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Maltese Laws |
PATENTS AND DESIGNS ACT
To make provision for the registration and regulation of patents and designs.
1st June, 2002
ACT XVII of 2000, as amended by Acts IX of 2003 and XVIII of 2005;
and Legal Notices 181 and 186 of 2006, and 426 of 2007.
"biol ogical m aterial" means any m aterial containing genetic information and capable of reproducing itself or being reproduced
in a biological system;
"Budapest Tr eaty" mea n s the Tr eaty for the International Recognition of the Deposit of Micro-organisms for the Purpose
of Patent Procedure done at Budapest on the 28th April 1977;
"the Comptroller" means the Comptroller of Industrial Property and includes any other person delegated by th e Comptr ol
ler or appointed by the Minister to exercise all or any of the powers and to perform all or any of the duties of the Comptroller;
"essential biological process for the production of plants and animals" means any process c onsist i ng enti rely of nat
u ral phenomena such as crossing or selection;
"Europ ean Union means th e European Union refe rred on the
Treaty;
"micro bio l og ical pro c ess" means any pr ocess i nvo lvin g, o r performed upon, or resulting in, microbiological material;
"Member S t ate" means a state which is a member of the
European Union;
"Minister" means the Minister responsible for the protection of industrial property and "Ministry" shall be construed
accordingly;
"patent" means the exclusive right granted by the Comptroller in terms of the provisions of this Act;
"plant varieties" refers to a ll botanical genera and speci e s, including, inter alia, hybrids between genera or species;
"prescribed" means prescribed by Parts of this Act;
Short title. Amended by: IX. 2003.106.
Interpretation. Substituted by: IX. 2003.107.
Cap. 29.
"the register" means the register of patents kept under this Act and includes the regist er of pa tents kept under the Industrial Property (Protection) Ordinance, parts of which have been repealed by this Act;
Cap. 460. "the Treaty" has the same meaning assigned to it by the European
Union Act;
"variety" means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective
of whether the conditions for the grant of a plant variety right or patent are fully met, can be:
- defined by the expression of the characteristics that results from a given genotype or combination of genotypes,
- distinguished from any other plants grouping by the expression of at least one of the said characteristics, and
- considered as a unit with regard to its suitability for being propagated unchanged,
where a plant grouping consists of entire plants or parts of plants as far as such parts are capable of producing entire plants.
Appointment and duties of Comptroller.
Patentable inventions. Amended by: IX. 2003.108.
(2) The Comptroller shall be appointed by the Minister.
Provided that such inventions shall also be patentable even if they concern a product consisting of or containing biological ma te
rial or a proces s by me ans of whic h biolog ical mate rial is produced, processed or used:
Provided further that biological material which is isolated from its natural environment or produced by means of a technical process
may be subject of an invention if it previously occurred in nature.
(2) The following, in particular, shall not be regarded as inventions within the meaning of subarticle (1):
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business and programs
for computers;
(d) presentations of information.
(3) The provisions of subarticle (2) shall exclude the patentability of the subject matter or activities referred
to in that subarticle only to the extent to which a patent application or patent relates to such subject matter or activities as
such.
(4) A method for the treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human
or animal body shall not be regarded as an invention capable of industrial application for the purposes of subarticle (1):
Provided that this subarticle shall not apply to products, in particular substances or compos itions, for use in any of these methods.
(5) A patent shall not be granted in respect of:
(a) an invention the exploitation of which would be contrary to public order or morality:
Provided that exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation;
(b) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements,
including the sequence or partial sequence of a gene:
Provided that an element isolated from the human body or otherwise produced by means of a technical process, including the sequence
or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that
of a natural element;
(c) processes for cloning the human body, processes for modifying the germ line genetic identity of the human body and uses of the
human embryo for industrial or commercial purposes;
(d) processes and products for modifying the genetic identity of animals which are likely to cause them suffering without
any substantial medical benefits to man or animal;
(e) plant and animal varieties:
Provided that patents shall not be granted for plant varieties only after a new form of plant variety protection is introduced
in such form as may be prescribed:
Provided further that a patent may still be granted for a plant variety in respect of which a patent application is still
pending on the date that a new form of plant variety protection is prescribed;
(f) essentially biological process of the production of plants or animals:
Provided that this is without prejudice to the patentability of inventions which concern a microbiological
or other technical process or a product obtained by means of such a process;
(g) DNA sequence not containing any technical information and in particular any indication of its function.
(6) Inventions which concern plants or animals shall be patentabl e if the technical feasib ility of the inven tion
is not confined to a particular plant or animal variety.
(7) The Minister may make regulations to modify any of the provisions of this article other than article (5)(a), (b), (c) and (d) for t h e purpo se of main taining them in co nformit y wi th developments in science and technology.
Novelty. 5. (1) An invention shall be considered novel if it does not form part of the prior art.
(2) The prior art means everything which, before the filing date or, where priority is claimed, before the priority date
of the application claiming the invention, was available to the public in a written or other graphic form, by an oral description,
by use or in any other way anywhere in the world.
(3) The prior art includes also the content of any patent application as filed in, or with effect for, Malta to the extent
that such app licatio n o r t h e patent g r an ted t h ereon is p ubl ished subsequently by or for the Office of the Comptroller:
Provided that the filing date or, where priority is claimed, the priority date of such application is earlier than the date referred
to in subarticle (2).
(4) The provisions of subarticles (1) to (3) shall not exclude the patentability of any substance or composition, comprised in
the prior art, for use in a method referred to in article 4(4) provided that its use for any method referred to in the said subarticle
(4) is not comprised in the prior art.
Inventive step. 6. An invention shall be considered to involve an inventive step if, having regard to the prior art as defined in article 5(2), it is not obvious to a person skilled in the art:
Provided that if the prior art also includes any of the documents referred to in article 5(3) of this Act, these documents are not to be considered in deciding whet her there has been an inventive step.
Industrial applicability.
Disclosure of the invention.
application and if it was due to, or in consequence of -
(a) an evident abuse in relation to the applicant or his legal predecessor, or
(b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised,
international exhibition.
(2) Where two or more applications have been filed by different persons in respect of the same invention and the inventors
concerned mad e the i nventi on i ndepend ently of each oth er, th e right to a patent for that invention shall belong to the applicant
whose application has the earliest filing date or, where priority is claimed, the earliest priority date, provided that his application
has been published.
(3) For the purpose of proceedings before a Court the applicant shall be deemed to be entitled to exercise the right to a patent.
Entitlement to file an application.
Right to a patent.
(2) The employee shall have a right to equitable remuneration taking into account his salary, the economic value of the invention and any benefit derived from the invention by the employer. In the absence of agreement between the parties, the remuneration shall be fixed by the Civil Court, First Hall.
Invention made in execution of a commission or an employment contract.
(a) a request for the grant of a patent; (b) a description of the invention;
Mention of inventor.
Requirements of application. Amended by:
IX. 2003.109.
(c) one or more claims;
(d) any drawings referred to in the description or the claims;
(e) an abstract of the invention.
(2) The application shall designate the inventor or, where there are sev e ral i nventors, all o f them. If t h e ap plican t
is no t th e inventor, or is not the sole inventor, the applicant shall indicate the legal grounds for his entitlement to file the
application.
(3) The application shall be subject to the payment of a filing fee as may be prescribed.
(4) The application shall be drafted in the prescribed language and shall satisfy any conditions that may be prescribed.
Date of filing. 14. (1) The filing date of an application shall be the date of re ceipt by the Office of the Co mptroller of th e documents that contain:
(a) an express or implicit indication that the granting of a patent is sought;
(b) indications allowing the identity of the applicant to be established;
(c) a description of the invention for which a patent is applied for;
(2) (a) If the Comptroller finds that, at the time of receipt of an application, the requirements referred to in subarticle (1) have
not been fulfilled, he shall invite
the applicant to comply with any requirement that has not been satisfied within such tim e as may be
prescribed.
(b) If the applicant complies with the invitation referred to in paragraph (a), the filing date of the application shall be the date of receipt of all missing requirements. If the applicant fails to comply
with such an invitation, the application shall be treated as if it had not been filed.
(c) Where the description refers to drawings which are not i n cluded in the app licati on, the Com p tro ller shall invite the applicant
to furnish the missing drawings wit h in such period as m a y be prescribed. If the applicant complies with the said invitation,
the filing date of the application shall be the date of receipt of the missing drawings. If the applicant fails to comply with the
invitation, the filing date shall be the date of receipt of the appli c ati on and an y referen c e t o the drawings shall be deemed
as not having been made.
(3) (a) The indications referred to in subarticle (1)(a) and (b) must be submitted in such language or languages as m a y be p r escribed, hereinafter referr ed t o as the official languages of
the Office.
(b) If any of the description referred to in subarticle (1)(c)
or any text contained in any drawings is in a language o t her t h an th e of ficial l a n guages of the Of f i ce, a translation
thereof in one of the official languages of the Office shall be deposited at the Industrial Property Office within such time limit
as may be prescribed.
(2) (a) Where an application refers to an element isolated from the human body or otherwise produced by means of a technical process
including the sequence or partial seq u ence of a g e n e , the i ndustrial ap pli c at ion of a sequence or a parti a l sequence
of a gene m u st be disclosed in the patent application.
(b) When the application concerns a sequence or a partial sequence of a gene used to produce a protein or part of a protein, it is
necessary to specify which protein or part of protein is produced or function or sequence it performs.
(3) Where an invention involves the use of or concerns biological material which is not available to the public and which
cannot be described in a patent application in such a manner as to enable the invention to be reproduced by a person skilled in the
art, the description shall be considered inadequate for the purpose of this Act unless:
(a) it is supplemented by a deposit of such material with a depository institution as may be prescribed; and
(b) the application as filed contains such relevant information as is available to the applicant on the characteristics
of the biological material deposited.
(4) Access to the deposited biological material shall be provided through the supply of a sample:
(a) up to the first publication of the patent application, only to those persons who are authorised under this Act;
(b) between the first publication of the application and the granting of the patent, to anyone requesting it or, if the applicant
so requests, only to an independent expert;
(c) after the patent has been granted, and notwithstanding revocation or cancellation of the patent, to anyone requesting it.
(5) The sample shall be supplied only if the person requesting it undertakes, for the term during which the patent is in force:
(a) not to make it or any material derived from it available to third parties; and
(b) not to use it or any material derived from it except for experimental purposes, unless the applicant for or proprietor
of the patent, as applicable, expressly waives such an undertaking.
Disclosure of the invention. Amended by:
IX. 2003.110.
(6) Where an application is refused or is withdrawn, then at the applicant’s request, access to the deposited material shall
be limited to an independent expert for twenty years from the date on which the patent application was filed, and in such case the
provisions of subarticle (5) shall apply.
(7) The applicant’s requests referred to in subarticle (4)(b) and in subarticle (6) m ay only be made up to the date on which the technical preparations for publishing the patent application
are deemed to have been completed.
(8) If the biological material deposited in accordance with this article c eases to be availabl e from th e reco gnised depositary
institution, a new deposit of the material shall be permitted on the same terms as those laid down in the Budapest Treaty.
(9) Any new deposit shall be accompanied by a statement signed by the depositor certifying that the new deposited biological
material is the same as that originally deposited.
Claims. 16. (1) The claims shall define the matter for which patent protection is sought.
(2) The claims shall be clear and concise.
(3) The claims shall be supported by such description as may be necessary or as may be prescribed.
(4) The claims shall be presented in the prescribed manner.
Abstract. 17. The abstract shall merely serve the purpose of technical information; in particular, it shall not be taken into account for the purpose of interpreting the claims.
Unity of invention. 18. (1) An application shall relate to one invention only or to a gro up of inv e n tio ns so li nked as to form a sing le general inventive concept.
(2) Failure to comply with the requirement of subarticle (1)
shall not be a ground for invalidation or revocation of a patent.
Division of application.
(2) Any divisional application shall be deemed to have been filed on the filing date of the earlier application and shall have
the benefit of any right to priority attaching to such earlier application provided its content does not go beyond the disclosure
as filed in the earlier application.
(3) Priority documents and any required translation thereof that are submitted to the Office of the Comptroller in respect of
the initial application shall be considered as having been submitted in respect of all divisional applications.
Amendment or correction and withdrawal of applications.
application is in order for a grant.
(2) No amendment or correction of the application may go beyond what has been disclosed in the application as filed.
(3) The applicant may withdraw the application at any time during which it is pending.
(2) Where the application contains a declaration under subarticle (1), the Office of the Comptroller may require that
the applicant furnish, within such time as may be prescribed, a copy of the earlier application, certified as correct by the Office
or any regional or international organisation with which it was filed.
(3) The effect of the declaration referred to in subarticle (1) shall be such as is provided in the Convention referred to in
that subarticle pursuant to which the declaration has been made.
(4) If the Comptroller finds that the requirements under this article and any regulations as may be prescribed have not been
fulfilled, he shall invite the applicant to file the required correction within such time as may be prescribed. If the applicant
does not comply with the sai d invitation, the declaration referred to in subarticle (1) shall be deemed not to have been made.
(5) The Minister responsible for the Industrial Property Office, with the concurrence of the Mi nist er responsible for Foreign
Af fairs, m a y by order specify the countri es with wh ich any international arrangement as is referred to in subarticle (1) are
in force and may by subsequent orders amend, revoke or substitute any such order.
(2) If the examiner reports to the Comptroller that not all the formal requirements are complied with, the applicant shall be given
Inspection of files.
Right of priority.
Examination as to formalities.
an opportunity to make observations on the report and to amend the app lication withi n such period as ma y be pre s cribed so as
to comply with those requirements, and if the applicant fails to make such amendments the Comptroller may refuse the application.
(3) If the examiner reports to the Comptroller that the application, whether as originally filed or as amended
pursuant to subarticle (2) complies with all the formal requirements at any time be fore the end of such prescrib ed period as is
referred to in subarticle (2), the Co m p t r ol ler shall not ify the applicant accordingly.
Grant. 24. (1) Where the applicant has been notified pursuant to article 23(3) that his application complies with all the formal requirements, the Comptroller shall on payment of the prescribed fee, grant a patent on the application.
(2) As soon as possible after the decision to grant a patent, the Comptroller shall publish a notification that the patent has
been granted and shall publish the patent in the prescribed manner.
25. (1) (a)Subject to paragraphs (b) and (c) hereof, the Comptroller shall, within the time limit provided for in subarticle (2) and in the prescribed manner, publish all
applications filed with it.
(b)No application shall be published if it is withdrawn or is rejected before the expiration of 17 months from the filing date or, where
priority is claimed, from the priority date of the application.
(c)If by the time an application is published according to subarticle (2), a patent has been granted pursuant to that application, the
Comptroller shall not publish the applicati on but shall publish the patent in the prescribed manner.
(2) The Comptroller shall publish each application filed with it promptly after the expiration of 18 months from the filing date
or, where priority is claimed, from the priority date of the application. H owever, wh ere, b efore th e exp irat ion of th e said
peri od of 18 months, the applicant presents a written request to the Office of the Comptroller that his application be published,
the Office of the Comptroller shall publish the application promptly after the receipt of the request.
Term of patents and maintenance fees.
Amended by: IX. 2003.111; XVIII. 2005.2.
(2) The maintenance of a patent shall be subject to the payment of the prescribed fee hereinafter referred to as the maintenance
fee. Such maintenance fee shall be due in respect of the third year and each subsequent year thereafter calculated from the filing
date of the application and shall be paid by not later than the last day of the month of the prescribed due date.
(3) When a maintenance fee has not been paid on or before the prescribed due date, it may still be validly paid within six months
of that date, provided the prescribed surcharge is paid within that period.
(a) the making of a product incorporating the subject- matter of the patent;
(b) the offering or the putting on the market of a product incorporating the subject-matter of the patent, the use of such product,
or the importation or stocking of such product for such offering or putting on the market or for such use;
(c) the inducing of third parties to perform any of the above acts.
(2) Where the patent concerns a process, the proprietor of the patent shall have the right to prevent third parties from performing
without his authorisation, the following acts:
(a) the use of a process which is the subject matter of the patent;
(b) in respect of any product directly obtained by the use of the process, any of the acts referred to in subarticle (1)(b), even where a patent cannot be obtained for the said product;
(c) the inducing of third parties to perform any of the above acts.
(3) The protection conferred by a patent on biological material possessing specific characteristics as a result of the invention
shall ex t e n d t o an y bi o l o g i cal mat e ri al der i v e d fr om t h at bi ol o g i cal material through propagation or
multiplication in an identical or divergent form and possessing those same characteristics.
(4) The protection conferred by a patent on a process that enables a biological material to be produced possessing specific
characteristics as a result of the invention shall extend to biological material directly obtained through the process and to any
other biological material derived from the directly obtained biological material through propagation or multiplication in an identical
or divergent form and possessing those same characteristics.
(5) Save as provided in article 4(5)(b), the protection conferred by a patent on a product con t ai ning or consisti ng of genet i c information shall extend to all material,
in which the product is incorporated and in which the genetic information is contained and performs its function.
(6) Notwithstanding subarticles (1) and (2), the proprietor of a patent shall have no right to prevent third parties from performing
the acts referred to in subarticles (1) and (2)(b) in the following circumstances:
Rights conferred by a patent. Amended by:
IX. 2003.112.
(a) where the act is done privately and for non- commercial purposes, provided that such act does not significantly
prejudice the economic interests of the proprietor of the patent;
(b) where the act consists of making or using such product for purely experimental purposes or for scientific research;
(c) where the act consists of the extemporaneous preparation for individual cases, in a pharmacy or by a medical or
veterinary doctor, of a medicine in accordance with a medical prescription or of acts concerning the medicine
so prepared;
(d) when an act is done for purposes which can reasonably be related to the development and presentation of information required
by the law of Malta or any other country that regulates the production, use or sale of medicinal or phytopharmaceutical products;
(e) when the use of the patented invention is on board vessels of the countries of the Union of Paris for the Protection of
Industrial Property in the body of the vessel, in the machinery tackle, gear and other accessories, when
such vessels temporarily or accidentally enter the waters of Malta, provided that the invention is used exclusively for
the needs of the vessel;
(f) when the use of that patented invention is in the construction or operation of aircraft or land vehicles of countries
of the Union of Paris for the Protection of Industrial Property or of accessories to such aircraft or land vehicles when
such aircraft or vehicles temporarily or accidentally enter the territory of Malta.
(7) Notwithstanding the provisions of subarticles (3), (4) and
(5):
(a) the sale or other form of commercialization of plant propagation material to a farmer by the holder of the patent or with his
consent for agricultural use implies authorization for the farmer to use the product of his harvest for propagation or multiplication
by him on his own farm;
(b) the sale of any other form of commercialization of breeding stock or other animal reproductive material to a farmer
by the holder of the patent or with his consent implies authorization for the farmer to use the protected livestock for an
agricultural purpose. Such use includes making the animal or other animal reproductive material available for the
purposes of pursuing his agricultural activity. Such use does not include the sale within the framework of or for the purpose
of a commercial reproduction activity.
(8) (a) Subject to paragraph (b), a patent shall also confer on its proprietor the right to prevent third parties from
supplying or offering to supply a person, other than a party entitled to exploit the patented invention, with mea n s, rel a ti ng
t o a n el ement of that invention, essential for carrying out the invention, when the third party knows, or ought to know in the
circumstances, that those means are suitable and intended for carrying out that invention . The pro v isi on of this paragraph sha
l l not apply where such means are staple commercial products and th e circumstances of the supply of such products do not
constitute inducement
to infringe the patent.
(b) Persons performing any acts referred to in subarticle (6 )( b ), ( c ), ( d ), ( e ), ( f ) and ( g ) of shal l not b e co nsid ered to be p a r ties ent itl ed t o exp l oi t the inventi on within the meaning of the preceding
paragraph.
(9) (a) The propagation of a patent shall have no right to prevent third parties from performing acts referred to in subarticles
(1)(b) and (2)(b) where the act concerns a produ ct wh ich has been pu t o n t h e m a rk et by th e proprietor of the patent, or with his express
consent, insofar as such as act is performed after that product has been so put on the market.
(b) The protection referred to in subarticles (3), (4) and (5) shall not extend to biological material obtained form the propagation
or multiplication of biological material placed on the market by the holder of a patent or with his consent where the multiplication
or propagation necessarily results from the application for which the biological material was marketed:
Provided that the material obtained is not subsequentl y used for other propagation or multiplication.
(c) For the purposes of this subarticle "market" means the market in Malta and from 1st May, 2004, the European Union.
(10) The Minister may make regulations giving effect to any international agreement or obligation entered into by Malta with
reg a rd to m a tter s cov e red by t h is arti cle and may by such regulations regulate the above rights and limitations to reflect
the provisions of any such agreement or obligation.
(2) A patent application shall be deemed never to have had the effects set out in subarticle (1) if it is withdrawn, or deemed to be withdrawn or finally refused.
Rights conferred by a patent application after publication.
Prior user. 29. (1) A patent shall have no effect against any person who in good faith, for the purposes of his enterprise or business, before the filing date, or, where priority is claimed, before the priority date of the application on which the patent is granted, and within Malta w a s using th e in venti on or was m a kin g ef fect ive an d seriou s preparations for such use. Any such person shall have the right, for the purposes of his enterprise or business, to continue such use or to use the invention as envisaged in such preparations.
(2) The right of the prior user may only be transferred or may only devolve together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made.
Extent of protection.
Change in ownership of
patent applications or patents.
(2) For the purposes of determining the extent of protection and in accordance with such regulations as may be prescribed, due
account shall be taken of elements which at the time of any alleged infringement are equivalent to the elements as expressed in
the claims.
(3) For the period up to the grant of the patent, the extent of the protection conferred by a patent application shall be determined
by the latest filed claims contained in the publication under article
25. However, the patent as granted or as amended in invalidation proceedings shall determine retroactively the protection conferred
by the patent application, in so far as such protection is not thereby extended.
(4) In determining the extent of protection, due account shall be taken of any statement unambiguously limiting the scope of the
claims made by the applicant or the proprietor of the patent during procedures concerning the grant or the validity of the patent.
(5) If the patent contains examples of the embodiment of the invention or examples of the functions or results of the invention,
the claims shall not be interpreted as limited to those examples.
(2) Any change in the ownership of a patent application or a patent shall be recorded in the patent register on payment of the
prescribed fee. The new proprietor of the application or patent shall be entitled to institute any legal proceedings concerning the
patent only if he has been recorded in the patent re gister as the new proprietor.
(3) The transfer or assignment of a patent application or patent shall not affect rights acquired by third parties before the
date of
such transfer or assignment and shall have effect vis-à-vis third parties only after entry thereof is made in the patent register, unless such th ird parti e s ha vin g acqu i red ri gh ts afte
r the dat e o f th e transfer or assignment but before its entry into the register knew of the transfer or assignment at the date
on which such rights were acquired:
Provided that where there is a judicial assignment of a patent by order of the Court under article 32 all licences and other
rights shall lapse upon the registration of the person entitled to the patent in the patent register except where the former proprietor
of the patent or his licensee, before th e inst itution of th e l e g a l proceedings, acting in good faith, had used the invention
or made effective and serious preparations to do so in which case the former pr oprietor of the patent or his licensee may continue
to use the invention provided he requests within the prescribed time a non- exclusive licence of the patent from the new proprietor
whose name is entered in the patent register.
The non-exclusive licence referred to above shall be granted for a reasonable period and upon reasonable terms.
Provided that if the person who is not entitled to a patent knew at the time when the patent application was filed or granted to him that he was not entitled to the patent, such period of limitation shall not apply in his regard.
Judicial assignment of patent application or patent.
(2) Where there are joint proprietors of a patent, each of them may with or without the agreement of the others separately assign
or transfer by succession his share of the patent or institute court proceedings for an infringement of the patent, but the joint
owners may only act jointly to surrender the patent or conclude licence contracts with third parties under the patent.
(3) The provisions of this article shall be applicable only in the absence of an agreement t o the cont r a ry between th e join
t applicants or owners.
Joint ownership of patent application or patent.
(2) The patent register shall include such matters constituting or relating to the patent application or patent as may be prescribed and entries of all corrections, amendments, change in ownership or other matters that he is empowered or required by or under this Act
Patent register.
t o r ecord . No entr y shal l b e mad e in the reg i ster pri o r to the publication of the application.
(3) The patent register shall be prima facie evidence of all matters directed or authorised by or under this law to be entered therein.
(4) The patent register shall, subject to such regulations as may be prescribed, be open to public inspection.
Licence contract. 35. (1) A patent application or patent may be licensed in whole or in part for the whole or part of Malta. A licence may be exclusive or non-exclusive.
(2) A licence contract shall in pain of nullity be made in writing and shall be signed by the parties to the contract.
For the purposes of this law, "licence contract" means any contract by wh ich a party ("th e li cen s o r ")
all o w s th e ot her p a r t y ("th e licensee") to perform any of the acts referred to in article 27 in respect of an
invention claimed in a patent or a patent application.
(3) A licence may be recorded in the patent register on payment of the prescribed fee. Article 31(3) shall apply mutatis mutandis to the grant or transfer of a licence.
Rights of licensee. 36. (1) In the absence of any provision to the contrary in the licence contract, the agreement given by the licensor to the licensee shall extend to the performance in respect of the invention of all the acts referred to in article 27 without limitation as to time, in the entire territory of Malta, and through any application of the invention.
(2) In the absence of any provisions to the contrary in the licence contract, the licensee ma y not allo w a th ird person to perform in respect of the invention any of the acts referred to in article 27.
Rights of licensor. 37. (1) In the absence of any provision to the contrary in the licence contract, the licensor may allow a third person to perform in respect of the invention any of the acts referred to in article 27 and shall not be prevented from performing them himself.
(2) If the licence contract provides that the licence is exclusive, and un less it i s expressly provided o t herwise in t h e licence contract, the licensor may neither allow a third party to perform nor perform himself in respect of the invention any of the acts referred to in article 27 which are covered by the said contract.
Licences of right. 38. (1) Where the proprietor of a patent files a written statement with the Office of the Comptroller that he is prepared to allow any person to use the invention as a licensee in return for appropriate compensation, the maintenance fees which fall due after receipt of the sta t ement sha l l be reduc e d as ma y by regulations be prescribed.
(2) If no one has informed the proprietor of the patent of his
intention to use the invention, the statement may be withdrawn at any time upon written notification to this effect to the Office
of the Comptroller:
Provided that the statement shall be deemed to be withdrawn when following a judicial assignment of a patent by order
of the Court under article 32 the name of the person entitled to the patent is entered in the patent register.
(3) The statement may not be filed as long as an exclusive licence is recorded in the patent register.
(4) On the basis of the statement, any person shall be entitled to use the invention as a licensee under such conditions as may
by regulations be laid down. Any licence so obtained shall be treated as a contractual licence.
(5) No request for recording an exclusive licence in the patent register shall be admissible after the st at emen t has been filed,
unless the said statement is wi thdrawn or be deemed to be withdrawn.
(2) The grant of the non-voluntary licence shall be subject to the payment of such equitable remuneration to the proprietor of
the patent as may be determined by the Civil Court, First Hall, and may be permitted if, prior to the institution of such proceedings,
the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and
if such efforts have not been successful within a reasonable period of time.
(3) Notwithstanding subarticle (1), a non-voluntary licence shall not be granted if the Court is convinced that circumstances
exist which justify the non-working or insufficient working of the patented invention in Malta.
(4) In deciding whether to grant a non-voluntary licence, the Court shall give both the proprietor of the patent and the person
requesting the non-voluntary licence an adequate opportunity to present arguments according to the provisions of the Code of Organization and Civil Procedure.
(5) Any non-voluntary licence shall be revoked when the circumstances which led to its granting cease to exist, taking
into account the legitimate interests of the proprietor of the patent and of the licensee. The continued existence of these circumstances
Non-voluntary licences. Amended by: IX. 2003.113;
L.N. 181 of 2006; L.N. 186 of 2006.
Cap. 12.
shall be reviewed upon the request of the proprietor of the patent by sworn application before the Civil Court, First Hall.
(6) Article 27(3)(a) of this Act shall be interpreted in the sense th at i f th e pat e n t ed p r od uct i s pu t on t h e market b y a li cen s ee
pursuant to a non-voluntary licence, it will not be deemed to have been put on the market with the express consent of the proprietor
of the patent.
(7) The scope and duration of a non-voluntary licence shall be limited to the purpose for which it was authorised and shall be:
(a) non-exclusive,
(b) non-assignable, except with that part of the enterprise or goodwill which enjoys such authorisation,
(c) terminated if and when the circumstances which led to it cease to exist, and
(d) predominantly for the supply of the domestic market.
(8) The Civil Court, First Hall, may on a sworn application filed by the owner of a patent (the second patent) which cannot be
exploited without infringing an earlier patent (the first patent), d irec t th e Co m pt r ol ler to gran t a no n-ex cl usi ve ,
n on - vo lu n tary licence provided that:
(i) the invention claimed in the second patent shall involved an important technical advance of considerable economic
significance in relation to the invention claimed in the first patent;
(ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to sue the invention claimed
in the second patent; and
(iii) the use authorised in respect of the first patent shall be non-assignable except with the assignment of the
second patent.
(9) Where a breeder cannot acquire plant variety protection or exploit a plant variety without infringing a prior patent, he may
apply to the Civil Court, First Hall, for a compulsory licence for non-exclusive use of the invention protected by the patent in
so far as the licence is necessary for the exploitation of the plant variety to be pro t ected, subject to pa ym ent o f an appropriate
royalt y. Where such a licence is granted, the holder of the patent will be entitled to a cross-licence on reasonable terms to use
the protected variety:
Provided that an applicant for a licence referred to in above shall demonstrate that:
(a) he had applied unsuccessfully to the holder of the prior patent to obtain a contractual licence;
(b) the plant variety constitutes significant technical progress of considerable economic interest compared with the invention
claimed in the prior patent.
(10) Where the holder of a patent concerning a biotechnological invention cannot exploit it without infringing a prior plant variety
right, he may apply for a compulsory licence for non-exclusive use of the plant variety protected by that right, subject to payment
of an appropriate royalty. Where such a licence is granted, the holder of the variety right will be entitled to a cross-licence on
reasonable terms to use the protected invention:
Provided that an applicant for a licence referred to in above shall demonstrate that:
(a) he had applied unsuccessfully to the holder of the prior plant variety right to obtain a contractual licence;
(b) the invention constitutes significant technical progress of considerable economic interest compared with the plant variety protected
by the prior plant variety right.
(11) With regard to plant variety protection subarticles (9) and (10) shall only come into force when the relevant form of plant
variety protection comes into force as provided in article 4(5)(e).
(2) The conditions set out in article 39(7) and (8) shall also apply in respect of an authorisation issued by the Minister under
this article.
(3) Any decision taken by the Minister under this article may be the subject of an appeal in an action by sworn application before
the Civil Court, First Hall.
(2) The proprietor of a patent shall have the right to request the Comptroller t o make changes in the pat e nt in o r der to
correct mistakes or clerical errors, made in good faith.
(3) No such change in the patent may go beyond what has been disclosed in the application as filed.
(4) Where the Comptroller makes changes in a patent he shall publish the changes and the extent thereof and shall record them in
the patent register.
Exploitation by Government or by third parties authorised by Government. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
Changes in patents.
Surrender.
(2) A surrender will be entered in the patent register only with the agreement of any third party who has a right in rem recorded in the register or has instit uted proceedings under article 32. If a licence is rec o rded in the regi st er such sur r en der wi ll onl y b e entered if the proprietor of the patent proves to the satisfaction of the Comptroller that he has previously informed the licensee of his intention to surrender.
Lapse. 43. (1) A patent shall lapse:
(a) at the end of the term laid down in article 26;
(b) if the proprietor of the patent surrenders it, on the date when surrender takes effect;
(c) if a maintenance fee and any surcharge have not been paid in due time, on the date when the maintenance fee was due;
(d) if the extent of the protection has been limited under article 41, to the extent that the patent is not maintained,
on the date when the limitation is entered in the patent register.
(2) The Office of the Comptroller shall record any lapse of the patent in the patent register.
Invalidation of patents. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
(a) that the subject-matter of the patent is not patentable within the terms of articles 4 to 7;
(b) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried
out by a person skilled in the art as stipulated in article 15;
(c) that the right to the patent does not belong to the person to whom the patent was granted within the terms of
articles 10 and 11;
(d) that the subject matter of the patent extends beyond the content of the application as filed or, if the patent was granted on
a divisional application, beyond the content of the earlier application as filed subject to any action carried out under articles
20 and 41; and
(e) that the protection conferred by the patent has been extended by an amendment which should not have been allowed.
(2) If the grounds for invalidation affect the patent only in part, invalidation shall be pronounced in the form
of a corresponding limitation of the patent.
(3) A patent and the application on which it is based shall, to the extent that the patent has been invalidated, be deemed never
to have had the effects referred to in articles 27 and 28:
Provided that this shall not affect:
(a) any decision on infringement which has become final and has been enforced prior to the decision of invalidation;
or
(b) any contract concluded prior to the decision of invalidation, in so far as it has been performed before that decision,
subject to the right on grounds of equity of repayment to an extent justified by the circumstances, of
sums paid under the relevant contract.
(2) When a decision to invalidate a patent, in whole or in part, becomes final, the Court shall notify the office of the Comptroller whic h shall record th e decision in the patent register and shall publish a ny amendments to the patent in acc orda nce with such regulations as may be prescribed.
(2) The request shall be filed in writing within two months from the removal of the cause of non-compliance with the time limit
or within the year immediately following the expiry of the unobserved time limit, whichever is the earlier, after the omitted Act
has been co mp let e d. In th e cas e o f no n- pay m en t of a mai n ten a n c e f e e, the p e rio d sp eci f ied in articl e 26
(3) shall be deducted from the period of one year.
(3) The request shall state the grounds on which it is based, and shall set out the facts on which it relies. It shall not be
deemed to have been fi led until after the prescribed fee for the re- establishment of the rights in question has been paid.
(4) This article shall not apply to the time limits referred to in subarticle (2) of this article and in article 22.
(5) The decision to re-establish any rights under subarticle (1)
shall be recorded in the patent register.
(6) Any person who in good faith has used or made effective and serious preparations for using an invention which is the subject
of a published patent application or a patent in the course of the period between the loss of rights referred to in subarticle (1)
and the pu bli cati on of t he d ecisi on to re-esta bli sh su ch rig ht s, may without payment continue such use in the course of
his business or for the needs thereof.
Proceedings.
Rerstitutio in intergrum.
Act of infringement - sanctions.
Cap. 12.
(2) The right to sue for damages under subarticle (1) hereof shall be without prejudice to the right of such person to apply for
the issue of any precautionary warrant as provided in the Code of Organization and Civil Procedure to protect his rights.
(3) The court may, moreover, on the demand of the plaintiff, order that the machinery or other industrial means or contrivances
used in contravention of the patent, the infringing articles, and the apparatus dest ined for their produc tion, be forfei ted,
wholly or partially, and delivered up to the proprietor of the patent or of the patent application, without prejudice to the relief
mentioned in this article.
Infringement proceedings.
(2) Where the subject-matter of the patent or the patent applicat ion is a process for obtaining a new product, the same
product when produced by any other party shall in the absence of proof to th e cont rary be deemed to h a ve been obt ain e d by
th e patented process or the process contained in the patent application. In the assessment of any proof to the contrary by the defendant,
the
leg itimate i n terests of th e defen d an t in protectin g his manufacturing and business secrets shall be taken into account
by the Court.
(3) The Court may stay proceedings for infringement in respect of a patent application until after a final decision has
been made by th e Comptroller to grant or refuse a patent on that application.
(4) The defendant in any proceedings referred to in this article may request in the same proceedings the invalidation of any of
the grounds referred to in article 44. In any such case the Comptroller shall be made a party to the proceedings.
Declaration of non- infringement.
(2) If the person making the request proves that the act in question does no t constitute an infringement of the pate
nt, the Court shall grant a declaration of non-infringement.
(3) The proprietor of the patent or of the patent application shall notify any licensees of the proceedings. The licensees shall
have the right to join in the proceedings in the absence of any
provision to the contrary in the licence contract.
(4) If the act in question is already the subject of infringement proceedings, the defendant in the infringement proceedings may
not institute proceedings for a declaration of non-infringement.
(5) Save where invalidation is requested under article 48(5), proceedings for a declaration of non-infringement may be instituted
together with proceedings to invalidate the patent.
50. (1) Whoever puts into circulation, or sells any article, falsely representing that it is a patented article shall, on conviction,
be liable to a fine (multa) of not less than two hundred and thirty- two euro and ninety-four cents (232.94) and not more than eleven thousand and six hundred
and forty-six euro and eighty-seven cents (11,646.87).
(2) If any person puts into circulation or sells an article having st am ped, engraved o r im presse d th ereon or o t herw ise
applied thereto the word "patent", "patented", or any other word expressing or implying that a patent has been
obtained for the article, he shall be deemed for the purpose of this article to represent that the article is a patented article.
Offences.
Amended by:
L.N. 426 of 2007.
(2) If the owner or any person on his behalf, or other person interested in the said goods or things, fails to attend at the time and place named in the banns to show cause to the contrary, it shall be lawful for the Court to direct that such goods or things or any of them be forfeited.
Where owner of goods is unknown.
Forfeiture of things seized.
Procedure where owner is unknown.
Award of compensation to parties in good faith.
Limitation of criminal actions.
Right to damages not affected.
Employer and employee.
Right of appeal. 58. (1) An appeal shall lie from any decision of the Comptroller refusing the grant of a patent, an application for re- establishment of rights or any other request of the applicant for, or proprietor of, a patent. Such appeal shall have suspensive effect.
(2) Notice of appeal and a statement setting out the grounds of appeal shall be filed in writing at the Office of the Comptroller
by applicant or proprietor of a patent, within two months of being informed of t h e decision and if the Comptroller con s iders
th e app e a l to be ad miss i b l e and we ll fou nded, he shal l recti f y his decision within three months from receiving the
appeal.
(3) If within the said period of three months the Comptroller has not informed the applicant or the proprietor that he has rectified
his decision an appeal may be entered by t h e applicant or the proprietor by application before the Court of Appeal within two months
from the receipt from the Comptroller of notification that he has not rectified his decision, or from the lapse of the two-month
period referred to in subarticle (2), whichever is the earlier.
(4) Any appeal as is mentioned in subarticle (2) and (3) of this article shall be brought before the Court of Appeal composed
in the
Cap. 12.
manner provided in article 41(6) of the Code of Organization and
Civil Procedure by application within fifteen days after the expiry o f t h e said per i od of th ree mon t hs fro m when th e Com p tr ol ler would
have rectified his decision or not informed the applicant that
he has rectified his decision, whichever is the earlier.
(5) The Rule-Making Board established under article 29 of the Code o f Or g a ni zatio n and Civil Pro c edure may m a ke rules governing appeals to the Court of Appeal under this Act.
(6) The Court of Appeal may, in regard to costs, make an order in accordance with the provisions of article 223 of the Code of Organization and Civil Procedure.
(2) The Minister may also make regulations giving effect in Malta to the pro v isi ons of an in ternat ion a l o r regi on al pat e n t registration instrument or any related agreements to which Malta becomes a party.
Regulations.
60. The Minister responsible for justice may by regulations establish fees payable in the registries of the Courts of Malta and Gozo for the filing of appeals before the Court of Appeal under this Act, and until such fees are established the tariff or registry fees annexed to the Code of Organization and Civil Procedure shall apply.
(2) Where an applicant does not have his ordinary residence or principal place of business in Mal t a, he shall authorise i n
the prescribed m a nner an agent wh o has his o r d i nary residen ce or principal place of business in Malta, to represent him:
Provided that this subarticle shall not apply as from the 1st May 2003 in respect of an applicant who has his ordinary residence or
principal place of business in any Member State.
Fees.
Cap. 12. Agents.
Amended by:
IX. 2003.114.
Provided article 17 shall remain in force in respect of desi gns and trad em ark s unti l such t ime that t h e provisio
n s contained in Part II and Part III are repealed.
(2) Any patent the term of which, upon the coming into force of this Act, has expired under the Industrial Property (Protection)
Ord i nance shall not be reactiv ated under or b y vi rtu e of th e provisions of this Act.
(3) Where an application for the registration of a patent has been filed before the coming into force of the Act, the provisions
of
the Industrial Property (Pro tecti on) Ord i nance sh al l,
Repeal and transitional provisions. Amended by: IX. 2003.115. Cap. 29.
Cap. 29.
notwithstanding the repeal of the same by this Act, continue to apply thereto. Provided that upon the granting of any such patent
the provisions of this Act shall apply thereto.
(4) Where an application for the registration of a patent has been filed before the coming into force of this Act any registration
of a paten t granted pursuant to s u ch an ap plic at ion s h al l, notwithstanding any other of the provisions of this Act, be
subject to being deemed null or to being annulled only in accordance with the prov isions of Ti tle V of Part I of t h e Industri
a l Property (Protection) Ordinance as in force before the coming into force of the Act.
(5) Any patent registered under the Industrial Property (Protection) Ordinance before the coming into force of this
Act, the term of whi c h has n o t u p o n th e com i n g in to fo rce o f th is Act, lapsed, shall enjoy the term of protection
of the duration stipulated under this Act and shall benefit from any rights granted in respect of patents under this Act:
Provided that in the case of a patent which has been registered, by v i rtue of the Industrial Property (Protection) Ordinance,
before the coming into force of this Act and which has been granted an extension o f not more than five years in accordance with
the provisions of Title II of Part I of the same Ordinance, that patent shall enjoy, from the date of the filing of application for
the patent, the term of protection of the duration stipulated under this Act and shall benefit from any rights granted in respect
of patents under this Act:
Provided further that in the case of a patent which has been registered, by v i rtue of the Industrial Property (Protection) Ordinance,
before the coming into force of this Act and which has been granted an extension of not less than seven years and not more than fourteen
years, in accordance with the provisions of Title II of Part I of the same Ordinance, that patent shall still benefit from the ext
e nsion gran ted and shall benefi t from any rig h ts g r anted in respect of patents under this Act:
Provided further that in the case of a patent which has lapsed an d which was g r anted un der t h e In dust r ial Prop
er ty (Protection) Ordinance:
(i) that patent if restored shall, subject to the payment of the maintenance fees, enjoy the term of protection stipulated
in this Act from the filing date of the patent application; and
(ii) the provisions contained in article 46 shall apply when a request for a restoration is made.
(6) Any regulation, order, requirement, certificate, notice, decision, direction, authorisation, consent, application, request
or thing made, issued, given or done under the repealed law shall, if in force at the commencement of this Act, insofar as they could
have been made, issued, given or done under this Act, continue in force and have ef fect as if made, issued, given or done under
the corresponding provision of this Act.
"co m plex produ ct" means a produ ct w h ich is composed of mul tiple rep l aceable compo n ent s p e rmitti ng disassembl
y an d reassembly of the product;
"Comptroller" means the Comptroller of Industrial Property and includes any other person appointed or assigned by the Comptroller
to exercise all or any of the powers and perform all or any of the duties of the Comptroller;
"European Union" means the European Union referred to in the
Treaty;
"designs" means the appearance of the wh ole or a part o f a pro d u c t r e sult ing f r o m the feat ures of , in par
ticu l ar, th e li nes, contours, colours, shape, texture and, or materials of the product itself and, or its ornamentation;
"Off ice" means th e o ffice responsi b le for t h e regist ration of designs in Malta under the provisions of this Act;
"infringement proceedings" in relation to a registered design, includes proceedings under article 115;
"Locarno Classification" means the Classification contained in the Locarno Agreement establishing an International Classification
for Industrial Designs, as revised or amended from time to time;
"made available to public" means made available to the public by the owner of the design or by any other party;
"Member S t ate" means a state which is a member of the
European Union;
"Minister" means the Minister responsible for the protection of industrial property;
"Par is Co nven tio n" m eans the Par i s Co nven tio n f o r th e Protection of Industrial Property of 20 March 1883, as
revised or amended from time to time;
"prescribed" means prescribed by this Act or by any regulations made thereunder;
"product" means any industrial or handicraft item, other than a computer program, including inter alia intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces;
"publish" means make available to the public, and references to publication in relation to regi stration, are to publication
under article 95(4);
"register" means the register of designs kept under this Act and includes the register of designs kept under the Industrial
Property (Protection) Ordinance;
Interpretation.
Added by:
IX. 2003.116.
Cap. 29.
Cap. 460.
Property right.
Added by:
IX. 2003.116.
Requirements for protection.
Added by:
IX. 2003.116.
"the Treaty" has the same meaning assigned to it by the European
Union Act.
(2) The provisions of Parts II to XVII of this Act do not apply to designs which are regulated by Parts XVIII to XXIV of this Act
exclusively.
(2) A design shall be protected by a design right to the extent that it is new and has individual character.
(3) A design applied to or incorporated in a product which constitutes a component part of a complex product shall only
be considered to be new and to have individual character:
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the
latter, and
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty
and individual character.
(4) The expression "normal use" within the meaning of subarticle (3)(a) means use by the end user, excluding maintenance, servicing or repair work.
Novelty.
Added by:
IX. 2003.116.
Provided that designs whose features differ only in immaterial details shall also be deemed to be identical.
Individual character. Added by:
IX. 2003.116.
(2) In assessing individual character, the degree of freedom of t h e de si gn er in de ve lo p i n g t h e d e si gn sh al l b e ta ke n i n t o consideration.
Disclosure.
Added by:
IX. 2003.116.
ev ents coul d no t reasonabl y have become k nown in the no rmal course of business to the circles specialised in the sector concerned,
and as from the 1st May, 2004, within the European Union before the date of filing of the application for registration or, if priority
is claim ed, the date of priority. The design shall not, however, be deemed to have been made available to the public because of
the sole reason that it has been disclosed to a third party under explicit conditions of confidentiality.
(2) A disclosure shall not be taken into consideration for the p u rp ose of ap ply i ng articles 6 6 and 67 if a design for wh
ich protection is claimed has been made available to the public by the d e signer, his successo r in titl e, or a third party as
a result of information provided or action taken by the designer, or his successor in title and such disclosure took place during
the twelve- month period preceding the date of filing of the application or, if priority is claimed, the date of priority.
(3) Subarticle (2) shall also apply if the design had been made available to the public as a consequence of an abuse in relation
to the designer or his successor in title.
(2) A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced
in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied
to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
(3) Notwithstanding subarticle (2), a right in a registered design shall, under the conditions set out in articles 66 and
67, subsist in a design ser v ing the purpose of allowing multiple assembly or connection of m u tually interchangeable products
within a modular system.
Designs dictated by their technical function and designs of inter- connections. Added by:
IX. 2003.116.
(2) In assessing the scope of protection, the degree of freedom o f the design er i n develop i ng h i s desi gn shall be taken int o consideration.
Designs contrary to public policy or morality.
Added by:
IX. 2003.116.
Scope of protection. Added by:
IX. 2003.116.
(2) The right holder may have the term of protection renewed in accordance with article 73 for one or more periods of five years each, up to a total term of twenty-five years form the date of filing.
Term of protection.
Added by:
IX. 2003.116.
Renewal of registration. Added by:
IX. 2003.116.
Provided that the request is made and the fee is paid before the date of expiry and such action be taken not more than six months
before such date:
Provided that the request may be made and the fee paid up to six months after the date of expiry, in which case any additional renewal
fee as may be prescribed is also paid within that period.
(2) Renewal shall take effect from the expiry of the previous registration.
(3) If the registration is not renewed in accordance with the above provisions, the Comptroller shall remove the design from the
register.
Grounds for refusal of a registration. Added by:
IX. 2003.116.
(a) if the design does not fall within the definition of a design in article 63;
(b) if it consists of or is significantly made up of the national flag of Malta;
(c) if it contains a representation of the national flag of Malta and it appears to the Comptroller to be misleading
or offensive;
(d) if it consists of or contains:
(i) the arms, or any of the principal armorial bearings of the arms appertaining to the President or
to 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,
(ii) a representation of the Presidential or Episcopal flags,
(iii) a representation of the President or the Archbishop, or any colourable imitation thereof, or
(iv) 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,
unless it appears to the Comptroller that consent has been given by or on behalf of the President or the Archbishop;
(e) if it is contrary to public policy or accepted principles of morality; or
(f) if the applicant for the right in a registered design is not entitled to it under Maltese law.
(2) Any reference in this Act to the infringement of a registered design shall be deemed to be a reference to any such infringement
of the rights of the proprietor.
(3) The rights of the proprietor have effect from the date of registration reckoned in accordance with article 95(3):
Provided that -
(a) no infringement proceedings may be begun before the date on which the design is in fact registered, and
(b) no offence under article 117 shall be committed by anything done before the date of publication of the registration.
Exclusive rights conferred by the design right. Added by:
IX. 2003.116.
(a) acts done privately and for non-commercial purposes, or
(b) acts done for experimental purposes, or
(c) acts of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with
fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.
(2) In addition, the right conferred by a design right upon registration shall not be exercised in respect of:
(a) the equipment on ships and aircraft registered in another country when these temporarily or accidentally
enter the territory of Malta, or
(b) the importation into Malta of spare parts and accessories for the purpose of repairing such craft, or
(c) the execution of repairs on such craft.
Limitation of the rights conferred by the design right. Added by:
IX. 2003.116.
(2) For the purposes of this article:
"the market" means the market in Malta and as from 1st May
2003, the market in another member state; and
"use" in cl udes th e offeri ng, sell ing , bu yin g o r exp o rt of the product.
Exhaustion of rights.
Added by:
IX. 2003.116.
Relationship to other forms of protection. Added by:
IX. 2003.116.
Cap. 415.
(2) A design protected by a design right registered in accordance with this Act shall also be eligible for protection under the Copyr ight Act , as from the date on whi c h the design was created or fixed in any form.
Nature of registered design. Added by:
IX. 2003.116.
Co-ownership of a registered design. Added by:
IX. 2003.116.
(2) The following provisions apply where two or more persons are co-proprietors of a registered design, by virtue of subarticle
(1) or otherwise.
(3) Subject to any agreement to the contrary, each co-proprietor is entitled, personally or through his agents, to do for his
own benefit and without the consent of or the need to account to any other co-proprietor, any act which would otherwise amount to
an infringement of the registered design.
(4) Notwithstanding the provisions of subarticle (3), a co- proprietor may not without the consent of the other or others
-
(a) grant a licence to use the registered design, or
(b) assign or cede control of his share in the registered design.
(5) Infringement proceedings may be brought by any co- proprietor, but a co-proprietor may not, with the leave of the Court,
proceed with the action unless the other, or each of the other co- proprietors, is joined in the suit.
A co-proprietor who is thus joined in the suit shall not be liable for any costs in the action.
Nothing in this subarticle affects the making of any precautionary warrant on the application of a single co-proprietor.
(6) Nothing in this article affects the rights and obligations of trustees or personal representatives, or their rights and obligations
as such.
Transmission of a registered design. Added by:
IX. 2003.116.
It is so transmissible either in connection with the goodwill of a business or independently.
(2) An assignment or other transmission of a registered design may be partial and limited so as to apply in relation to the use
of the design in a particular manner or a particular locality.
(3) An assignment of a registered design is not effective unless it is in writing signed by or on behalf of the assignor or, as
the case may be, his personal representative.
(4) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered design
as part of the goodwill of a business.
(2) The following are registrable transactions:
(a) an assignment of a registered design or any right therein;
(b) the grant of a licence under a registered design;
(c) the transfer of a registered design by testamentary disposition;
(d) an order of a Court or other competent authority transferring a registered design or any right in or under it.
(3) Until an application has been made for registration of a registrable transaction -
(a) the transaction is ineffective as against a person acquiring in good faith a conflicting interest in the registered
design, and
(b) articles 86 or 87 shall not apply in respect of a person claiming to be a licensee by virtue of the transaction.
(4) Where a person becomes the proprietor or a licensee of a registered design by virtue of a registrable transaction, he shall
not be entitled to damages or an account of profits in respect of any infringement of the registered design occurring after the
date of the reg istrabl e t ran sac tio n a nd before the transaction is registered, unless:
Registrations of transactions affecting a registered design. Added by:
IX. 2003.116.
(a) an application for registration of the transaction is made before the end of the period of six months beginning
with the date of the transaction, or
(b) the Court is satisfied that it was not practicable for such an application to be made before the end of that period and that
an application was made as soon as possible thereafter.
83. The provisions of articles 79 to 82 apply mutatis mutandis in relation to an application for the registration of a design in the same manner as they apply in relation to a registered design.
Application for registration of design as object of property.
Added by:
IX. 2003.116.
Licensing of a registered design. Added by:
IX. 2003.116.
(2) Unless the licence provides otherwise, it is binding on a successor in title to the grantor ’s interest, and references in
this Act to doing anything with, or without, the consent of the proprietor of a registered design shall be construed accordingly.
(3) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence
or licensee include a sub-licence or sub-licensee.
Exclusive licences.
Added by:
IX. 2003.116.
General provisions as to the rights of licensees in case of infringement. Added by:
IX. 2003.116.
(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence.
Provided that they shall not apply where or to the extent that, in accordance with article 87(1) an exclusive licensee has a right
to bring proceedings in his own name.
(2) A licensee is entitled, unless his licence provides otherwise, to call on th e pro p ri et or o f t h e regi st er ed
desig n t o t a k e infringement proceedings in respect of any matter which affects his interests.
(3) If the proprietor refuses to do so, or fails to do so within two month s after b e ing called u pon the licensee may bring
proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought by a licensee by virtue of this article, the proprietor shall be joined in the suit.
(5) In infringement proceedings brought by the proprietor of a regist er ed desig n an y l o ss suff er ed or li kely to be su
ff ered by licenses shall be taken into account by the Court which shall give such d i rectio ns as i t t h in ks f it w i th re
ga rd to th e di sp os al an d distribution of any sum awarded as a remedy for the infringement.
Exclusive licensee having right and remedies of assignee.
Added by:
IX. 2003.116.
Where or to the extent that such provision is made, the licensee shall be entitled, subject to the provisions of the licence
and to the following provisions of this article, to bring infringement proceedings in his own nam e against any person other than
the proprietor.
(2) The rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered design;
and referen ces i n thi s A c t to th e p r oprietor of a registered design relating to infringement shall be construed accordingly.
(3) In an action brought by an exclusive licensee under this article a defendant may avail himself of any defence which would have
been available to him if the action had been brought by the proprietor of the registered design.
(4) Where proceedings for infringement of registered design are brought by the proprietor or by the exclusive licensee relating
to an infringement in respect of which they have concurrent right of action, the proprietor or, as the case may be, the exclusive
licensee who are not the plaintiff shall be jointed in the suit.
(5) (a) Where an action for infringement of a registered design rel a ti ng to an i n f r i n g e men t in r e spect o f whi c h th e proprietor
and an exclusive licensee have concurrent right of action is brought -
(i) the Court shall in assessing damages take into account the terms of the licence, and any pecuniary remedy already
awarded or available to either of them in respect of the infringement;
(ii) no account of profits shall be ordered to be made if an award of damages has been made, or an account of profits has been
ordered, in favour or either of them in respect of the infringement; and
(iii) the Court shall, if an account of profits has been ordered, apportion subject to any agreement between the proprietor
and the exclusive licensee, the profits between them as the Court considers just.
(b) The provisions of this subarticle apply whether action is brought by the proprietor alone, or it is brought by the proprietor
and the exclusive licensee; and if they are not both parties the Court may give such directions as it deems fit with regard
to the disposal and distribution of any sum awarded as remedy for the infringement.
(6) The proprietor of a registered design shall notify any exclusive licensee who has a conc urrent right of action before
applying for an order under article 115; and the Court may on the application of the licensee make such order under that article
as it thinks fit having regard to the terms of the licensee.
(7) The provisions of subarticles (4) to (6) shall be without prejudice to any agreement to the contrary between the exclusive
licensee and the proprietor.
(a) a request for registration of a design; (b) the name and address of the applicant;
Application for registration. Added by:
IX. 2003.116.
(c) the design which is the subject of the application;
(d) the name and address of the agent or representative, in cases where one has been appointed; and
(e) a declaration claiming priority in cases where the applicant wishes to take advantage of an earlier application.
The application shall be subject to the payment of a fee as may be prescribed.
Date of filing.
Added by:
IX. 2003.116.
Provided that where the elements are furnished on different days, the date of filing shall be the date on which the last element is
so furnished.
(2) References in Parts XVIII to XXIV to the date of application for registration shall be construed as a reference
to the date of filing of the application.
Classification of designs.
Added by:
IX. 2003.116.
(2) Any question arising as to the class within which any design falls shall be determined by the Comptroller, whose decision shall be final.
Claim to priority of Convention application.
Added by:
IX. 2003.116.
(2) If the application for registration under this Act is made within such six-month period:
(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first
Convention application, and
(b) the registrability of the design shall not be affected by any use of the same in Malta in the period between that date and the
date of the application under this Act.
(3) (a) Any filing in a state member of the World Trade Organisation or party to the Paris Convention which is equivalent to a
reg u lar national fil i ng under it s domestic legislation, shall be treated as giving rise to the right of priority.
(b) For the purposes of this subarticle "regular national filing" means a filing which is adequate to establish the date
on which the application was filed in that country, whatever may be the subsequent application.
(4) A subsequent application concerning the same design as the first Convention application, filed in the same Convention country,
shall be considered the first Convention application (the filing date of which is the starting date of the period of priority), if
at the time of the subsequent application:
(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public
inspection and without leaving any rights outstanding, and
(b) it has not yet served as a basis for claiming right of priority, and the previous application may not thereafter
serve as a basis for claiming a right of priority.
(5) Provisions may be made by regulations as to the manner of cl ai ming a righ t to p r ior ity on the basis of a Co nvention
application.
(6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either
with the application or independently.
(2) Such regulations may make provisions similar to those contained in article 91 in relation to Convention applications or such other provision as appears to the Minister to be appropriate for the purpose of giving effect to the treaty, convention arrangement or engagement.
Claim to priority from other relevant overseas applications.
Added by:
IX. 2003.116.
(2) If it appears to the Comptroller that the requirements for registration are not met, he shall inform the applicant and give
him an opportunity to make representations or to amend the application within such period as the Comptroller may specify.
(3) If the applicant fails to satisfy the Comptroller that those requirements are met, or to amend the application so as to meet
them, or fails to respond before the end of the specified period, the Comptroller shall refuse the application.
(4) If it appears to the Comptroller that the requirements for registration are met, he shall accept the application as eligible
for registration.
Examination of application. Added by:
IX. 2003.116.
Withdrawal, or amendment, of application. Added by:
IX. 2003.116.
Registration.
Added by:
IX. 2003.116.
(2) An application may be amended, at the request of the applicant, only by correcting -
(a) the name or address of the applicant, (b) errors of wording or of copying, or (c) obvious mistakes,
and then only where the correction does not substantially affect the identity of the design.
(2) A design shall not be registered and the application shall be deemed to be withdrawn unless any fee prescribed is paid within
thirty working days from the date of filing.
(3) A design when registered shall be registered as of the date of filing of the application for registration, and that date shall
be deemed for the purposes of this Act to be the date of registration.
(4) On the registration of a design the Comptroller shall issue to the applicant a certificate of registration, and he shall publish
in the Ga zette the fac t tha t the de sign ha s bee n registered a n d is available to be viewed by the public at the Office.
Alteration of registered design. Added by:
IX. 2003.116.
(2) Notwithstanding the provisions of subarticle (1), the Co mpt r ol ler may, at the request of th e pr opr ieto
r, all o w th e alteration of a registered design where the design includes th e proprietor ’s name or address and the alteration
is limited to the alteration of that name or address and does not substantially affect the identity of the design.
(3) Provision shall be made by regulations prescribing the manner of publication of any such alteration and the making
of objections by any person claiming to be affected thereby.
Surrender of a registered design. Added by:
IX. 2003.116.
(a) has been sent not less than ninety days’ notice of the proprietor ’s intention to surrender the design, or
(b) is not affected, or if affected consents thereto.
Grounds for invalidity of registration. Added by:
IX. 2003.116.
(a) if the provisions of article 74 have not been complied with;
(b) if it does not fulfil the requirements of articles 65 to
70;
(c) if the design is the same or similar to a prior design which has been made available to the public after the date of filing
of the application or, if priority is claimed, after the date of priority, and which prior design is protected from
a date prior to the said date by a registered design or an application for a registered design in a territory covered by
an international agreement to which Malta is a party;
(d) if a distinctive sign is used in a subsequent design and the rightholder of the sign has the right to prohibit such use;
(e) if the design constitutes an unauthorised use of work protected under copyright;
(f) if the design involved the use of:
(i) the armorial bearings, flags or other emblems, and
(ii) the abbreviations and names, of international intergovernmental organisations of which one or more Paris Convention countries
are members.
(2) The grounds provided under article 74(f) may be invoked only by the person entitled to the right under Maltese law.
(3) The grounds in subarticles (1)(c), (1)(d) and (1)(e) may be invoked solely by the applicant for or the holder of the conflicting right.
(4) The grounds in subarticle (1)(f) may be invoked solely by the entity associated therewith.
(5) When a design has been refused registration pursuant to article 74, or a design right has been declared invalid pursuant to
su barti cle (1 ), t he desig n m ay be re gist ered or t he desig n ri ght maintained in an amended form, if in that form it complies
with the requirements fo r prot ection and the identit y of the design is retained. Registration or maintenance in an am ended form
m ay include registration accompanied by a partial disclaimer by the holder of the right in the registered design or entry in the
design register of a court decision declaring the partial invalidity of the design right.
(2) The proprietor may by sworn application before the First
Hall of the Civil Court:
(a) demand a declaration of invalidity of the registration, or
(b) demand the rectification of the register in order to substitute his name as the proprietor of the register
Acts of agent or representative. Added by:
IX. 2003.116. Amended by:
L.N. 181 of 2006;
L.N. 186 of 2006.
design.
(3) The proprietor may restrain any use of the design in Malta which is not authorised by him.
(4) Subarticles (2) and (3) shall not apply if, or to the extent that, the a g ent or re prese n tative shows that his ac tions
were authorised by the proprietor.
(5) An application under subarticle (2) must be made within three years of the proprietor becoming aware of the registration; and
no order may be made under subarticle (3) in respect of a use in which the proprietor has not taken action for a continuous period
of three years or more.
Effect of acquiescence. Added by:
IX. 2003.116.
Maintenance and content of register. Added by:
IX. 2003.116.
(2) In the case referred to in subarticle (1), where the action is brought on the basis of an earlier registered design or an earlier acquired right the proprietor of the registered design is not entitled to oppose the use of the earlier design or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier design or right may no longer be invoked against his registered design.
101.(1)(a)The Comptroller shall maintain a register of designs. (b) Reference in Parts XVIII to XXIV this Act to "the
register" are to that register; and references to
registration, in particular, in the expression "registered design", are, unless the context otherwise requires, to registration
in that register.
(2) There shall be entered in the register in accordance with this Act:
(a) registered designs;
(b) the relevant particulars of registrable transactions affecting a registered design, including:
(i) the date of registration as determined in accordance with articles 89 and 95,
(ii) the priority date (if any) to be accorded pursuant to a claim to a right to priority made under article 91 or 92,
(iii) the name and address of the proprietor, and
(c) in the case of an assignment of a registered design: (i) the name and address of the assignee, and
(ii) the date of the assignment;
(d) in the case of the grant of a licence under a registered design:
(i) the name and address of the licensee,
(ii) where the licence is limited, a description of the limitation,
(iii) where the licence is an exclusive licence, that fact,
(iv) the duration of the licence if the same is or is ascertainable as a definite period, and
(v) the date on which the entry is made;
(e) in the case of a court or other competent authority transferring a registered design:
(i) the name and address of the transferee, (ii) the date of the order, and
(iii) the date on which the entry is made;
(f) in the case of a transfer of a registered design by testamentary disposition, or otherwise by inheritance:
(i) the name and address of the person in whose favour the testamentary disposition is made, or the inheritance devolves
if any, and
(ii) the date of the testamentary disposition if any, and of the death of the previous holder;
(g) in the case of merger, the requirements specified for the registration of an assignment; and
(h) such other matters relating to registered designs as the
Comptroller may deem necessary.
(2) A search in the register may be conducted in respect of a design or designs in one of the following manners:
(a) an interested person may on payment of the prescribed fee call at the Office and conduct a search for a design or designs. If
the person or persons conducting the search request copies of any related record, extracts from the register or copies
of the design, whether certified or uncertified, these shall be provided on payment of the prescribed fee;
(b) an interested person may on payment of the prescribed fee submit a request in writing to the Office for a search to
be conducted in respect of a design or designs. If the person or persons requesting the search require copies of any related
record, extracts from the register or copies of the design, whether certified or uncertified, these shall be provided on payment
of the prescribed fee.
Public inspection of register.
Added by:
IX. 2003.116.
Rectification or correction of the register.
Added by:
IX. 2003.116.
Amended by:
L.N. 181 of 2006;
L.N. 186 of 2006.
Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of
a design.
(2) Provided that an application for rectification may not be made either to the Comptroller or by sworn application against the
Comptroller and any person interested before the Civil Court, First Hall:
Provided that if proceedings concerning the registration in question are pending before a Court:
(a) the application must be made by application before
Court in the acts of the proceedings; and
(b) if the application is made to the Comptroller, he may at any stage of the proceedings direct the applicant to refer the matter
to the Court in accordance with subarticle (2).
(3) Except where the Comptroller or the Court directs otherwise, the effect rectification of the register is that
the error or omission in question shall be deemed never to have been made.
(4) The Comptroller may, on request by the proprietor of a registered design, or a licensee, enter any change in his name
or address as recorded in the register.
(5) The Comptroller may remove from the register any matter appearing to him to have ceased to have effect.
Power to require the use of forms. Added by:
IX. 2003.116.
Information about applications and registered designs. Added by:
IX. 2003.116.
Any such request must be accompanied by such fee as may be prescribed.
(2) Before publication of registration of a design, documents or information constituting or relating to the application shall
not be published by the Comptroller or made available to the pubic except with the consent of the applicant.
(3) The Comptroller shall not be obliged to permit the inspection of any such document as is mentioned in subarticle
(1) abo ve unti l he has com pleted any procedure or the stage in the procedure which is relevant to the document in question, which
he is required or permitted to carry out under the Act.
(4) The right of inspection under subarticle (1) does not apply to:
(a) any document until fourteen days after it has been filed
at the Office;
(b) any document prepared in the Office solely for use therein;
(c) any document sent to the Office, whether at its request or otherwise, for inspection and subsequent return to the sender;
(d) any request for information under this article;
(e) any document issued or received by the Office which Comptroller considers should be treated as confidential;
(f) any document or part of a document which in the opinion of the Comptroller disparages any person in a way likely to
damage him; or
(g) any document filed with or sent to the Office before the enactment of the Act.
(2) The Comptroller shall not be liable by reason of, or in connection with, any examination required or authorised
by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent to such examination.
(3) No action shall lie against an officer of the Comptroller in respect of any m a tt er for which, by virtue of this article,
the Comptroller is not liable.
Exclusion or liability in respect of official acts. Added by:
IX. 2003.116.
(a) the revocation of the registration of a design,
(b) a declaration of the invalidity of the registration of a design, or
(c) the rectification of the register,
the Comptroller shall be notified with the proceedings and shall be entitled to intervene in statu et terminis.
(2) Unless otherwise directed by the Court, the Comptroller may, instead of inter v ening, fil e in the r e co rd of the
case a statement in writing signed by him, giving particulars of:
Registration to be prima facie evidence of validity.
Added by:
IX. 2003.116.
Certification of validity of contested registration. Added by:
IX. 2003.116.
Comptroller’s appearance in proceedings involving the register.
Added by:
IX. 2003.116.
Appeals from the Comptroller’s decision.
Added by:
IX. 2003.116.
Cap. 12.
(a) any proceedings before him in relation to the matter in issue,
(b) the grounds of any decision given by him affecting it, (c) the practice of the Office in like cases, or
(d) such matters relevant to the issues and within his knowledge as he thinks fit,
and the statement shall be deemed to form part of the evidence in the proceedings.
110. (1) Any decision of the Comptroller under Parts XVIII to XXIV of this Act, may be appe aled from, before the Court of Appeal composed
in the manner provided in article 41(6) of the C od e o f O rg a nization and Civil Procedure by application within fifteen days of service of the Comptroller ’s decision.
(2) For the purposes of subarticle (1) "decision" means any act, other than such acts as may by regulations be prescribed,
done by t he Co mp troll er i n ex erci se of a di screti on vested in hi m by or under this Act.
(3) The Minister with the concurrence of the Minister responsible for Justice may make rules governing appeals to
the Co urt of Appeal under Parts XV III to XXIV of thi s Act, and presenting a scale of costs and fees in relation to such appeals.
Business hours.
Added by:
IX. 2003.116.
(2) Business done on any business day after the specified hours o f b u sin e ss, o r on a day wh ich is no t a busi n ess day,
shall be deemed to have been done on the next business day; and where the time for doing anything under this Act expires on a day
which not a business day, that time shall be extended to the next business day.
(3) Directions under this article may make different provision for diff erent c l a s s e s of bus ines s and shall be published
in the prescribed manner.
Recognition of agents.
Added by:
IX. 2003.116.
Provided that the Comptroller may in any particular case require the personal signature or presence of the agent or the person authorising
him to act as an agent.
(2) If an applicant does not have his ordinary residence or principal place or business in Malta, he shall authorise
an agent who has his ordinary residence or principal place of business in Malta to represent him in the manner as prescribed in
subarticle (1):
Provided that this subarticle shall not apply as from the 1st
May 2004 wit h regard to an applicant who has hi s ordinary residence or principal place of business in a Member State.
(2) Infringement proceedings shall be brought before the Civil Court, First Hall, and may not be instituted after five years from
the d a te when the injured party has obtained knowledge of the infringement and of the identity of the alleged infringer.
(3) In an action for infringement all such remedies as are in respect of the infringem ent of any other property right shall be
available to the plaintiff.
Action for infringement. Added by:
IX. 2003.116.
(2) An action for an order under subarticle (1) may not be made after the end of the period of five years from the date on which
the infringing products were made except as provided in the following subarticle.
(3) While during the whole or part of that period the proprietor of the registered design is prevented by fraud or concealment
from discovering the facts entitling him to take action for an order, an application may be made at any time before the end of the
period of fi ve years from th e d a te on which h e coul d wit h reasonable diligence have discovered those facts.
Order for delivery up of infringing machinery, products or material.
Added by:
IX. 2003.116.
(a) for an order that they be destroyed or forfeited to such person as the Court may deem fit, or
(b) for a decision that no such order should be made.
(2) In considering its decision, the Court shall consider whether other remedies available in an action for infringement
of the registered de sign would be adequate to compensate the proprietor and any licensee to protect their interests.
(3) Any person having an interest shall be entitled:
(a) to appear in proceedings for an order under this article, whether or not he was served with a notice, and
Order as to disposal of infringing machinery, products or material. Added by:
IX. 2003.116. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
take effect until the end of the period within which an appeal may be filed or, if before the end of that period an appeal is so filed,
until the final determination or abandonment of the proceedings on the appeal.
(4) Where there is more than one person interested in the products, the Court shall make such order as it thinks fit.
(5) If the Court decides that no order should be made under this arti cle, the pe rson in whose po ss ession, custody or contro
l the products were before being delivered up shall be entitled to their return.
Remedy for groundless threats of infringement proceedings. Added by:
IX. 2003.116. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
(2) The relief which may be applied for is all or any of the following -
(a) a declaration that the threats are unjustified,
(b) an injunction against the continuance of the threats,
(c) damages in respect of any loss the plaintiff may have sustained by the threats,
and the plaintiff shall be entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened
con st itute, or if don e woul d cons tit ute, an in fri ngem en t of the registered design concerned.
(3) Where the defendant shows that the acts in respect of which proceedings were threatened co nstitute or would constitute an
inf r in gemen t of the r e g i stered design , th e pl ai nti f f sh all nevertheless be entitled to relief if he shows that
the registration of the design is invalid or liable to be revoked.
(4) The mere notification that a design is registered, or that an application for registration has been made, does not constitute
a threat of proceedings for the purposes of this article.
Unauthorised use of registered design.
Added by:
IX. 2003.116.
Amended by:
L.N. 426 of 2007.
117. (1) Any person who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent
of the proprietor, in contravention of article 75 exploits a registered design shall be guilty of an offence against this article
and shall be liable on conviction to imprisonment for a term not exceeding three years or to a fine (multa) of not more than twenty- three thousand and two hundred and ninety-three euro and seventy- three cents (23,293.73) or to both such
fine and imprisonment.
(2) It shall be a defence for a person charged with an offence against this article to show that he believed on reasonable grounds
that the use of the design in the manner in which it was used, or was to be used, was not an infringement of the registered design.
(a) makes, or causes to be made, a false entry in the register of designs; or
(b) makes, or causes to be made, anything falsely purporting to be a copy of an entry in the register, or
(c) produces or tenders or causes to be produced or tendered in evidence any such thing,
shall be guilty of an offence against this article.
(2) A person guilty of an offence against this article shall be liable on conviction to imprisonment for a term not exceeding two
years or a fine (multa) of not more than eleven thousand and six hundred and forty-six euro and eighty-seven cents (11,646.87) or to both such fine and
imprisonment.
Falsification of register.
Added by:
IX. 2003.116.
Amended by:
L.N. 426 of 2007.
119. (1) Whoever puts into circulation, or sells any product, falsely representing that a design applied to, or incorporated in any pro
duct sold by him is regist ered, shal l be gui lty of an o ffen ce against this subarticle and, on conviction, be liable to a fine
(multa) of not less than two hundred and thirty-two euro and ninety-four cents (232.94) and not more than eleven thousand and six hundred
and forty-six euro and eighty-seven cents (11,646.87).
For the purposes of this article a person who sells a product hav i ng st am ped , engraved or i m pressed thereon or otherwise applied
thereto the word "registered", or any other word expressing or implying that the design applied to the products is registered,
shall be deemed for the purposes of this article to represent that the design applied to the product is registered.
(2) Any person, who after the right in a registered design is expired, marks any product to which the design has been applied with
the word "registered", or any word or words implying that there is subsisting right in the design under this Act, or causes
any such product to be so marked, shall be guilty of an offence against this subarticle and shall on conviction, be liable to a fine
(multa) not less than two hundred and thirty-two euro and ninety-four cents (232.94) and not more than eleven thousand and six hundred and
forty-six euro and eighty-seven cents (11,646.87).
Falsely representing a design as registered. Added by:
IX. 2003.116. Amended by:
L.N. 426 of 2007.
(2) Any person who contravenes the provisions of subarticle (1) shall be guilty of an offence against this article and shall, on conviction, be liable to a fine (multa) of not more than six thousand and ni ne hu ndr ed and ei ght y-eig h t eu ro and tw el ve cen t s (6,988.12).
Unauthorised use of certain devices, emblems, etc. Added by:
IX. 2003.116. Amended by:
L.N. 426 of 2007.
machinery, goods, etc.
Added by:
IX. 2003.116.
Powers of Magistrates. Added by:
IX. 2003.116.
Where owner of goods is unknown. Added by:
IX. 2003.116.
Forfeiture of things seized.
Added by:
IX. 2003.116.
Procedure where owner is unknown. Added by:
IX. 2003.116.
other industrial means or contrivances used in contravention of the rights of the proprietors of the designs, the infringing products, and the apparatus destined for their production, be forfeited, wholly or in part, and delivered to the holder of the design, without prejudice to any other right to relief under this Act.
122 issue the said warrant.
(2) If the owner or any person on his behalf, or other person interested in the said goods or things, fails to attend at the time and place named in the banns to show cause to the contrary, it shall be lawful for the Court to direct that such goods or things or any of them be forfeited.
Award of compensation to parties in good faith.
Added by:
IX. 2003.116.
(a) with regard to the interpretation of terms used in the said Parts of this Act;
(b) with regard to the grant, refusal or surrender of a registered design;
(c) with regard to the terms of renewal of a registered design;
(d) with regard to the manner of filing of applications and other documents as well as all respective and other fees under the
said Parts of this Act;
(e) requiring and regulating the translation of documents and the filing and authentication of any translation;
(f) with regard to the service of documents;
(g) with regard to matters relating to the register of designs, in particular as to:
(i) amendment of registered particulars relating to a
Limitations of criminal actions. Added by:
IX. 2003.116.
Rights to damages not affected.
Added by:
IX. 2003.116.
Employment and employee.
Added by:
IX. 2003.116.
Burden of proving use of design. Added by:
IX. 2003.116.
Limitations of civil actions.
Added by:
IX. 2003.116.
Power of Minister to make regulations.
Added by:
IX. 2003.116.
terms of the licence, and
(ii) the removal of such particulars from the register; (h) with regard to the classification of registered designs;
(i) authorising the rectification of irregularities of procedure;
(j) with regard to procedures, sanctions and anything else relating to the infringement of the provisions of the said Parts of this
Act;
(k) prescribing time limits for anything required to be done in connection with any proceeding under the said Parts of this
Act;
(l) providing for the extension of any time limit so prescribed, or specified by the Comptroller whether or not the time
limit has already expired; and
(m) regulating administrative and other supplementary provisions.
(2) The Minister may also from time to time make regulations no t in con s ist e nt wit h th e said P a r t s of t h i s Act prescr
ib in g al l matters which by this Act are required or permitted to be prescribed or which are necessary or desirable to be prescribed
for carrying out or giving effect to this Act, or for the conduct of any business relating to the Office of the Comptroller.
(3) The Minister may also make regulations giving effect in Malta to the prov isions of any in te rnational or re gi onal de sign
registration instrument or any related agreements to which Malta becomes a party.
Repeal of
Industrial Property
(Protection)
Ordinance, and
transitory
provision.
Added by:
IX. 2003.116.
Cap. 29.
Property (Protection) Ordinance is hereby repealed.
(2) In this article:
"existing registered design" means a design, registered under the Industrial Property (Protection) Ordinance immediately
before the commencement of Parts XVIII to XXIV of this Act;
"former register" means the register kept under the old law;
"new register" mea n s the re gist er kept under Part s XVII I t o
XXIV of this Act;
"old law" means the Industrial Property (Protection) Ordinance an d an y ot he r en act me nt o r rul e of l a w ap pl yi
ng to ex ist i n g registered designs immediately before the commencement of Parts XVIII to XXIV of this Act.
(3) For the purposes of this article -
(a) an application shall be treated as pending on the coming into force of Parts XVIII to XXIV of this Act, if it was made
but not finally determined before such coming into force; and
(b) the date on which it was made shall be taken to be the
date of filing under the old law.
(4) Existing registered designs shall, on the commencement of this article, be transferred to the new register and subject to
the provisions of this article, shall have effect as if they were registered under Parts XVIII to XXIV of this Act.
(5) Proceedings under the old law which are pending on the commencement of this article shall be dealt with under the Old Law and
any necessary alteration pursuant to such proceedings shall be made to the new register.
(6) (a) Upon the coming into force of this article, articles 75 and 76 of this Act shall apply in relation to, an existing registered design
and subject to paragraph (b), article
113 shall apply in relation to any infringement of an exi s tin g re gist ered desi gn co mm it te d a f t e r th e commencement
of this article.
(b) After the coming into force of this article, it shall not be an infringement of -
(i) an existing registered design, or
(ii) a registered design of which the distinctive elements are the same or substantially the same as those of an existing
registered design,
to continue with any use which did not amount to infringement of the existing registered design under the old law.
(7) Article 114 shall apply to infringing goods, material or products whether made before or after the commencement of
this article.
(8) Article 86 shall apply to licences granted before the commencement of this article, but only in relation to infringement
committed after its commencement.
(9) The provisions of article 80 shall apply as from the commencement of this article to an existing registered design
of which t w o o r more persons were immediately bef o re the commencement of this article registered as joint proprietors.
(10) (a) Article 81 shall apply to transactions and events occurring after the comm encement of this article in relation to an existing
registered design; and the old law shall continue to apply in relation to transaction and events occurring before its commencement.
(b) Where, before the commencement of this article a person become entitled by assignment or transmission to an existing registered
design but has not registered h i s ti tle, an y appl icati on fo r registrati on o f an ass i gnment after its commencement shall
be made under article 83.
(11) Articles 84 and 85 shall apply only in relation to licences granted after the commencement of this article.
(12) An application for registration of a design under the old law
Existing registered designs.
Proceedings under old law.
Effects of registration infringement
Infringing goods, material or products.
Rights and remedies of licensee.
Co-ownership of a registered design.
Assignment, etc., of a registered design.
Licensing of a registered design.
which is pending on the commencement of this article shall be dealt with under the old law, and, when registered, the design shall
be treated for the purposes of this article as an existing regist ered design.
(13) (a) In the case of a pending application for registration filed before the commencem en t of thi s arti cl e the ap pl ican t
m a y gi ve n o ti ce t o the Comp tro ller demanding to have the registrabili ty of the mark determined in accordance with
the provisions of Parts XVIII to XXIV of this Act.
(b) The notice must be accompanied by the appropriate fee and be given no later than six mo nths aft e r th e commencement of this
article.
(c) Notice duly given shall be irrevocable and shall have the effect that the applic ati on shall be treat ed as if made i mmediatel
y aft e r the commenc ement of this article.
(14) The Comptroller may exercise the powers conferred by this Act to ensure that any existing registered designs which do not conform
to the system of classification prescribed under article 90 are brought in conformity with such system.
(15) Article 91 shall apply to an application for registration un der thi s A c t made after th e commencement of this Part
notwithstanding that the Convention application was made before commencement.
(16) Articles 72 and 73 shall apply in relation to the registration of a desi gn in pursuance of an application made after the commencement
of this article:
Provided that in the case of a design registration under the old law, whose term of protection has not yet expired at the coming into
force of this article registration may be renewed as provided for in articles 72 and 73.
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