Industrial Property Registration: Trade Mark & Patent Registration

Trade Mark & Patent Registration

Your Intellectual Property may well be your company's greatest asset. CSB Group handles all areas of Intellectual Property including Trade Marks, Patents and Designs at all levels including searches, applications, opposition matters, enforcement in the law Courts and final registration. We act for and through attorneys in major countries around the world. For advice and protection of your vital asset, in Malta, Europe and around the world, contact us.

General Information

Trade Marks

A Trade Mark protects the various means of identification by which a product, goods or services, are distinguished from other traders. Trade Marks are used to identify a particular brand or manufacturer and thereby provide protection for the goodwill and reputation a proprietor has established in his/her goods and services.

A Trade Mark can be any sign or a combination of signs, word/s including slogans, symbols, logos, or devices.

Choosing an original Trade Mark at an early stage is vital. Many Trade Marks adopted cannot be registered as these may conflict with other registrations. You should never use a Trade Mark without first asking us to effect a search. The registration process could be complex and sound advice can save time, and more importantly, money.

Patents

If you are a proprietor of an invention and you wish to benefit from that creativity, a patent gives you the right to prevent others from copying your invention. If anybody infringes your patent you are then at liberty to take legal action and seek damages.

Designs

In many new products, the novelty lies not in a new idea or principle but in their appearance. A Registered Design will give the proprietor a monopoly in the appearance of his design as applied to a particular article.

A design must, of course, be original and distinctive to be registrable. In practice, registration will only be refused if an almost identical design is found to be already registered, or the design is purely functional.

Trade Mark Registration in Malta

In recent court judgements, the court has contemplated that the first applicant for a Trade Mark could well be considered as the rightful owner. In other words, if an application of an international brand of products is filed by a third party, this third party, will stand a good chance of having his application accepted, with the consequence of him being considered owner of such brand for the territory of Malta.

It is therefore in the interest of Industrial Property Owners to apply for the registration of all their Trade Marks, Patents and Designs. We can act as agents and/or attorneys for various Industrial Property matters.

Services Provided

We accept enquires for registration of Industrial Property Matters and interested parties are invited to proceed with their enquiry by indicating Classe/s sought for registration. If you are not aware, a Trade Mark has to be classified under one, or more, of the 45 classes as listed. A sequence of trade marks can also be considered for registration.

Upon receipt of an assignment we will proceed by quoting for a search, application and final registration of the Industrial Property.

EU Trademarks (Community Trade Marks)

Registration of a Community (EU) Trade Mark

For an Industrial Property owner doing business in Europe, a CTM registration is a cost-effective way to obtain Trade Mark protection. A Community Trade Mark or CTM provides protection by means of a single registration covering the whole of the European Union. This can be enforced in any one of the fifteen member states. Registration of a Community Trade Mark is granted by the Office for the Harmonisation of the Internal Market (Trade Marks and Designs) located in Alicante, Spain.

The advantages of a Community (EU)Trade Mark

The unitary system: First of all, there are considerable economic advantages in the form of lower registration and renewal costs, as well as lower costs for trade mark administration. One trade mark registration covers the territory of 15 European states with approximately 375 million inhabitants.

The unitary system also leads to a number of administrative advantages. The management of a company's trade mark portfolio in Europe becomes much simpler, and trade mark monitoring, (e.g. trade mark searches and watches) will become easier in the future as the number of national trade mark registrations decline and the number of CTM registrations grow. Of course, there are also major legal advantages: A single trade mark can be registered, protected and enforced in the whole of the territory of the EU.

List of Trade Mark Classes

Class 1. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry: unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles; wicks.

Class 5. Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin; fungicides, herbicides.

Class 6. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware, pipes and tubes of metal; safes; goods of common metal not included in other classes, ores.

Class 7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.

Class 8. Hand tools and implements (hand operated); cutlery; side arms; razors.

Class 9. Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines; data processing equipment and computer; fire-extinguishing apparatus.

Class 10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials.

Class 11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12. Vehicles, apparatus for locomotion by land, air or water.

Class 13. Firearms; ammunition and projectiles; explosives; fireworks.

Class 14. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellry, precious stones, horological and chronometric instruments.

Class 15. Musical Instruments.

Class 16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.

Class 17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18. Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks, whips, harness and saddlery.

Class 19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20. Furniture, mirrors, picture frames; goods (not included in order classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21. Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making material; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23. Yarns and threads, for textile use.

Class 24. Textiles and textile goods, not included in other classes; bed and table covers.

Class 25. Clothing, footwear, headgear.

Class 26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28. Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29. Meat, fish, poultry and games; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats.

Class 30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery. Ices; honey, treacle, yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33. Alcoholic beverages (except beers).

Class 34. Tobacco; smokers' articles; matches.

Class 35. Advertising, business management; business administration; office functions.

Class 36. Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37. Building construction; repair; installation services.

Class 38. Telecommunications.

Class 39. Transport; packaging and storage of goods; travel management.

Class 40. Treatment of material.

Class 41. Education; providing of training; entertainment; sporting and cultural activities.

Class 42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43. Service for providing food and drink; temporary accommodation.

Class 44. Medical services, veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45. Personal and social services rendered by others to meet the needs of the individual; security services for the protection of property and individuals.

Malta Patent

The Position in Malta

The registration and protection of patents on a national level in Malta is regulated by the Patents Act. This Act is based on European guidelines and has updated Malta’s previous legislation that regulated this field. The salient features of this Act are as follows:

(a) Patentability of an Invention

An invention is patentable under Maltese law if it is novel, involves an inventive step and is industrially applicable. These requirements for the patentability of an invention can be summarized as follows:

(i) Novel

An invention is considered novel if is does not form part of the prior art (i.e. before filing, or when priority of the patent is claimed, such art 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). However, the definition of the term novel does not exclude the patentability of any substance or composition, comprised in the prior art for use in a method for the treatment of the human or animal body, by human surgery or therapy, provided that the use of such method is not comprised in the prior art itself.

(ii) An Inventive Step

An invention shall be considered to involve an inventive step if, having regard to the prior art, it is not obvious to a person skilled in the art.

(iii) Industrial Applicability

An invention is considered to be industrially applicable if it can be made or used in any kind of industry. The term industry is understood in its broadest sense and includes handicraft, agriculture and fishery.

(b) What may not be patented?

The law provides that the following cannot be patented:

• Discoveries, scientific theories and mathematical methods.
• Aesthetic creations.
• Schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers.
• Presentation of information.
• 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, however this does not apply to products, in particular substances or compositions, for use in any of these methods.
• An invention, the exploitation of which would be contrary to public order or morality.

(c) The Effects of Patents under the Maltese Patents Act

Where the patent concerns a product, the owner of the patent has the right to prevent third parties from performing the following acts without his authorization.

• The making of a product that incorporates the subject matter of the patent.
• The offering or placing on the market of a product that incorporates the subject matter of a patent, the use of such product, or the importation or stocking of such product for such offering or placing on the market or for such use.
• The inducing of third parties to perform any of the above acts.

Where the patent concerns a process, the owner of the patent has the right to prevent third parties from performing the following acts without his authorization.

• The use of a process that is the subject matter of the patent.
• With regard to any product obtained by the use of the patented process, the offering or placing on the market of a product that incorporates the subject matter of a patent, the use of such product, or the importation or stocking of such product for such offering or placing on the market or for such use, even where a patent cannot actually be obtained for the product.
• The inducing of third parties to perform any of the above acts.

However, the owner of a patent shall have no right to prevent third parties from performing the abovementioned acts in the following circumstances:

• Where the act of a third party concerns a product which has been put on the market either directly by the owner of the patent, or with his express consent, but only insofar as such an act is performed after that product has been so put on the market in Malta or in any territory as may be specified in the regulations.
• Where the act of a third party is done privately and for non-commercial purposes provided that it does not significantly prejudice the economic interests of the owner of the patent.
• Where the act of a third party consists of making or using such product for purely experimental purposes or for scientific research.
• Where the act of a third party consists of the extemporaneous preparation for individual cases, in a pharmacy or by a veterinary doctor, in accordance with a medical prescription or of acts concerning the medicine so prepared.
• Where the act of a third party is done solely for uses reasonably related to the development and submission of information required under any law of Malta or any other country that regulates the manufacture, construction, use or sale of any product.
• 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 of the patented invention, 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 such invention is used exclusively for the needs of the vessel.
• When the use of that patented invention is in the construction or operation of aircraft or land vehicles of countries who are members 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.

Furthermore, a patent also confers a right upon the owner, to prevent third parties from supplying, or offering to supply any other person with the means necessary for carrying out the invention. However, this does not apply where such means to carry out the invention are staple commercial products and the circumstances of the supply of such products do not constitute inducement to infringe the patent.

(d) Patent Protection Term under the Patents Act

The term of a patent shall be 20 years from the date of filing of the application. 20 years is the norm in most countries. The maintenance of a patent is subject to a maintenance fee, which is due after the third year and each year subsequently.

Application Procedure for a Maltese Patent

An application for a patent shall be made in duplicate and shall be accompanied by:

• A request for the grant of a patent
• A description of the invention
• One or more claims
• Any drawings referred to in the description or the claims
• An abstract of the invention

The application is then examined in order to determine whether the application is compliant with all requirements laid down in the Act. The applicant is given the opportunity to amend the application in order to comply with the requirements. If the applicant fails to make such amendments the Comptroller may refuse the application.

If the application as originally filed, or as amended, complies with all the formal requirements the Comptroller shall grant a patent pursuant to that application.

Registration of a European Patent

Patenting can be an expensive business. As with any investment, the risks and benefits need to be weighed up very carefully. A company with a carefully considered, effective intellectual property strategy will have a major sustainable advantage over its competitors. Patenting is advisable in any country where an invention can be expected to yield significant economic benefits. A European patent application begins to make sense when protection is to be sought in three or more European countries.

The advantages of a European Patent

A cost-effective and time-saving way to obtain sound protection in a range of European countries.

Every European patent undergoes a substantive examination and can be obtained for countries which otherwise operate only a registration system.

Unitary effects in the EPC contracting states: Term (normally up to 20 years from filing date), scope of protection, binding text, grounds for revocation

Intellectual property strategies vary greatly between industries and individual companies. An effective strategy will generally combine intellectual property rights with less formal arrangements such as agreements to preserve confidentiality. Various forms of protection can be chosen as needed to establish or reinforce a market position. To explore all the available options, it is best to seek professional advice.

For Consultancy Services, including Regulatory, Licensing and Business Consultancy, and Industrial Property Registration; kindly forward your query to consultancy@csbgroup.com