data is important for Community trade mark owners who have previously registered an identical mark in an EU member state which has been surrendered or allowed to lapse. The project, a part of OHIM´s Cooperation Fund, involves establishing links between entries in the national and Community databases and making the information accessible online.
Source: www.oami.europa.eu
Legal basis is the Trademarks Act, Chapter 597 of the Laws of Malta of January 14, 2019.
Since May 1st, 2004, Malta has been a member of the European Union. Malta is not a member of the Madrid Agreement or Protocol.
Trademark protection is normally obtained by registration, although Maltese law de facto protects 'well-known' marks and furthermore (where applicable) Maltese law contains provisions regulating competition between traders with regard to trademarks, irrespective of the issue of registration.
As a matter of practice, the latest edition of the Nice Classification of Goods and Services is the applicable edition whenever a new trademark application is being filed (currently the 11th edition).
In terms of Article 4 (2) of the Trademarks Act a "trademark" 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:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Colour marks may also be registered, although the applicant is generally required to prove distinctiveness acquired through use in order for the colour (or combination of colours) to be registered. The preferred method when identifying the colour/s in a colour mark application is by indicating the international colour code (Pantone number) of the colour/s in question.
The following trademark types are registrable: trademarks, service marks, trade names, collective marks and certification marks.
The application is filed at the Industrial Property Registrations Directorate. Electronic filings are also possible.
Multiple-class applications are not possible. A separate application has to be filed for each class.
Foreign applicants do not need a local agent. Sufficient is a postal address on Malta.
A power of attorney is necessary.
Foreign applicants need a domestic registration.
The application process includes a formal examination and an examination of distinctiveness. If all the requirements for registration are met, the relevant application will be published in the official journal maintained by the Maltese Industrial Property Registrations Directorate (IPRD) for opposition purposes.
The processing time from first filing to registration (assuming no objections are raised by the IPRD or any interested third party) is approx. 9 months.
Upon registration, the trademark is published in the “Malta Government Gazette”.
National:
Whereas previously, at the application stage, a trademark could not be opposed by a third party through any procedure contemplated by law, the Maltese legislature has now introduced an opposition system in line with Malta's obligations under Directive (EU) 2015/2436, which system is administered by the IPRD. Thus, interested third parties may now oppose the Registration of new trademark applications on relative and on absolute grounds of refusal at the application stage.
An Opposition period of sixty (60) working days will then begin to run, within which interested third parties may oppose the registration of the subject mark.
Following the completion of registration, the registered trademark may (within time limits prescribed by law) be the subject of an invalidation action and/or revocation Action as the case may be, on grounds indicated in the Trademarks Act. These actions may either be filed with the IPRD or in the First Hall of the Civil Court of Malta. At the time of last redaction (October 29, 2020) an IPRD administered procedure for revocation or invalidation is not yet in place, so the only available recourse to third parties seeking to cancel existing trademark registrations is by court application to the First Hall of the Civil Court.
A trademark registration is valid for 10 years from the date of filing. The registration is renewable for periods of 10 years each. Persons interested are to specifically seek legal advice as to the effective date of registration and the 'due by' renewal date of any trademark registration carrying a filing date prior to 1st January 2001, since (a) until 1 January 2001 trademark registration (and renewal) was for a period of 14 years at a stretch, and (b) until some time around 2003, the "priority date" (where applicable) was considered the effective date as from when the original (and subsequent) term(s) of registration was/were calculated.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is EUR 116.47 per class (i.e. per application since Malta observes a single-Class system). There are no registration and publication fees in Malta.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Nov 09, 2021
Mamo TCV Advocates, Valletta, Malta