The National Trademark Search and Opposition Rules

On the 26^th of October 2018, through Subsidiary Legislation 416.03, the Trademark Search and Opposition Rules came into effect in Malta following a consultation and analysis process which was carried out by the Industrial Property Registration Office, which forms part of the Commerce Department, back in June 2018.

Subsidiary Legislation 416.03 was brought about on the basis that each national trademark application received at Industrial Property Registration Office (Commerce Department) undergoes a formalities check, an assessment of absolute grounds of register the trademark and relative grounds examination.

Relative grounds examination involves verifying whether a trademark, for which an application for registration has been filed, is in conflict with any other local trademarks or EU trademarks registered with the European Union Intellectual Property Office (EUIPO). Unless consent to the registration of the later mark is obtained from the owner of the earlier trademark,  subject to certain other conditions, a trademark shall not be registered if it is  identical or similar to an earlier trademark, be it on a local or European level,  and is to be registered in respect of identical or similar goods or services for which the earlier trademark is protected.

Considering the size of the trademark registers in Malta and the EUIPO, which is ever increasing, a relative search for a trademark application in Malta may yield more than 500 results, each of which will need to be checked by the examiner appointed to the registration of that particular trademark to determine whether the application in question conflicts with any one of the results which have been yielded through the search carried out. The majority of the results obtained through the searches conducted are usually of trademarks registered within the EUIPO. Nevertheless, the examiner is required to compare and make a decision on each result from the trademark search prior to effecting a final decision on whether a trademark may be registered in Malta or otherwise, which procedure thus, takes time.

In view of the above, Subsidiary Legislation 416.03 now provides for the following:

A trademark application will be based on the searches of the national trademark database and not of the EUIPO database. Once the searches are affected, the applicant of the trademark will be notified should an earlier mark be existent. It is then the decision of the applicant whether to proceed with the application or withdraw the application in such instance.

Should the applicant proceed with the registration of the trademark, the owners of the earlier marks will be notified of this application and advised that they may submit an opposition to oppose the registration of the trademark application within 60 days of its publication. Interested third parties will also have the ability to submit an opposition.

Once an opposition is received by the national office, the trademark applicant is notified of such opposition, during which time, the trademark applicant may either withdraw the application, restrict the goods/services it requires for registration purposes, reach an amicable agreement with the opponent or submit a counter-statement to the opposition received. Should the applicant proceed with submitting a counter-statement to the opposition, such counter-statement is sent to the opponent and if the opponent wishes to maintain the opposition, the national office is to be informed accordingly. At this stage, it is then the national office which will decide whether to accept or refuse the opposition.

Through such initiative, businesses applying to register a trademark in Malta will now be on an equal footing with those businesses applying for an EU trademark, whereby businesses seeking registration of a trademark in Malta, will not have their requests turned down on the basis of EU registered trademarks whose owners may have no intention of ever using such registered trademark in Malta or which trademarks are now inactive.

The trademark registration procedure in Malta will also be expedited due to the fact that the examiners will not have to conduct relative search examinations except for those cases where a conflict is claimed by the owner of an earlier mark in the course of opposition proceedings.