Latest News: 05-17-2013 (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.
Legal basis is the Trademarks Act of January 1st, 2001.
Since May 1st, 2004, Malta has been a member of the European Union.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours, the three-dimensional form of a good or its packaging and any combination of the mentioned signs. Sound marks are only registrable as musical notations. Olfactory marks are not registrable.
The following trademark types are registrable: trade marks, service marks, trade names, collective marks and certification marks.
The application is filed at the Industrial Property Registrations Directorate.
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 no longer necessary.
Foreign applicants need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 9 months.
After registration, the trademark is published in the “Malta Government Gazette”.
There are no provisions for filing opposition against a trademark registration.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the date of filing. The registration is renewable for periods of 10 years each. Trademarks applied for prior to December 31st, 2000, are valid for 14 years. With the first renewal after December 31st, 2000, the term of validity is reduced to 10 years.
The grace period is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration or for any other uninterrupted period of 5 years, it may be subject to revocation.
The official fee is approx. EUR 117.00 per class.
Trademark Licence Agreement
The Maltese Trademarks Act does not contain any requirements for a licence to be in writing. The Act only refers to licensing of registered marks. A licence to use a trademark may be limited to only some of the goods and/or services in respect of which the mark is registered. A licence may be general or limited. In case of a limited licence, the licence may apply to only to some of the goods/services for which the mark has been registered or be limited as to the manner of use or the territory. The sale of a registered trademark does not automatically terminate the licence agreement. There are no statutory provisions which require specific terms to be incorporated into licence agreements.
There are provisions in law for the recordal of a licensee with the Trademark Office. The recordal is voluntary, but in order for it to be recognised by the Maltese Intellectual Property Office a licence must be recorded. The law does not stipulate a specific time period within which the licensee must be registered. Registration only becomes effective from the date of filing the application for recordal. The grantor of the licence must specify the date on which the licence has commenced/is to commence, and the duration, if applicable. There is no prescribed instrument by which a licence should be granted, provided that sufficient documentary evidence is provided to the Intellectual Property Office for the purposes of registration.
The following documents are required for a recordal:
1. An application form
2. A power of attorney (if the application is signed by an agent/attorney of the grantor
A licence shall be deemed to have come into force on the date indicated in the application form submitted by the licensor to the Intellectual Property Office in Malta. This date is not necessarily the date of the application. The licensor may limit the licence to a specific period of time. The licence is not required to be published.
There is an evidentiary presumption that use by a recorded licensee is permitted use, provided that the use falls within the scope of the licence. A licensee may join the proprietor in infringement proceedings. An exclusive licence may provide that the licensee shall have the same rights and remedies of an assignee. Restrictions regarding the licensed use may be imposed by the licensor. If the licence is to be non-exclusive, the licensee may call upon the trademark proprietor to institute infringement proceedings in respect of any matter affecting his interests. Should the proprietor refuse to take such action as may be requested of him by a licensee or fail to take such action within two months from the licensee’s request, the licensee may bring the proceedings in his own name as if he were the proprietor. Where infringement proceedings are brought by the licensee, the proprietor shall be joined in action.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
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We would like to thank the following law firms for their assistance in updating the information provided:
Busuttil & Busuttil, St. Julians, Malta
Salomone, Sansone & Co., Valetta, Malta
Chetcuti Cauchi Advocates, Valetta, Malta