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Maltese Laws |
TRADEMARKS ACT
To regulate Trademarks
1st January, 2001
ACT XVI of 2000, as amended by Act IX of 2003; and Legal Notices 181 and 186 of 2006, and 426 of 2007.
"Comptroller" means the Comptroller of Industrial Property and includes any other person appointed 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;
"infringement proceedings" in relation to a registered trademark, includes proceedings under article 16;
"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;
"Paris Convention" means the convention referred to in article 49 of this Act;
"prescribed" means prescribed by this Act or by any regulations made thereunder;
"publish" means make available to the public, and references to publication in relation to regi stration, are to publication
under article 37(4);
"register" means the register of trademarks kept under this Act and includes the register of trademarks kept under the
Industrial Property (Protection) Ordinance, partly repealed by this Act;
"trade" includes any business or profession;
"trademark" means any si gn ca pa bl e o f b e i n g re pre s en t e d graphically which is capable of distinguishing goods
or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal
names), figurative element, letters, numerals or the shape of goods or their packaging:
Provided that for the purpose of this Act "any sign capable of bei n g rep re sen ted grap hi ca ll y" i nc lu d es any
sig n ca pa bl e of being put down in words;
Short title. Interpretation.
Amended by:
IX. 2003.102.
Cap. 29.
Cap. 460.
"the Treaty" has the same meaning assigned to it by the European
Union Act.
(2) (a) References in this Act to a trademark include, unless the context otherwise requires, reference to a collective mark or certification
mark referred to respectively in articles 45 and 46.
(b) References in this Act to use (or any particular description of use) of a trademark or of a sign identical wit h , sim
ilar to or lik ely to be m i st aken for a trademark, include u s e (or that descriptio n of use) otherwise than by means
of a graphic representation.
Introductory
Property right. 3. A registered trademark is a property right obtained by the registration of the trademark under this Act. The proprietor of a registered trademark has the rights and remedies provided by this Act.
Absolute ground for refusal.
Grounds for refusal of registration
(a) signs which do not fall within the definition of trademarks in article 2;
(b) trademarks which are devoid of any distinctive character;
(c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality,
intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics
of goods or services;
(d) trademarks which consist exclusively of signs or indications which have become customary in the current language
or in the bona fide and established practices of the trade:
Provided that a trademark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use
made of it in Malta.
(2) A sign shall not be registered as a trademark if it consists exclusively of -
(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods. (3) A trademark shall not be registered if it is -
morality, or
(b) of such a nature as to deceive the public or likely to deceive the public as to the nature, quality or geographical
origin of the goods or service or in any other manner.
(4) A trademark shall not be registered if or to the extent that its use is prohibited in Malta by any enactment or rule of law.
(5) A trademark shall not be registered in the cases specified, or referred to, in article 5.
(6) A trademark shall not be registered if, or to the extent that, the application is made in bad faith.
(a) the arms, or any of the principal armorial bearings of the arms appertaining to the President or the Roman Catholic Archbishop
of Malta, or any insignia or device so nearly resembling such arms or any such armorial bearing as to be likely
to be mistaken for them or it,
(b) a representation of the Presidential or Episcopal flags, (c) a representation of the President or the Archbishop, or
any colourable imitation thereof, or
(d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Presidential
or Episcopal patronage or authorization,
shall not be registered unless it appears to the Comptroller that consent has been given by or on behalf of the President or the
Archbishop.
(2) A trademark which consists of a representation of the national flag of Malta shall not be registered.
(3) A trademark which contains a representation of the national flag of Malta shall not be registered if it appears
to the Comptroller that the use of the trademark would be misleading or grossly offensive.
(4) A trademark shall not be registered in the cases specified in article 51 or article 52:
Provided that the Minister may by regulation extend the applicability of the provisions of this subarticle to apply mutatis mutandis in respect of religions other than the Roman Catholic Apostolic Religion.
Specially protected emblems.
(2) A trademark shall not be registered if because it is either identical with an earlier trademark and is to be registered for goods
Relative grounds for refusal of registration.
or servi c es similar to those fo r which th e earli e r tradem ark is pr ot ected , o r it i s s imi lar t o an earlier trademark
and is to be registered for goods or services identical with or similar to those for which th e earlier trademark is protected, there
exists a lik eli hood of confusio n on the part of the public, including the likelihood of association by the public with the earlier
trademark:
Provided that the mere association without the likelihood of confusion shall not prevent a mark from being registered.
(3) A trademark which -
(a) is identical with or similar to an earlier trademark, and
(b) is to be registered for goods or services which are not similar to those for which the earlier trademark is protected,
shall not be registered if, or to the extent that, the earlier trademark has reputation in Malta and the use of the later mark without
due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
(4) A trademark shall not be registered if, or to the extent that, its use in Malta is liable to be prevented -
(a) by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade, or
(b) by virtue of an earlier right other than those referred to in paragraph (a) hereof or in subarticles (1) to (3) in particular by virtue of the law of copyright, or registered designs.
A person thus entitled to pr event t h e use of a trademark i s referred to in th is Act as "the proprie tor of an earlier right"
in relation to the trademark.
(5) Nothing in this article prevents the registration of a tr ad em ark where th e p r oprietor of t h e earl ier trademark
or the proprietor of an earlier right consents to the registration.
Meaning of "earlier trademark".
(a) a registered trademark, which has a date of application for registration earlier than that of the trademark in question, taking
account, where appropriate, of the priorities claimed in respect of the trademarks,
(b) a trademark which, at the date of application for registration of the trademark in question or (where appropriate)
of the priority claimed in respect of the application, was entitled to protection under the Paris Convention as a well-known trademark.
(2) Subject to its being so registered, references in this Act to an earlier trademark includes a trademark in respect of which
an application for registration has been made and which, if registered, would be an earlier trademark by virtue of subarticle 1(a).
(3) A trademark as is referred to in subarticle (1)(a) whose regi stration ex pires shall continu e t o be tak e n i n to account in
year after the expiry thereof. However, i f th e Co mp tr ol l e r is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry no account shall be taken of the expired mark.
(2) Such regulations may make such consequential provision as appears to the Minister appropriate with respect to -
(a) the carrying out by the Comptroller of searches of earlier trademarks, and
(b) the persons by whom an application for declaration of invalidity may be made on the grounds specified in article 43(2).
(3) Regulations making such provision as is mentioned in subarticle (2)(a) may direct that the provisions of article 35 in so far as they require a search to be carried out shall not have effect.
(4) Regulations making such provision as is mentioned in s u b a r t ic le ( 2 )( b ) m a y provid e that articl e 43(3) i n so far as it provides that any person may make an application for a declaration of invalidity
shall have effect subject to the provisions of the order.
(5) Regulations under this article may contain such transitory provisions as appear to the Minister to be appropriate.
Effects of a registered trademark
(2) Any reference in this Act to the infringement of a registered trademark 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 37(3):
Provided that -
(a) no infringement proceedings may be begun before the date on which the trademark is in fact registered; and
(b) no offence under article 72 shall be committed by anything done before the date of publication of the registration.
Power to remove relative grounds for refusal of registration.
Rights conferred by a registered trademark.
(2) A person infringes a registered trademark if he uses in the course of trade a sign where because -
Infringement of a registered trademark.
(a) the sign is identical with the trademark and is used in relation to goods or services similar to those for which the trademark
is registered, or
(b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those
for which the trademark is registered,
there exists a likelihood of confusion on the part of the public, including the likelihood of association with the trademark:
Provided that the mere association without the likelihood of confu s i on shall not be co nsidered as consti tuti ng an infringement.
(3) A person infringes a registered trademark if he uses in the course of trade a sign which -
(a) is identical with or similar to the trademark, and
(b) is used in relation to goods or services which are not similar to those for which the trademark is registered,
where the trademark has a reputation in Malta and the use of the sign , being without due cause, ta kes unfair advant age of, or is
d e tr im ental t o , th e d i sti n cti v e c h arac ter or the repute of the trademark.
(4) For the purposes of this article a person uses a sign if, in particular, he -
(a) affixes it to the goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers
or supplies services under the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.
(5) A person who applies a registered trademark to material intended to be used for labelling or packaging goods, as a business
paper, or for advertising goods or services, shall be treated as a party to any use of the material which inf r inges t h e r eg
i stered trademark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised
by the proprietor or a licensee.
(6) Nothing in the preceding provisions of this article shall be construed as preventing the use of a registered trademark by
any person for the purpose of identifying goods or services as those of the proprietor or a licensee.
However, any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing
the registered trademark if the use without due cause tak e s un fair adv a nt age of, o r is detrimental to, the distinctiv e character
or repute of the trademark.
Limits on effect of a registered trademark.
(2) A registered trademark is not infringed by -
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time
of production of goods or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trademark where it is necessary to indicate the intended purpose of a product or service, in particular
as accessories or spare parts:
Provided the use is in accordance with honest practices in industrial or commercial matters.
(3) (a) A registered trademark is not infringed by the use in the course of trade in Malta of an earlier right.
(b) For the purposes of this subarticle an "earlier right" means an unregistered tradem ark or other sig n continuously
used in relation to goods or services by a person or his predecessor in title from a date prior to whichever is the earlier of -
(i) the use of the first-mentioned trademark in relation to those goods or services by the proprietor or his
predecessor in title, or
(ii) the registration of the first-mentioned trademark in respect of those goods or services in the name of the proprietor or his
predecessor in title; and
(iii) an earlier right shall be regarded as applying if, or to the extent that, its use is protected by virtue of any rule of law.
(2) The provisions of subarticle (1) shall not apply where there i s legit imate reaso n s for th e prop rietor to opp ose fur
t her commercialisation of the goods particularly where the condition fo the goods is changed or impaired after they have been put
on the market.
(3) For the purposes of this article "market" means the market in Malta and as from the 1st May 2004, the market in any
Member State.
Proprietor may not prohibit use. Substituted by:
IX. 2003.103.
(a) disclaim any right to the exclusive use of any specified element of the trademark, or
(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation.
(2) The Comptroller may disclaim any right to the exclusive use of any specified element of the trademark.
Registration subject to disclaimer or limitation.
Action for infringement. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
(3) The Minister may make rules providing for the publication and entry in the register of a disclaimer or limitation.
(4) Where the registration of a trademark is subject to a disclaimer or limitation, the rights conferred by article 9
shall be restricted accordingly.
Infringement proceedings
(2) In an action for infringement all such relief as is available in respect of the infringement of any other property right shall be available to the plaintiff.
Order for erasure, etc., of offending sign.
(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his
possession, custody or control, or
(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction
of the infringing goods, material or articles in question.
(2) If an order under subarticle (1) is not complied with, or it appears likely to the Court that such an order would not be com
p l i ed w ith , t h e Co urt may order that the i n fring i ng goo ds, material or articles be delivered to such person as the
Court may direct for erasure, removal or ob li terat i on of t h e sig n , or for destruction, as the case may be.
Order for delivery up of infringing goods, material or articles.
(2) An application shall not be made after the end of the period specified in article 18; and no order shall be made unless the
Court also makes, or it appears to the Court that there are grounds for making, an order under article 19.
(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this article
shall, retain them pending the decision of the Court under article
19.
(4) Nothing in this article affects any other power of the Court.
Meaning of "infringing goods, material of articles".
(2) Goods are "infringing goods", in relation to a registered trademark, if they or their packaging bear a sign identical
or similar
to that mark and -
(a) the application of the sign to the goods or their packaging is an infringement of the registered trademark,
or
(b) the goods are proposed to be imported into Malta and the application in Malta, of the sign, to them or their packaging would
be an infringement of the registered trademark, or
(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trademark.
(3) Material is "infringing material", in relation to a registered trademark, if it bears a sign identical or similar
to that mark and -
(a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way
as to infringe the registered trademark, or
(b) it is intended to be so used and such use would infringe the registered trademark.
(4) "Infringing articles", in relation to a registered trademark, means articles -
(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and
(b) which a person has in his possession, custody or control, knowing or having reason to believe that they have been used
or are to be used to produce infringing goods or material.
(a) in the case of infringing goods, the date on which the trademark was applied to the goods or their packaging,
(b) in the case of infringing material, the date on which the trademark was applied to the material, or
(c) in the case of infringing articles, the date on which they were made,
except as provided in the following subarticle.
(2) If during the whole or part of that period the proprietor of the registered trademark is prevented by fraud or concealment
from discovering the facts en tit li ng hi m to app l y f o r an or der, an application may be made at any time before the end of
the period of six years from the date on which he could with reasonable diligence have discovered those facts.
(a) for an order that they be destroyed or forfeited to such person as the Court may think fit, or
Period after which remedy of delivery up not available.
Order as to disposal of infringing goods, material or articles. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
(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 tr ademark would be adequate to compensate the proprietor and any licensee to protect their interests.
(3) The Court shall order the service of the writ on persons having an interest in the goods, material or articles, and 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
(b) to appeal against any order made, whether or not he appeared at first instance, and any such order shall not 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 goods, material or articles, 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 go ods, material or arti cles were before b e i ng d e l i vered up i s entitled to their return.
Remedy for groundless threats of infringement proceedings. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
(a) use of the mark on goods or their packaging,
(b) the importation of goods to which, or to the packaging of which, the mark has been applied, or
(c) the supply of services under the mark,
any person aggrieved may bring proceedings for relief under this article by sworn application before the Civil Court, First Hall.
(2) The relief which may be applied for is 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 he may have sustained by the threats,
and the p l ainti ff is entit led to such r el i ef u n less the def e ndant 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 trademark concerned.
(3) Where the defendant shows that the acts in respect of which proceedings were threatened constitute or would constitute
an infringement of the registered tra d emark, the plaintiff shall nevertheless be entitled to relief if he shows that the registration
of the trademark is invalid or liable to be revoked.
(4) The mere notification that a trademark is registered, or that an application for registration has been made, does not constitute
a threat of proceedings for the purposes of this article.
Registered trademark as object of property
(2) The following provisions apply where two or more persons are co-proprietors of a registered trademark, 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 trademark.
(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 trademark, or
(b) assign or cede control of his share in the registered trademark.
(5) Infringement proceedings may be brought by any co- proprietor, but a co-proprietor may not, without 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.
Not h in g in th is su bart icle af fects the mak i n g o f an y 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.
Nature of a registered trademark.
Co-ownership of a registered trademark.
It is so transmissible either in connection with the goodwill of a business or independently.
(2) An assignment or other transmission of a registered trademark may be partial and limited so as to apply -
(a) in relation to some but not all of the goods or services for which the trademark is registered, or
(b) in relation to the use of the trademark in a particular manner or a particular locality.
Transmission of a registered trademark.
Registration of transactions affecting a registered trademark.
(3) An assignment of a registered trademark is not effective unless it is in writing signed by or on behalf of the assignor or,
as the case may be a personal representative.
(4) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark
as part of the goodwill of a business.
the prescribed particulars of the transaction shall be entered in the register.
(2) The following are registrable transactions -
(a) an assignment of a registered trademark or any right in it;
(b) the grant of a licence under a registered trademark;
(c) the transfer of a registered trademark by testamentary disposition;
(d) an order of a Court or other competent authority transferring a registered trademark or any right in or under it.
(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction -
(a) the transaction is ineffective as against a person acquiring in good faith a conflicting interest in the registered
trademark, and
(b) a person claiming to be a licensee by virtue of the transaction shall not have the protection of article 28 or 29.
(4) Where a person becomes the proprietor or a licensee of a registered trademark 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 trademark occurring after the
date of the registrable transaction and before the prescribed particulars of the transaction are registered, unless:
(a) an application for registration of the prescribed particulars 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 practicable thereafter.
(5) The Minister may make regulations prescribing rules as to -
(a) amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence,
and
(b) the removal of such particulars from the register -
(i) where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired;
(ii) where no such period is indicated and, after such period as may be prescribed, and after the Comptroller has notified
the parties of his intention to remove the particulars from the register and the parties have not indicated their
agreement that such particulars should not be removed for such period as the parties shall have agreed and indicated to the
Comptroller;
(c) the amendment or removal from the register of particulars relating to a security interest on the application
of, or with the consent of, the person entitled to the benefit of that interest.
25. The provisions of article 21 to 24 apply mutatis mutandis in relation to an application for the registration of a trademark in the same manner in relation to a registered trademark.
(a) in relation to some but not all the goods or services for which the trademark is registered, or
(b) in relation to use of the trademark in a particular manner or a particular locality.
(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 trademark 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.
Application for registration of a trademark as an object of property.
Licensing of a registered trademark.
(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.
Exclusive licences.
Provided that they shall not apply where or to the extent
General provisions as to the rights of licensees in case of infringement.
that, in accordance with article 29(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 the proprietor of the registered trademark
to take infringement proceedings in respect of any matter whi c h affects his interests.
(3) If the proprietor -
(a) refuses to do so, or
(b) fails to do so within two months after being called upon,
the licensee may bring the 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 registered trademark any loss suffered or likely to be suffered
by licensees 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.
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 trademark;
an d references i n t h is Act to the proprieto r of a regist ered trademark 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 trademark.
(4) Where proceedings for infringement of a registered trademark are brought by the proprietor or by the exclusive
licensee relating to an infringement in resp ect 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 joined in the suit.
(5) (a) Where an action for infringement of a registered tr ademark rel ating to an infringem ent i n respect of which the proprietor
and an exclusive licensee have concurrent right of action is brought -
(i) the Court shall in assessing damages take into account -
(1) the terms of the licence, and
(2) 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 of 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 them, 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 trademark shall notify any exclusive licensee who has a conc urrent right of action before
applying for an order under article 16; 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.
Application for a registered trademark
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 this Act to the date of application for registration shall be construed as a reference to the date of
filing of the application.
Application for registration.
Date of filing.
(2) Any question arising as to the class within which any goods or services fall shall b e d et ermined b y the Com p troll er, whose decision shall be final.
Classification of trademarks.
Claim to priority of Convention application.
Priority
(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 trademark shall not be affected by any use of the mark in Malta in the period between that date and
the date of the application under this Act.
(3) (a) Any filing which in a country which is a member of the Wo rld Tr ade Organisation or is a party to the Paris Convention is under
its legislation or any international agreement to which such country is a party, treated as if it were a regular national filing,
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 goods or servi c es as t h e first Convent i on ap plicat ion, filed in
the same Co nvent ion coun try, sh al l b e co nsidered the fi rst Con v enti on applicat ion (the filing date of which is the starti
ng 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 a right of priority,
and the previous application may not thereafter serve as a basis for claiming a right of priority.
(5) Provision may be made by rules as to the manner of claim i ng a right to priorit y on t h e basi s o f a Conv
en tion 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 33 in relation to Convention applications or such other provision as appears to the Minister to be appropriate.
Registration procedure
(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.
Claim to priority from other relevant overseas application.
Examination of application.
(2) Save as provided in subarticle (1), 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 trademark or extend the goods or services covered
by the application.
(2) A trademark shall not be registered and the application shall be de eme d to be withdrawn unles s any fe e pres cribed in respect of any action taken before the registration is paid within the prescribed period.
Withdrawal, restriction or amendment of application.
Registration.
Duration of registration.
(3) A trademark when registered shall be registered as of the date of filing of the application for registration, and that date
shall be deemed for the p u rpo s es o f th is Act to be th e date of registration.
(4) On the registration of a trademark the Comptroller shall publish the registration in the prescribed manner and issue to the
applicant a certificate of registration.
Duration, renewal and alteration of registered trademark
(2) Registration may be renewed in accordance with article 39 for further periods of ten years.
Renewal of registration.
(2) The Minister may by regulation make rules providing that the Comptroller informs the proprietor of a registered trademark,
before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.
(3) Without prejudice to subarticle (1) a request for renewal must be made, before the expiry of the registration:
Provided that, the request may be made and the fee paid within such further period as may be prescribed, in which case a prescribed
additional renewal fee must also be paid within that period.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) If the registration is not renewed in accordance with the above provisions, the Comptroller shall remove the trademark from
the register.
(6) Provision may be made by rules for the restoration of the registrati on o f a tradem ark which has b een remo ved from the
register, subject to such conditions (if any) as may be prescribed.
(7) The renewal or restoration of the registration of a trademark shall be published in the prescribed manner.
Alteration of a registered trademark.
(2) Nevertheless, the Comptroller may, at the request of the proprietor, allow the alteration of a registered trademark where
the mark includes the proprietor ’s name or address and the alteration is li mited to the alt e ration o f that name or ad dress
and does not substantially affect the identity of the mark.
(3) Provision shall be made by rules for the publication of any such alteration and t h e maki ng of objections by any person
claiming to be affected by it.
Surrender, revocation and invalidity
(2) Provision may be made by rules -
(a) as to the manner and effect of a surrender, and
(b) for protecting the interests of other persons having a right in the registered trademark.
Surrender of a registered trademark.
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine
use in Malta, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and
there are no proper reasons for such non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for such non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a
product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent, it is liable to mislead the public
in relation to the goods or services for which it is registered, particularly as to the nature, quality or geographical
origin of those goods or services.
(2) For the purposes of subarticle (1) use of a trademark includes the use in a form differing in such elements which
do not alter the distinctive character of the mark in the form in which it was registered, and use in Malta includes affixing the
trademark to g o o d s o r t o the packagi ng of go od s in Mal t a so lely fo r ex por t purposes.
(3) The registration of a trademark shall not be revoked on the ground mentioned in paragraphs (a) or (b) of subarticle (1) if such use as is referred to in those paragraphs is commenced or resumed after the expiry of the five-year period
and before the application for revocation is made:
Provided that, any such commencement or resumption of use after the expire of the five-year period but within the period of th ree
months before the m a king of the app lication sh all be disregarded unless pre p aratio ns for the comme n cement or resu mpti
on began b efore th e proprietor becam e aware that t h e application is likely to be made.
(4) An application for revocation may be made by sworn application before the First Hall, Civil Court by any person.
(5) Where grounds for revocation exist in respect of only some of the goods or servic es for whic h the tr ademark is registered,
Revocation of registration. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
revocation shall be limited to those goods or services.
(6) Where the registration of a trademark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased
to that extent as from -
(a) the date of the application for revocation, or
(b) if grounds for revocation existed at an earlier date, such earlier date.
Grounds for invalidity of registration. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
Whe r e the trademark was regist ered in breach of s u barticle (1)(b), (c) or (d) of that article, it shall not be declared invalid if, in consequence of the use which has been made of it , it has after registration
acquired a distinctive character in relation to the goods or services for which it is registered.
(2) The registration of a trademark may, unless the proprietor of that earlier trademark or other earlier right has consented
to the registration, be declared invalid on the ground -
(a) that there is an earlier trademark in relation to which the conditions set out in article 6 (1), (2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in article 6(4) is satisfied.
(3) An application for a declaration of invalidity may be made by any person, by sworn application before the First Hall of the
Civil Court.
(4) In the case of bad faith in the registration of a trademark, the Comptroller himself may apply to the Court for a declaration
of the invalidity of the registration.
(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trademark is registered,
the trademark shall be declared invalid with regard to those goods or services only.
(6) Where the registration of a trademark is declared invalid to any extent, the registration shall to that extent be deemed never
to have been made:
Provided that this shall not affect transactions past and
closed.
Effect of acquiescence.
(a) to apply for a declaration that the registration of the later trademark is invalid, or
(b) to oppose the use of the later trademark in relation to
the goods or services in relation to which it has been so used,
unless the registration of the later trademark was applied for in bad faith.
(2) In the cases referred to in subarticle (1), the proprietor of the later trademark is not entitled to oppose the use of the
earlier trademark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trademark or right
may no longer be invoked against his later trademark.
Collective marks
(2) The provisions of this Act apply to collective marks subject to the provisions of the First Schedule to this Act.
Certification marks
(2) the provisions of this Act apply to certification marks subject to the provisions of the Second Schedule.
Collective marks.
Certification marks.
International registration
The Madrid
Protocol.
"the Madrid Protocol" means the Protocol relating to the Madrid
Ag reement concerning the Intern ational Registration of Marks adopted at Madrid on 27 June, 1989;
"the International Bureau" has the meaning given by Article 2(1)
of that Protocol; and
"international trademark (Malta)" means a trademark which is entitled to protection in Malta under that Protocol.
The Order may, in particular, be made with respect to -
(a) the making of applications for international registrations by way of the Industrial Property Office as office
of origin;
(b) the procedures to be followed where the basic Malta application or registration fails or ceases to be in
Power to make provision giving effect to Madrid Protocol.
force;
(c) the procedures to be followed where the Industrial Property Office receives from the International Bureau a request for
extension of protection to Malta;
(d) the effects of a successful request for extension of protection to Malta;
(e) the transformation of an application for an international registration, or an international
registration, into a national application for registration;
(f) the communication of information to the International
Bureau;
(g) the payment of fees and amounts prescribed in respect of applications for international registrations, extensions
of protection and renewals.
(2) Without prejudice to the generality of subarticle (1), provision may be made by regulations under this article applying
in relation to "an international trademark (Malta)" the provisions of article 20 and of articles 72 to 86 of this Act.
The Paris
Convention.
The Paris Convention
Protection of well- known trademarks: Article 6 bis.
(2) The Minister may make regulations to make provision, as a p pear to him appropriate in co ns equ e n ce of an y re vi si on o r amendment of the Paris Convention after the passing of this Act to enable Malta to comply with any provisions of such amendment, and such regul at ions m a y i n particu l ar p r ov ide t h at any of the provisions of Part II of this Act shall no longer apply or shall apply with such amendments as may be required.
(2) Subject to the provisions of article 44, the proprietor of a
trademark which is enti tled to prot ecti on und er the Paris
Convention as a well-known trademark is entitled to restrain by injunction the use in Malta of a trademark which, or the essential
p art of which , is id entical or sim ilar to his mar k, in relat ion to
identical or similar goods or services, where the use is likely to cause confusion.
(3) Nothing in subarticle (2) shall affect the continuation of any bona fide use of a trademark begun before the coming into force of this article.
(2) A trademark which consists of or contains the armorial bearing or any other State emblem of a Convention country which
is prot ecte d und er t he Pari s C on vention shall not be registe red wit hout th e aut horisatio n o f the co mp etent auth oriti
es of that country.
(3) A trademark which consists of or contains an official sign or hallm ark indicating control and warranty adopted by a Conven
tion coun try shall not , w h ere the sig n or hal l m a rk is protected under the Paris Convention, be registered in relation to
goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation
of the competent authorities of the country concerned.
(4) The provisions of this article relative to national flags and other State emblems, and official signs or hallmarks apply equally
to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5) Nothing in this article prevents the registration of a trademark on the application of a national of a country who
is au tho r ised to make u s e of a S t ate emblem or of ficial sign or hallmark, of that country, notwithstanding that it is similar
to that of another country.
(6) Where by virtue of this article the authorisation of the competent auth orities of a Conventio n count ry is or woul
d be required for the registration of a trademark, those authorities are en ti tl ed t o restr a i n any u s e of t h e m a r k in
Malta wi th ou t th ei r authorisation.
National emblems, etc., of Convention countries:
Article 6ter.
(2) A trademark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris
Convention shall not be registered without the authorisation of the i n t e r n ati onal org a nisati on con c ern e d, u n l e ss
it ap pears t o t h e Comptroller that the use of the emblem, abbreviation or name in the manner proposed -
(a) is not such as suggests to the public that a connection exists between the organisation and the trademark, or
(b) is not likely to mislead the public as to the existence of a connection between the user and the organisation.
Emblems, etc., of certain international organisations: Article 6ter.
(3) The provisions of this article relative to emblems of an international organisation apply equally to anything which from
a heraldic point of view imitates any such emblem.
(4) Where by virtue of this article the authorisation of an international or ganisation is or wo uld be required for
t h e registration of a trademark, that organisation is entitled to restrain any use of the mark in Malta without its authorisation.
(5) Nothing in this article affects the right of a person whose
bona fide use of the trademark in question began before 1 January
2000.
Notification under Article 6ter of the Convention.
(a) the country in question has notified Malta in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, sign or hallmark,
(b) the notification remains in force, and
(c) Malta has not objected to it in accordance with Article
6ter(4) or any such objection has been withdrawn.
(2) For the purposes of article 52 the emblems, abbreviations and names of an international organisation shall be regarded as
protected under the Paris Convention only if, or to the extent that -
(a) the organisation in question has notified Malta in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, abbreviation or name,
(b) the notification remains in force, and
(c) Malta has not objected to it in accordance with Article
6ter (4) or any such objection has been withdrawn.
(3) Notification under Article 6ter (3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the
receipt of the notification.
(4) The Comptroller shall keep and make available for public inspection by any person, as prescribed in the regulations, a list
of the state emblems and official signs or hallmarks, and the emblems, abbreviations and names of international organisations, which
are for the time being protected under the Paris Convention by virtue of notification under Article 6ter (3).
Acts of agent or representative: Article 6septies. Amended by:
L.N. 181 of 2006; L.N. 186 of 2006.
(2) The proprietor may by sworn application before the First
Hall of the Civil Court -
(i) demand a declaration of invalidity of the registration, or
(ii) demand the rectification of the register so as to substitute his name as the proprietor of the registered trademark.
(3) The proprietor may restrain any use of the trademark in
Malta which is not authorised by him.
(4) Subarticles (2) and (3) shall not apply if, or to the extent tha t , the agent or repres entativ e s h ows that his ac tions
we re 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 injunction shall be granted under subarticle (3) in respect of a use in w h ich th e proprietor has acquiesced for a con tinuous
period of three years or more.
The register
55. (1) (a) The Comptroller shall maintain a register of trademarks.
(b) References in this Act to "the register" are to that register; and references to registration, in particular, in the
expression "registered trademark", are, unless the con t ex t ot herwise req u ires, to reg i strat i on in that register.
(2) There shall be entered in the register in accordance with this Act -
(a) registered trademarks,
(b) such particulars as may be prescribed of registrable transactions affecting a registered trademark, and
(c) such other matters relating to registered trademarks as may be prescribed.
(3) The register shall be kept in such manner as may be prescribed, and provision shall in particular be made for -
(a) public inspection of the register, and
(b) the supply of certified or uncertified copies, or extracts, of entries in the register.
Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of
a trademark.
(2) An application for rectification may be made either to the
Comptroller or to the Court:
Provided that if proceedings concerning the trademarks in question are pending before the Court -
Maintenance and content of register.
Rectification or correction of the register.
(a) the application must be made to the Court; and
(b) if the application is made to the Comptroller, he may at any stage of the proceedings refer the application to the Court.
(3) Except where the Comptroller or the Court directs otherwise the effect of 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 made in the prescribed manner by the proprietor of a registered trademark, 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.
Adaptation of entries to new classification.
Power to require use forms.
Information about applications and registered trademarks.
(2) Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where
it appears to the Comptroller that compliance with this requirement would involve undue complexity and that any extension would not
be substantial and w oul d no t adversely affect th e ri ght of any person.
(3) The rules may moreover empower the Comptroller -
(a) to require the proprietor of a registered trademark, within such time as may be prescribed, to file a proposal
for amendment of the register, and
(b) to cancel or refuse to renew the registration of the trademark in the event of his failing to do so.
(4) Any such proposal shall be advertised, and may be opposed, in such manner as may be prescribed.
Powers and duties of the Comptroller
Any such request must be made in such manner and be accompanied by such fee as may be prescribed.
(2) Before publication of registration of a trademark, documents or information constituting or relating to the
application
shall not be published by the Comptroller or communicated by him to any person except -
(a) in such cases and to such extent as may be prescribed, or
(b) with the consent of the applicant.
(2) The Comptroller is not subject to any liability by reason of, or in connection with, any examination required or authorised
by t h is Act, or any such treaty, co nven tion, arrangem e nt or engagement, or any report or other proceedings consequent
on 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.
Legal proceedings and appeals
61. In all legal proceedings relating to a registered trademark (including proceedings for rectif ication of the register) the registration of a person as proprietor of a trademark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.
(2) Where the Court has given such a judgement and in subsequent proceedings -
(a) the validity of the registration is again questioned, and
(b) the proprietor obtains a final order or judgement in his favour, he shall be entitled to his costs unless the Court directs otherwise.
Exclusion of liability in respect of official acts.
Registration to be prima facie evidence of validity.
Certification of validity of contested registration.
(a) the revocation of the registration of a trademark,
(b) a declaration of the invalidity of the registration of a trademark, or
(c) the rectification of the register,
the Comptroller shall be notified with the proceedings and shall be entitled to appear and to be heard if so directed by the Court.
(2) Unless otherwise directed by the Court, the Comptroller may, instead of appearing, file in the record of the case a statement
in writing signed by him, giving particulars of -
(a) any proceedings before him in relation to the matter in issue,
Comptroller’s appearance in proceedings involving the register.
(b) the grounds of any decision given by him affecting it, (c) the practice of the Industrial Property Office in like
cases, or
(d) such matters relevant to the issues and within his knowledge as Comptroller as he thinks fit;
and the statement shall be deemed to form part of the evidence in the proceedings.
Appeals from the Comptroller’s decision.
Power of Minister to make rules.
64. (1) Any decision of the Comptroller under this Act, may be appealed from, before th e Co urt of Appeal composed in the mann er
pr ov id ed in su bar t i c le (6) o f art i cl e 41 of t h e Co de of O rganizati on and Civil Procedure by app licati on wi thin fi fteen days of service of the Comptroller ’s decision.
(2) For the purposes of subarticle (1) of this article "decision" means a ny act, other th an such acts as ma y by
regulations be prescribed, done by th e Com ptro ller in exercise of a discretion vested in him by or under this Act.
(3) The Minister may make rules governing appeals to the Court of Appeal under this Act, and presenting a scale of costs
and fees in relation to such appeals.
Rules, fees, hours of business, etc.
(a) with regard to the manner of filing of applications and other documents;
(b) requiring and regulating the translation of documents and the filing and authentication of any translation;
(c) with regard to the service of documents;
(d) authorising the rectification of irregularities of procedure;
(e) prescribing time limits for anything required to be done in connection with any proceeding under this Act;
(f) providing for the extension of any time limit so prescribed, or specified by the Comptroller whether or not such time
limit has already expired.
Fees. 66. (1) There shall be paid in respect of applications and other matters under this Act such fees as may be prescribed.
(2) Provision may be made by rules as to -
(a) the payment of a single fee in respect of two or more matters, and
(b) the circumstances, if any, in which a fee may be repaid or remitted.
(2) Business done on any day after the specified hours of business, or on a day which is not a business day, shall be
deemed to have been done on the next business day; and where the time for doi ng an yt hin g un der t h is Act ex pi res on a day
wh ich i s no t 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 classes of business and shall be published in the
prescribed manner.
Trademark agents
(2) The Minister may make rules regulating the registration of persons as registered trademark agents, and may in particular -
(a) require the payment of such fees in connection with such registration as may be prescribed, and
(b) authorise in such cases as shall be specified the erasure from the register of the name of any person registered as a registered
trademark agent or the suspension of such a registration.
(3) Only registered persons may -
(a) carry on a business under any name or other description which contains the words "registered trademark
agent"; or
(b) in the course of a business otherwise describe or hold himself out, or permit themselves to be described or held out, as registered
trademark agents.
Hours of business and business days.
Recognition of agents.
The register of trademark agents/ attorneys.
70. The provisions of article 588 of the Code of Organization and Civil Procedure shall apply with regard to registered trademark agents as it applies with respect to Advocates and legal procurators.
Privilege for communication with registered trademark agents. Cap. 12.
Power to Comptroller to refuse to deal with certain agents.
(a) a person who not being a registered trademark agent shall have falsely posed as such;
(b) a person whose name has been erased from and not restored to, or who is suspended from, the register of trademark agent on
the ground of misconduct;
(c) a person who is found to have been guilty of such conduct as would, in the case of an individual registered
in the register of trademark agents, render him liable to have his name erased from the register on the ground of misconduct;
(d) a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognize
under paragraph (a), (b) or (c) above.
Unauthorised use of trademark, etc., in relation to goods.
Amended by:
L.N. 426 of 2007.
Offences
(a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trademark, or
(b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears,
such a sign, or
(c) has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by
himself or another, which would be an offence under paragraph (b), or
(d) applies a sign identical to, or likely to be mistaken for, a registered trademark to material intended to be used-
(i) for labelling or packaging goods,
(ii) as a business paper in relation to goods, or
(iii) for advertising goods, or
(e) uses, in the course of a business material bearing such a sign for labelling or packaging goods, or as a business paper
in relation to goods, or for advertising goods, or
(f) has in his possession, custody or control in the course of a business any such material with a view to the doing of
anything, by himself or another, which would be an offence under paragraph (e), or
(g) (i) makes an article specifically designed or adapted for making copies of a sign of or to make a sign likely to be mistaken
for, a registered trademark, or
(ii) has such an article in his possession, custody or
control in the course of a business,
knowing or having reason to believe that it has been, or is to be, used to produce goods, or material for labelling or packaging
goods, as a business paper in relation to goods, or for advertising goods,
shall be guilty of an offence against this article.
(2) A person does not commit an offence against this article unless -
(a) the goods to which the offence refers are goods in respect of which the trademark is registered, or
(b) the trademark has a reputation in Malta and the use of the sign takes or would take unfair advantage of, or is or would be detrimental
to, the distinctive character or the repute of the trademark.
(3) It is 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 sign in the manner in which it was used, or was to be used, was not an infringement of the registered trademark.
(4) A person guilty of an offence under this article 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.
(a) makes, or causes to be made, a false entry in the register of trademarks; 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, etc. Amended by:
L.N. 426 of 2007.
(a) falsely to represent that a mark is a registered trademark, or
(b) to make a false representation as to the goods or services for which a trademark is registered,
knowing or having reason to believe that the representation is false. (2) For the purposes of this article, the use in Malta in
relation
to a trademark -
Falsely representing trademark as registered. Amended by:
L.N. 426 of 2007.
(a) of the word "registered", or
(b) of any other word or symbol importing a reference, express or implied, to registration,
shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration
elsewhere than in Malta and that the trademark is in fact so registered for the goods or services in question.
(3) A person guilty of an offence against this article shall be liable o n conv ictio n to a fin e ( mul t a ) of not more than eleven thousand and six hundred and forty-six euro and eighty-seven cents (11,646.87).
Unauthorised use of certain devices, emblems, etc. Amended by:
L.N. 426 of 2007.
(2) Any person who contravenes the provisions of subarticle (1) of this article 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 nine hundred and eighty-eight euro and twelve cents (6,988.12).
Delivery up to infringing articles, etc.
Powers of
Magistrates.
Where owner of goods is unknown.
Forfeiture of things seized.
Procedure where owner in unknown.
73, on the demand of the prosecution, order that the machinery or other industrial means or contrivances used in contravention of
the rights of the proprietors of the trademarks, the infringing articles,
and the apparatus destined for their production, be forfeited, wholly or in part, and delivered to the holder of the trademark, without
prejudice to any other right to relief under this Act.
posted up at the entrance of the building wherein the Court sits, and in any other place which the court may deem fit, stating that
the goods or things seized shall be forfeited, unless at the time and place named in th e banns th e owne r of such goods or things
or other person interested in such goods or things attends before the Court at the time and place indicated in the banns and shows
cause to the contrary.
(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.
Provided that where such mark of manufacture or description includes the name of a place or country and the goods are
not produced in the place or country indicated in the mark of manufacture or description so used, the provisions of this article
shall not apply, unless there is added to the mark of manufacture or description, immediately before or after the name of the said
place or country, in an equally conspicuous manner, the name of the place or country in which the goods were actually made or produced,
and unless there is also stated that the goods were made or produced in that place or country.
84. Any person who falsely claims to be a registered trademark agent when he is not so registered in accordance with article 69 of this
Act, shall be guilty of an offence against this article and shall in convi ct ion be l i able to a fine ( mu lta ) of no t mo re than o n e thousand and one hundred and sixty-four euro and sixty-nine cents (1,164.69).
Award of compensation to parties in good faith.
Limitation of criminal actions.
Use of forged marks.
Person falsely representing himself as a registered trademark agent. Amended by:
L.N. 426 of 2007.
Right to damages not affected.
Employer and employee.
Burden of proving use of trademark.
Limitations of civil action.
Interpretation. 89. (1) In this Part -
"existing registered mark" means a trademark, registered under
Cap. 29.
Existing registered marks.
the Industrial Property (Protection) Ordinance immediately before the commencement of this Act;
"former register" means the register kept under the Old Law; "new register" means the register kept under 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 marks immediately before the commencement of this Act.
(2) For the purposes of this Part -
(a) an application shall be treated as pending on the commencement of this Act if it was made but not finally determined
before commencement, and
(b) the date on which it was made shall be taken to be the date of filing under the Old Law.
(2) Existing registered marks registered as a series under art i cl e 91(2) an d 91(3 ) of the Ordin a n c e shall be
sim ilarly registered in the new register
(3) In any other case notes indicating that existing registered marks are associated with other marks shall cease to have effect
on the commencement of this Act
Proceedings under the Old Law.
shall be made to the new register.
(2) A disclaimer or limitation entered on the former register in relation to an existing regist er ed mark im mediately befor e
the commencement of this Act shall be transferred to the new register and have effect as if entered on the register in pursuance
of article
13 of this Act.
(2) After the coming into force of this Act, it shall not be an infringement of -
(a) an existing registered mark, or
(b) a registered trademark of which the distinctive elements are the same or substantially the same as those
of an existing registered mark and which is registered for the same goods or services,
to continue with any use which did not amount to infringement of the existing registered mark under the Old Law.
(2) Paragraph 12 of the Second Schedule of this Act shall apply o n ly in relation to infringements co m mitted aft e r the commencement of this Act.
Effects of registration infringement.
Infringing goods, material or articles.
Rights and remedies of licensee or authorised user.
(2) Existing entries under articles 98 and 100 of the Industrial Pro p erty (Pr o tection ) Or dinan ce shall be transferre d
on the commencement of this Act to the new register and have effect as if made under article 24 of this Act.
(3) An application for registration of an assignment under articles 98 and 100 of th e I ndustrial Pro p er ty (Pro tectio
n) Ord i nan ce wh ich is pen d in g b e fore th e Co mpt r o ller on th e commencement of this Act shall be treated as an application
for registration of an assignment under article 24 of this Act and shall be acted upon accordingly:
Co-ownership of a registered mark.
Assignment, etc., of a registered mark.
Cap. 29.
Licensing of a registered mark.
Pending applications for registration.
amend his application so as to conform with the requirements of this Act.
(4) An application for registration of an assignment under art i cl es 98 an d 10 0 of the Indu st rial Property (Protecti
on) Ordinance which has been determined by the Comptroller but not finalised before the commencement of this Act shall be dealt with
under the Old Law; and sub- paragraph (2) above shall apply in relation to any resulting entry in the register.
(5) Where, before the commencement of this Act, a person has become entitled by ass i gnment or tran sm i s si on to an ex isti
ng registered mark but has not registered his title, any application for registration of an assignment after its commencement shall
be made under article 24 of this Act.
(2) The power of the Minister under article 65 of this Act to make rules regulating practice and procedure, and in relation to the matters mentioned in subarticle (2) of that article, is exercisable in relat ion t o su ch an ap pli cati on; an d d ifferent prov isio n may be made for such applications from that made for other applications.
Conversion of pending application.
(2) The notice must be in the prescribed form, be accompanied by the appropriate fee and be given no later than six months after
the commencement of this Act.
(3) Notice duly given shall be irrevocable and shall have the effect that the application shall be treated as if made immediately
after the commencement of this Act.
Trademarks registered according to old classification.
Claim to priority from overseas application.
(2) Articles 38(2) and 39 of this Act shall apply where the renewal falls due on or after 1st January, 2001; and the Old Law shall
continue to apply in any other case.
(3) In either case the date of payment of the fee shall be immaterial.
Duration and renewal of registration.
1. The provisions of this Act apply to collective marks subject to the following provisions which may, by regulations, be amended by the Minister.
2. In relation to a collective mark the reference in the definition of "trademark" in article 2 to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.
3. Notwithstanding article 4(1)(c), a collective mark which co nsists of sign s or in dicati ons whi c h may serve, i n t r ade, t o designate the geographical origin
of the goods or services may be registered:
Provided that the proprietor of such a mark shall not be entitled to prohibit the use of the signs or indications in accordance with
honest practices i n industrial or comm ercial matters particularly by a person who is entitled to use a geographical name.
4. (1) A collective mark shall not be registered if the public is liable to be misled as regards the character or significance
of the mark, in particular if it is likely to be construed as something other than a collective mark
(2) The Comptroller may accordingly require that a mark in respect of which application is made for registration includes some
in di cati on th at it is a collectiv e mark; and no tw ithstand ing th e provisions of article 36(2), an application may be amended
so as to comply with any such requirement.
with the Comptroller regulations governing the use of the mark specifying the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions for the use of the mark, as well as any sanctions against misuse and any further requirements with which the regulations have to comply as may be established by any rule made by the Minister.
6. (1) A collective mark shall not be registered unless the regulations governing the use of the mark -
(a) comply with paragraph 5(2) and any further requirements imposed by rules, and
(b) are not contrary to public policy or to accepted principles of morality.
(2) The application shall be deemed to be withdrawn if before the end of any period as may be prescribed after the date of the
application for registration of a collective mark, the applicant fails to file the regulations with the Comptroller and pay the prescribed
fee.
7. (1) The Comptroller shall consider whether the requirements mentioned in paragraph 6(1) are met.
(2) If it appears to the Comptroller that those requirements are not met, he shall inform the applicant and give him an opportunity,
w ithin such p e r i od as the Co mpt r ol ler m a y specif y, to make representations or to file amended regulations.
(3) If the applicant fails to satisfy the Comptroller that those requirements are met, or to file regulations amended 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 those requirements, and the other requirements for registration, are met, he shall accept
the application and shall proceed in accordance with article 37.
8. The regulations governing the use of a registered collective m ar k shall be open to public inspection in the sam e way as the register.
9. An amendment of the regulations governing the use of a r egi stered collective m ar k is not effective unless and until the amended regulations are filed with the Comptroller and accepted by him.
10. The provisions of subarticle (6) of article 10 and of subarticle (2) of article 19 apply in relation to an authorised
user of a regis t ered colle c tive mark as in relation to a licensee of a trademark.
11. (1) The following provisions have effect as regards the r i gh ts of an auth ori s ed user in relatio n t o i n fri ngement
o f a registered collective mark.
(2) An authorised user is entitled, subject to any agreement to t h e cont rary betw een him an d th e pro p rieto r, to call
on the proprietor to take 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 months after being called upon, the authorised user may bring
the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought by virtue of this paragraph, the authorised user may not, without the leave of
the Court, proceed with the action unless the proprietor is joined in the suit.
(5) In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered
by authorised users shall be taken into account by the Court which shall give such directions as it thinks fit with regard to the
disposal and distribution of any sum awarded as a remedy for infringement.
12. Apart from the grounds of revocation provided for in article 42, the registration of a collective mark may be revoked
on the ground -
(a) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the
manner referred to in paragraph 4(1), or
(b) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark, or
(c) that an amendment of the regulations has been made so that the regulations -
(i) no longer comply with paragraph 5, or
(ii) are contrary to public policy or to accepted principles of morality.
13. Apart from the grounds of invalidity provided for in article
43, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions
of paragraph 4(1) or 6(1) of this Schedule.
1. The provisions of this Act apply to certification marks
subject to the following provisions which may, by regulations, be amended by the Minister.
2. In relation to a certification mark the reference in the definition of "trademark" in article 2 to distinguishing goods or services of one undertaking from those of other undertakings shall be co nst rued as a reference to d ist ingui shi ng go ods or serv ices which are certified from those which are not.
3. Notwithstanding article 4(1)(c), a certification mark which co nsist s of sig n s o r i ndi cat i on s wh ich may serve, in trade, to designate the geographical
origin of the goods or services may be registered:
Provided that the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest
practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).
4. A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.
5. (1) A certification mark shall not be registered if the public is liable to be misled as regards the character or
significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.
(2) The Comptroller may accordingly require that a mark in respect of which application is made for registration includes some
indication that it is a certification mark, and notwithstanding the provisions of article 36(2), an application may be amended so
as to comply with any such requirement.
6. An applicant for registration of a certification mark must file with the Comptroller regulations governing the use of the mark specifying the person authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes and any further requirem ent s with which the regulations have to comply as may be established by any rule made by the Minister.
7. (1) A certification mark shall not be registered unless - (a) the regulations governing the use of the mark -
(i) comply with paragraph 6(2) and any further
requirements imposed by rules, and
(ii) are not contrary to public policy or to accepted principles of morality, and
(b) the applicant is competent to certify the goods or services for which the mark is to be registered.
(2) The application shall be deemed to be withdrawn if before the end of any period as may be prescribed after the date of the
application for registration of a certification mark, the applicant fails to file the regul ations w ith the Comptroller and p a
y the prescribed fee.
8. (1) The Comptroller shall consider whether the requirements mentioned in paragraph 7(1) are met.
(2) If it appears to the Comptroller that those requirements are not met, he shall inform the applicant and give him an opportunity,
with in such perio d as th e Com p tro ller may sp eci f y, t o m a k e representations or to file amended regulations.
(3) If the applicant fails to satisfy the Comptroller that those requirements are met, or to file regulations amended so as to
need 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 those requirements, and the requirements for registration are met, he shall accept the
application and shall proceed in accordance with article 37.
9. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.
10. An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the Comptroller and accepted by him.
11. The assignment or other transmission of a registered cert ification m a rk is not ef fective witho u t the consent of t h e Comptroller.
12. The provisions of subarticle (6) of article 10 and of subarticle (2) of article 19 apply in relation to an authorized
user of a registere d c e rtific ate ma rk a s in rela tion to a lice n s ee of a trademark.
13. In infringement proceedings brought by the proprietor of a registered certificati o n m a rk any lo ss su ff ered or li k e
ly to be su ff ered by authorised users shall be taken into account by the Court which shall give such directions as it thinks fit
with regard to the disposal and distribution of any sum awarded as a remedy for infringement.
14. Apart from the grounds of revocation provided for in article 42, the registration of a certification mark may be revoked
on the ground -
(a) that the proprietor has begun to carry on such a business in contravention of paragraph 4,
(b) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the
manner referred to in paragraph 5(1),
(c) that the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark,
(d) that an amendment of the regulations has been made so that the regulations -
(i) no longer comply with paragraph 6, or
(ii) are contrary to public policy or to accepted principles of morality,
(e) that the proprietor is no longer competent to certify the goods or services for which the mark is registered.
15. Apart from the grounds of invalidity provided for in article
43, the registration of a certification mark may be declared invalid
on the gr oun d th at th e mark was registered i n b r each o f th e provisions of paragraph 4, 5(1) or 7(1) of this Schedule.
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