Malta Introduces The New Trademark Rules, 2021

The registration of trademarks in Malta is regulated by the Trademarks Act, Chapter 597 of the Laws of Malta (the “Act”), and all subsidiary legislation thereunder. Supplementing the Trademarks Act, the newly introduced Trademark Rules, 2021 (Legal Notice 50 of 2021), (the “Rules”), establish the rules applicable to all trademark applications filed in Malta, on or after the entry into force of the said rules and to pending applications for registration. The Rules repeal the provisions of the Trademarks (Provisions and Fees) Rules (Subsidiary Legislation 597.01), the Community Trademark Rules (Subsidiary Legislation 597.02) and the Trademark Search and Opposition Rules (Subsidiary Legislation 597.03).

We have provided below a synopsis of the most important rules introduced; however, we remain available to assist as may be necessary with respect to the interpretation of such Rules and their applicability.

The Rules are aimed at making provision for the proper implementation of the Act. Primarily, the Rules establish the manner in which a trademark application and a licence application, shall be populated and filed. The Rules are also made applicable to collective marks and certification marks, with special provision being made on the manner in which any such applications should be filed.

The Rules also introduce certain provisions in connection with the European Union Trademark Regulation - Regulation EU 2017/1001 the European Parliament and of the Council of 14 June 2017 on the European Union Trademark.

Applications for Trademark Registrations

According to the Rules, any application for the registration of a trademark must be filed either in Maltese or in English and shall contain the following information:

1.  a request for the trademark registration;
2. the applicant’s name and address;
3. a statement indicating the list of the applicable goods or services for which the trademark is to be registered;
4. a clear, precise, self-contained, easily accessible, intelligible, durable, and objective representation of the mark, enabling the Office and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor;
5. the representative or attorney’s name and address (where applicable);
6. a declaration claiming priority (where applicable); and
7. Additionally, specifications of the postal and electronic address where service of correspondence and communications should be sent by the Office.

Upon receipt of a trademark application, the Office would carry out ex officio a search under the national trademark database so as to identify identical or similar registrations or applications. Any such results would be notified to the applicant.

Naturally together with the submission of the application, the prescribed fee would need to be settled. In line with the applicable schedule of fees, the fee for an application to register a trademark for each class of goods or services selected is €115.00.

The Rules provide further detail on the manner in which each type of trademark would need to be represented and also the DPI applicable and the use of the RGB colour system. We may advise and guide clients further in this respect in order to ensure that any application filed duly contains an acceptable representation of the mark.

If the Office is of the opinion that the requirements for registration are met, they would publish the application on the official online journal. The online journal is updated with new applications on a weekly basis. Within a period of ninety (90) days following the publication of the trademark application, notices of opposition may be filed, on the basis of one or more earlier marks or other rights as further detailed in the Act. The Rules contain very specific provisions on the manner in which a notice of opposition must be filed. The Office would reject any notice of opposition filed following the expiry of the opposition period.

When filing a notice of opposition, a fee of €100, would need to be paid to the Office.

We may advise further on the grounds for opposition and on the manner in which such notices may be filed.

In instances where the Office finds that any such opposition is admissible, it would notify the applicant who, within a period of ninety (90) days from being notified, would have the option to:

1. withdraw the application;
2. restrict the goods and services covered by the application; or
3. submit a counterstatement against the opposition and any supporting evidence and reasoned statement on the grounds, the facts, and arguments with respect thereto.

Any decision of the Office would be communicated to both the applicant and the opposing party. An appeal may be filed before the Court of Appeal, within fifteen (15) days from the date of service of the Office’s decision.

Withdrawals, restrictions, transfers, amendments, and alterations to Trademark Registrations/Applications

Importantly the Rules make provision with respect to the manner in which trademark applications or rights may be withdrawn, restricted, transferred, amended, or altered.

An application for an alteration may only be filed if the mark includes the proprietor’s name and address, which application would need to include the registration number of the trademark, the details of the proprietor of the trademark, and a representation of the trademark as altered.

Naturally should there be grounds for objecting to the trademark alteration, one may file same within thirty (30) days from the date of publication of the alteration. Such objection should be accompanied by a statement indicating the grounds for the objection. As with any objection, in such cases, the proprietor would have the opportunity to file a counter-statement to the objection, which would need to be filed within thirty (30) days from where the proprietor is notified.

The Office would then decide on whether there are grounds for objection or otherwise and would communicate the decision to the concerned parties. An appeal to the said decision may be filed before the Court of Appeal.

An application for a restriction or amendment of a trademark would need to be filed in connection with the following:

1. A request to change the name or address of the proprietor of a registered trademark or a licensee; or
2. A request to restrict the goods or services covered by the registration; or
3. A request for the rectification of an error or omission in the register.

Rights in rem

The Act makes clear provision that a trademark may be given as security or be the subject of rights in rem. The new Rules provide further detail on the manner in which such rights in rem may be registered. Provided that the said right in rem is recognised in Malta, a request for the registration of a right in rem may be submitted by any of the following:

1. the proprietor of the trademark jointly with pledgee; or
2. the proprietor of the trademark; or
3. the pledgee.

Any such request would need to indicate the trademark number, the details of the proprietor and pledgee and sufficient evidence duly establishing the right in rem, which may come in the form of a declaration, contract, statement, or a res judicata judgment. We remain available to assist clients with respect to any such request and would be in a position to advise on the manner in which such evidence shall be furnished.

The registration of a right in rem may be subsequently cancelled or modified depending on the circumstances. The fee payable to the Office, to register a right in rem is of €55.

Levy of Execution

The Act also establishes that a trademark may be levied in execution, meaning that a creditor, in recovering any claim pursuant to a Court judgment, would be able to enforce any such rights against the proprietor’s (the debtor’s) rights arising from any trademark.

Provided that the levy of execution is duly recognised in Malta, an application for registration of a levy of execution must be accompanied by the final decision of the relevant Court, and may be filed by any of the following:

1. any interested person following a court or arbitral order; or
2. the trademark proprietor; or
3. the beneficiary.

The registration of a levy of execution may be subsequently cancelled or modified depending on the circumstances. The fee payable to the Office, to register a levy of execution is of €55.

Renewal of a Registration

The Rules further detail the manner in which renewals of registrations must be made. Importantly, any such renewal request must be filed within a period of six (6) months ending on the date of the expiration of the registration and must be accompanied by the renewal fee.

Should the trademark application not be renewed on time, it is possible to file the renewal request within six (6) months from the date of expiration of the last registration, provided that both the renewal fee and the additional fee for the late submission are duly paid. Should the proprietor fail to file such a request for renewal, the Comptroller would proceed to remove the trademark from the register. Following any such removal, should the proprietor have sufficient grounds, it is possible that the Office would accept to restore such a mark.

Any renewal or restoration of any trademark registration would be published on the official online journal showing the date of renewal or restoration. The Fee payable to the office for the renewal of the registration of a trademark is €90. The additional fee that would be applicable should the renewal be filed within six months after the expiration of the 10-year term is €35. The additional fee applicable for the restoration of a trademark, were removed due to non-payment of the relative renewal fee, is €70.

Searches

We may assist with conducting searches over the trademark registry and provide a legal opinion on the results as may be necessary. In addition, it is also possible to submit requests for the issuance of official searches by the Office, conducted over a mark or marks in one or more classes of goods and services. Any request filed in writing for the search of a mark would come against a fee of €10, for each class of goods or services over which the search is required.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”)

The Act and the Rules detail provisions that shall become applicable once the Madrid Protocol enters into force in Malta. As of October 12, 2020, the Madrid Protocol has 107 members. As at the date of writing, the current full list of contracting parties may be found using the following link: Madrid Agreement (Marks) (wipo.int). The list is continuously updated as more countries join the Madrid Protocol.

The aim of the Madrid protocol is to simplify, render cost effective, and increase the efficiency, of the manner in which the registration of trademarks takes place within the 122 contracting states. Rather than having to file a separate trademark application in each respective country where one would require protection, the Madrid Protocol provides for an international registry whereby trademark protection is obtained in up to 122 countries, through a single application for an international registration. This therefore provides a simpler and more cost-effective method of obtaining trademark protection: file one application, in one language, and pay one set of fees to protect your mark in several territories. 

It is also possible to carry out searches of existing trademarks through the Madrid Protocol database, prior to filing any trademark application, and this to determine whether there are other marks similar or identical and thereby make any necessary changes to the application to reduce the possibility of subsequently receiving an opposition from third-parties or otherwise having the trademark application rejected for any other reason. Our legal professionals would naturally be able to assist with the searches and the filing of any such trademark registrations.

Contact Us

CSB Group’s services in this field include searches, applications, and registrations of trademarks and designs within the Intellectual Property Office of Malta, the European Union Intellectual Property Office, and the World Intellectual Property Office; negotiating and drafting confidentiality, development, distribution, technology transfer, licensing, and joint venture agreements for both domestic and foreign entities, as well as advising on trademark protection.

Our team offers advice and protection of clients’ vital assets in Malta, Europe and globally.

About the Author

This article has been authored by Rachel Genovese, CSB Group Assistant Manager - Business & Regulated Industries. Should you require our assistance you are invited to please contact us on [email protected]