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In many new products, the novelty lies not in a new idea or principle but in their appearance. A registered design gives the proprietor added protection in the appearance of his design as applied to a particular article. It should also be noted that an unregistered design may also be eligible for copyright protection.
Registering a Design
The more successful your design, the more important it is that you register your design to ensure proper design protection and a stronger legal barrier. This can become your most valuable business asset and like any other property, this can be bought, sold, transferred, or licenced.
Benefits of Registering a Design
Design protection is regulated under the Patents and Designs Act, Chapter 417 of the laws of Malta (the “Act”).
A design can be protected by a design right to the extent that it is new and has individual character. A design will be considered new if no identical design has been made available to the public before the date of filing of the application for registration or if priority is claimed, the date of priority. However, designs whose features differ only in immaterial details are also deemed to be identical. A design is considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any other design.
In practice, registration will generally only be refused if:
- an almost identical design is found to be registered on a prior date;
- the design is purely functional; or
- the design is found to be contrary to public policy or to accepted principles of morality.
The specific criteria upon which a registration may be refused are laid down by law. Upon registration, a design is protected by what is known as a “design right” for a period of five years from the date of filing of the application and confers on its holder the exclusive right to use that design and to prevent any third party from using it without the necessary consent, this is usually granted in the form of a commercial licence. Such use includes the making, offering, putting on the market, importation, export or use of a product in which the design is incorporated or to which it is applied, or stocking such a product for such purposes.
The term of protection for the design may be further renewed for one or more periods of five years, for up to a total of twenty-five years from the date of filing.
It is important to note that the Act clearly states that design protection registered at law, is without prejudice to the eligibility for design copyright protection under the Copyright Act, as from the date when the design is created or fixed in any form.
Our legal professionals can assist clients with any such design protection registrations and renewals. In deciding to register a design, it is also important for holders to conduct searches in order to determine whether other competitors have already registered a similar design. In this respect, our legal professionals may also assist clients in conducting such searches and providing the necessary guidance to ensure proper design protection.
Malta Registered Designs
An application for registration of a design in Malta must be filed with the Comptroller in the Maltese or English language and must contain the following:
- a request for registration of a design;
- the name and address of the applicant;
- the design which is the subject of the application including a description thereof;
- the name and address of the agent or representative, in cases where one has been appointed; and
- a declaration claiming priority in cases where the applicant wishes to take advantage of an earlier application.
The Comptroller will examine whether an application for registration of a design satisfies the requirements of the law, and if it appears to the Comptroller that the requirements for registration are not met, he will inform the applicant and give him an opportunity to make representations or to amend the application within such period as the Comptroller may specify. 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 will refuse the application. If it appears to the Comptroller that the requirements for registration are met, he will accept the application as eligible for registration.
The fee applicable in connection with such an application is of €46.59. The process for a design registration would normally take up to three (3) months to be concluded. Once a registration of a design is duly made, a certificate in this respect would be issued and a publication would be made in the IP Online Journal.
The protection afforded to designs through the Act is without prejudice to any other rights that may arise in connection with unregistered designs, trademarks, distinctive signs, patents, utility models, typefaces, civil liability, or unfair competition.
Registered European Union Design
It is also possible for design owners to apply for European Union design protection which covers all the European Union member states, and consequently affords the following benefits:
- a single application;
- a single language of procedure;
- a single administrative centre;
- a single file to be managed.
Through the Hague System for international registrations, it is also possible to obtain design protection in over fifty-five (55) territories through a single application. International applications for design protection may be filed with the International Bureau of the World Intellectual Property Organization (WIPO) office in Geneva.
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