Trademark Registration in Malta

A Trademark protects the various means of identification by which a product, goods, or services are distinguished from other traders. Trademarks 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.

Trademarks

A Trademark can be any sign or a combination of signs, word/s including slogans, symbols, logos, or devices. Choosing an original Trademark at an early stage is vital; and helps ensure that your trademark is distinguishable from that of your competitors. A Trademark has to be classified under one, or more, of the 45 Nice classes. Trademarks can include any of the following types of marks:

1. Work Mark
2. Figurative Mark
3. Figurative Mark containing word elements
4. Shape Mark
5. Shape Mark containing word elements
6. Pattern Mark
7. Position Mark
8. Colour (single or combination) Mark
9. Sound Mark
10. Motion Mark
11. Hologram Mark
12. Multimedia Mark

CSB Group accepts enquiries for searches and for registrations of Trademarks, as the registration process could be complex and sound advice can save time, and more importantly, money.

A Trademark has to be classified under one or more of the 45 classes as listed. Interested parties are invited to proceed with their enquiry by indicating class/es sought for registration.

Trademark Registration in Malta

For over 50 years, Malta has sought to develop an environment receptive to thought and innovation, which may potentially be very valuable, by promoting the protection of Intellectual Property.

Malta is a single-class jurisdiction, and unlike multiple-classed jurisdictions, applicants who wish to apply for several Trademark classes must apply for each class by way of a separate application.

Maltese legislation is harmonised with all existing European Union legislation in this regard and seeks to ensure protection to Intellectual Property (IP) which is both fair to those using products protected by IP and adequately protecting and remunerating the creators and owners of such Intellectual Property. The Trademarks Act, Chapter 597 of the Laws of Malta supplemented by the new Trademark Rules, 2021 (Legal Notice 50 of 2021), regulate the manner in which Trademarks may be registered in Malta.

The validity period of a Trademark registered with the Malta IPO is for a period of ten (10) years, which start running from the date of registration, and can be renewed for further periods of ten (10) years upon payment of the renewal fee of EUR 90.

The Process of Trademark Registration in Malta

Securing your brand's identity in Malta involves a vital step: trademark registration. Beginning with a thorough trademark search to ensure uniqueness, the process proceeds with the submission of an application to Malta's Commerce Department - Industrial Property Registrations Directorate,  including applicant details and specifics of the mark. Following examination for compliance and potential conflicts, approved trademarks are published in the Official Gazette, allowing for opposition. Once past this stage, the trademark is registered, granting exclusive rights and protection against infringement. This streamlined process empowers businesses to safeguard their brands and thrive in Malta's dynamic market.

We may assist clients with the filing of an application for the registration of a Trademark. For the purposes of proceeding with the said application we would require, inter alia, the following information:

1. Details of the Applicant;
2. An indication of the Nice Classes and the goods or services in relation to which the application is sought;
3. A clear representation of the mark;
4. An indication as to whether priority will be claimed (where the applicant wishes to take advantage of an earlier application);
5. An indication of the colour or colours being claimed in cases where the applicant wishes to claim colour as a distinctive feature of the mark.

With regards to the technical side of Malta trademark protection procedures, one should note that:

• a separate trademark application must be filed in respect of each separate class of goods or services as multi class applications are not acceptable
• Maltese trademark law also extends protection to well-known marks in Malta eligible for protection in terms of the Paris Convention
• Malta is not a signatory to the Nice Classification of Goods and Services, however even though not a Party to the Nice Agreement, we still follow the Nice Classification as a non-participant country and at the moment, we are following the 10th Edition of this Agreement. This 10th Edition presents  a list of 45 classes (34 classes of goods and 11 classes of services)
• there are various absolute and relative grounds for refusal of the registration of a TM and a registration may also be issued with territorial or specific limitations as to the use of the mark
• a trademark application may claim priority over a previously registered trademark if such trademark was duly applied for in any country or territory which is a member of the World Trade Organization or a party to the Paris Convention for the Protection of Industrial Property  and if the Malta application is done within a period of six months from the date of filing of the first application
•  a Malta Trademark is registered for a period of ten (10) years from the date of filing and may be renewed for further periods of ten (10) years.

Once a trademark application has been duly filed and the formalities are fulfilled, the Malta Intellectual Property Office (IPO) would proceed to check the application for the substantive requirements – the trademark must be graphically properly represented and must be distinctive.

The Process of Trademark Registration in Malta

Typically, the entire process of trademark registration in Malta takes approximately 6 to 12 months, depending on various factors such as the complexity of the application and any potential opposition encountered.

Effect of Mergers on Trademark Ownership

Mergers, while often pivotal for business growth and expansion, can significantly impact trademark ownership and protection strategies. When two companies merge, their respective trademarks may undergo a transformation in ownership. This change necessitates a comprehensive review of existing trademark portfolios to ensure continuity and compliance with legal requirements. Depending on the specifics of the merger, trademarks may be transferred outright to the surviving entity or undergo a rebranding process to align with the newly formed entity's identity. It's crucial for businesses undergoing mergers to conduct thorough due diligence on trademark ownership rights, potential conflicts, and any necessary legal formalities to safeguard their brand assets. By proactively addressing these considerations, companies can navigate the complexities of mergers while preserving the integrity and value of their trademarks.

International Trademark Registration in the European Union

A European Union Trademark (EUTM) is any Trademark which is pending registration or has been registered in the European Union as a whole (rather than on a national level, as mentioned above, within the European Union). The Regulation it befalls is that of (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trademark, followed by updates (EU) 2018/625 and (EU) 2018/626 of year 2018.

Owner's Protection and Rights

The registration of a trademark grants its owner exclusive rights, such that third parties would not be allowed to use an identical or similar sign to the Trademark, in relation to goods or services which are identical with or similar to those for which it is registered, possibly leading to the confusion on the part of the public, including the likelihood of association with the protected Trademark.

Protection is also afforded when a sign identical with or similar to a registered Trademark is used in relation to goods or services which are differing from 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.

How can CSB Group help you register your Trademark in Malta?

In an increasing fast paced world, Intellectual Property is an important asset to hold and thus it is important to make careful considerations to have such asset protected. We are engaged by our clients at all levels to assist with providing them suitable solutions in the protection of their brand registration.

CSB Group’s setup is geared to handle all areas of intellectual property, be it Trademarks, Patents and Designs or Copyright; locally, European-Union wide and internationally.

CSB Group assists clients with searches, applications, international trademark registrations and registrations of trademarks within the Intellectual Property Office of Malta, the European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Office (WIPO). We also assist with any opposition proceedings that clients may face or otherwise any withdrawals, restrictions, transfers, amendments, or alterations that proprietors may wish to make to their trademark registrations. Should proprietors wish to subject a trademark to a right in rem or have a trademark levied in execution, we may assist and guide them with respect to the said process from start to finish.

Reach out to us at [email protected] where one of our consultants will assist you further.

FAQ: What are the Nice Classes?

There is a total of 34 Classes of Goods, and 11 total Classes of Services for an overall total of 45 Trademark Classes according to the Nice Classification of Trademark Goods and Services 11th Edition.

If the applicant is unsure which Class their Trademark may fall under, it is highly suggested that they contact our representatives at [email protected] where an expert will be able to guide them further.

FAQ: For how long is the Trademark valid?

Trademarks are registered for ten (10) years from the date of registration. The Trademark may be renewed for further ten (10) years upon the applicant’s request, though this must not be done later than six months prior to the expiry of the Trademark. Should a trademark not be renewed, it would be removed from the Register by the Comptroller.

FAQ: Where can I register a Trademark?

Trademarks can be registered at a national and international level.

If the Trademark is to be registered in the European Union, then the EUIPO is the governing body where the application must be filed.

If the Trademark is to be registered at a national level, then each respective national authority would be the governing body; in Malta, the governing body would be the Commerce Department.

For further assistance on the above, please contact our consultants at [email protected] in order to be guided through the above processes by an expert.

FAQ: What is the difference between Trademark and Patent?

A Trademark is defined as a “sign capable of being represented graphically, and of distinguishing goods and services of one undertaking from those of another. A Trademark may consist of words (including personal names), figurative elements, letters, numerals or the shape of goods or their packaging”.

A Patent, on the other hand, is “an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem”.

So, whereas the former refers to a graphic sign that can be attributable to a brand, the latter is a technical explanation of the mechanics and inner and outer workings of an invention.