What are examples of trademark and what can be trademarked?

A trademark is a type of intellectual property consisting of a recognisable sign, design, or expression which identifies products or services of a particular source from those of others. Chapter 416 of the Laws of Malta defines a trademark as being any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark can consist of a phrase, word, invention, symbol, or colour amongst other forms. It is important to note, however, that a trademark can only be obtained on an object or notion which is used commercially.  

What are the main characteristics of a trademark?

The most important factor to keep in mind when registering a symbol for a trademark, is that it should be distinctive enough for consumers to be able to distinguish it from others in the market. Therefore, an ideal trademark should be made in such a manner that it can be distinctive from other trademarks of the same class of goods and services. Distinctiveness could be natural or acquired through use. The trademark can only be suggestive of the quality of the products but cannot be descriptive.

What cannot be trademarked?

There are a number of grounds of refusal for the registration of a trademark.  For example, trademarks which are devoid of any distinctive character will not be registered. Also, trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service may also be refused.

Why is it important to obtain a trademark?

The main purpose of a trademark is to prevent unfair competition between companies that use consumer confusion to get more business. For example, if an independent diner used a golden, arched "M" as its logo, it could confuse customers who think the establishment is a McDonald's. Causing this type of confusion is against trademark law.

The purpose of trademark law is twofold:

• A trademark helps customers distinguish between products
• A trademark protects the owner's investment and reputation

In many respects, trademark law is an amalgam of notions of intellectual property law and consumer protection, intended to protect the rights and interests both of the owner of the mark and those of consumers. Such rights will put a proprietor’s mind at rest as they ensure that their work will not be used by third-parties.

Applying for a trademark

Since Malta is a European Member State, the country offers two different options for those wishing to trademark their brand. The first option involves registering for a national/domestic trademark in Malta with the Malta Intellectual Property Office. Once registered, a trader will know that his products, once placed on the market, clearly identify him as the source of the products. This would also mean that good quality items on the market carrying a trademark will be more competitive as consumers will naturally become more inclined to seek out that specific trademark as a brand rather than similar generic products. The second route involves obtaining a European Union Trademark, which is also commonly referred to as a “Community Trademark”. In principle, a community trademark confers the same rights as a national trademark. A community trademark however, once registered, extends the protection across the EU. A Community Trademark must be registered with the European Intellectual Property Office (the “EUIPO”). Thus, a successful application made to this office will result in a trade mark award that will be valid throughout the member states.

A Malta Trademark extends protection to well-known marks in Malta eligible for protection, according to the Paris Convention.  Malta follows the Nice Classification system administered by the World Intellectual Property Organization which is applied in most of the world’s countries. Therefore, under Maltese law, 45 categories of trademarks exist; 34 of these relate to categories of goods and 11 to services. A Malta-registered trademark guarantees protection for a period of 10 years and may be renewed thereafter.

CSB Group will be able to provide assistance to those wishing to protect their business through a Malta Trademark or European Trademark by assisting them throughout the application process. Contact us to book a meeting with one of our representatives.

About the Author

This article has been authored by Dr Simon Mangion, Regulatory & Business Advisor.