Registrable Trademarks

To be registrable in Malta, a trademark must be a sign:

(i) capable of being represented graphically; and

(ii) capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trademark may consist of words (including also personal names), figurative elements, letters, numerals, or the shape of goods or their packaging.

Requirements for application for registration of a trademark

An application for registration of a trademark must be made to the Comptroller of Industrial Property, who examines the application asserting whether all requirements for registration of such application are met. If the applicant wishes to apply for a trademark in respect of different goods and services he must make a different application for each category.

An application for the registration of a trademark must be filed on the appropriate form and should contain:

(a) a request for registration of a trademark;

(b) the name and address of the applicant;

(c) a statement of the goods or services in relation to which it is sought to register the trademark;

(d) a representation of the mark;

(e) the name and address of the representative or attorney, in cases where one has been appointed;

(f) a declaration claiming priority in cases where the applicant wishes to take advantage of an earlier application;

(g) an indication that the trademark is being used by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be used;

(h) a statement containing the name or names of the colour or colours being claimed in cases where the applicant wishes to claim colour as a distinctive feature of the mark; and

(i) the prescribed fee.

Examination of the application

A sign, which does not fall within the definition of trademarks, shall not be registered as a trademark. Moreover, subject to an appeal which may be lodged with the Maltese Court of Appeal the Comptroller of Industrial Property may, on certain specific grounds listed down in the law (such as on the ground that it is contrary to public policy or morality), refuse to register a trademark.

Terms of Trademarks

The duration of registration of a trademark is ten years, which start running from the date of registration.

The trademark may be renewed for further periods of ten years at the request of the proprietor, after the payment of the renewal fee within not more than six months before the date of expiry.

The renewal takes effect from the expiry of the previous registration. If the registration of a trademark is not renewed, then the Comptroller of Industrial Property removes the trademark from the register.

Rights conferred by Trademarks

When a trademark is registered, the Comptroller of Industrial Property publishes the registration and issues a certificate of registration to the applicant.

The proprietor of a registered trademark has exclusive rights in the trademark. Such rights are infringed by such use of the trademark in Malta when:

– the use in the course of trade is made of a sign which is identical with or similar to the trademark in relation to goods or services which are identical with or similar to those for which it is registered and there is the likelihood of confusion on the part of the public, including the likelihood of association with the trademark;

– the use in the course of trade is made of a sign which is identical with or similar to a trademark in relation to goods or services which are not similar to those for which the trademark is registered, but the trademark has a reputation in Malta and such use takes unfair advantage of or is detrimental to the distinctive character or the repute of the trademark.