The Act applies to every trademark in respect of goods and services that are the subject of registration or of an application for registration in Malta as an individual trademark, a certification mark or a collective mark or of an international registration having effect in Malta.
The previous Trademarks Act tied the scope of a trademark to a ‘graphical representation’ requirement; however, this has been done away with in the new Act, thereby widening the scope to include the registration of non-traditional Maltese trademarks such as colours and sounds. Service marks, collective marks and certification marks are also covered by the Act.
A registered trademark is defined as a property right obtained through the registration of the trademark under the Act and may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
- distinguishing the goods or services of one undertaking from those of other undertakings; and
- being represented on the register of trademarks in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
The Act stipulates that the following shall not be registered as trademarks or, if already registered, shall be liable to be declared invalid (absolute grounds for refusal or invalidity):
i. signs that cannot constitute a trademark;
ii. trademarks that are devoid of any distinctive character;
iii. trademarks that consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
iv. trademarks that consist exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
v. signs that consist exclusively of:
- the shape, or another characteristic, that results from the nature or the goods themselves;
- the shape, or another characteristic, of the goods that is necessary to obtain a technical result; or
- the shape, or another characteristic, which gives substantial value to the goods; and
vi. trademarks that are contrary to public policy or to accepted principles of morality;
vii. trademarks that are of a nature as to deceive the public or are likely to deceive the public, such as to the nature, quality or geographical origin of the goods or services;
viii. trademarks that have not been authorised by the competent authorities and are to be refused or invalidated pursuant to article 6-ter of the Paris Convention;
ix. trademarks that are excluded from registration pursuant to Paris Union legislation, the Laws of Malta or international agreements to which the Paris Union or Malta is a party, providing protection of designations of origin and geographical indications;
xi. trademarks that are excluded from registration pursuant to Paris Union legislation or international agreements to which the Paris Union is a party, providing for protection of traditional terms for wine;
xii. trademarks that are excluded from registration pursuant to Paris Union legislation or international agreements to which the Paris Union is a party, providing for protection of traditional specialities guaranteed; or
xiii. trademarks that consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Paris Union legislation or the Laws of Malta, or international agreements to which the Paris Union or Malta is a party, providing protection for plant variety rights and that are in respect of plant varieties of the same or closely related species.
A trademark shall not be refused registration in accordance with points 2, 3 or 4 above, if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it in Malta. Similarly, a trademark shall not be declared invalid for the same reasons outlined above if, before the date of action for a declaration of invalidity, following the use that has been made of it, it has acquired a distinctive character as a result of the use made of it in Malta.
In addition, a trademark will be liable to be declared invalid where the application for registration of the trademark was made in bad faith by the applicant.
Moreover, a trademark shall not be registered or, if registered, will be liable to be declared invalid where and to the extent that:
- its use is prohibited pursuant to any law other than trademark law of Malta or of the Paris Union;
- it includes a sign of high symbolic value, in particular a religious symbol; or
- it includes badges, emblems and escutcheons other than those covered by article 6-ter of the Paris Convention and that are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the laws of Malta.
A trademark that consists of or contains any of the following shall not be registered unless it appears to the Comptroller that consent has been given by or on behalf of the President or the Archbishop of Malta; provided that the Minister may make regulations that extend the applicability of this provision to religions other than the Roman Catholic Apostolic Religion:
- the arms, or any of the principal armorial bearings of the arms, appertaining to the President or the Roman Catholic Archbishop of Malta or any insignia or device so nearly resembling such arms or any such armorial bearing as to be likely to be mistaken for them or it;
- a representation of the presidential or episcopal flags;
- a representation of the President or the Archbishop, or any colourful imitation thereof; or
- words, letters or devices likely to lead persons to think that the applicant either has or recently has had presidential or episcopal patronage or authorisation.
A trademark that consists of a representation of the national flag of Malta shall not be registered. Furthermore, a trademark that contains a representation of the national flag of Malta shall not be registered if it appears to the Comptroller that the use of the trademark would be misleading or grossly offensive.
A trademark that consists of or contains the flag of a Paris Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Comptroller that use of the flag in the manner proposed is permitted without such authorisation. In a similar manner, a trademark that consists of or contains the armorial bearing of any other state emblem of a country that is protected under the Paris Convention shall not be registered without the authorisation of the competent authorities of that country.
A trademark that consists of or contains an official sign or hallmark indicating control and warranty adopted by a Paris Convention country shall not, where the sign or hall mark is protected under the Paris Convention, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.
With respect to armorial bearings, flags or other emblems, and the names and their abbreviations of international intergovernmental organisations of which one or more Paris Convention countries are members, a trademark that consists of or contains of any emblem, abbreviation or name that is protected under the Paris Convention, the Act provides that these shall not be registered without the authorisation of the international organisation concerned, unless it appears to the Comptroller that such use is not such that it suggests to the public that a connection exists between the organisation and the trademark; or is not likely to mislead the public as to the existence of a connection between the user and the organisation.
Further to the above, a trademark may not be registered if it falls foul of the relative grounds for refusal or invalidity, as shall be set out hereunder:
- it is identical with an earlier trademark, and the goods or services for which the trademark is applied for or is registered are identical with the goods or services for which the earlier trademark is protected;
- because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public, including the likelihood of association by the public with the earlier trademark;
- the mark is identical with, or similar to, an earlier trademark, regardless of whether the goods or services for which the trademark is applied are identical with, similar or not similar to those for which the earlier trademark is protected where the earlier mark has a reputation in Malta or, in the European Union in the case of an EU trademark, has a reputation in the Paris Union and the use of such later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark;
- the agent or representative of the proprietor of the trademark applies for registration thereof in his or her own name without the proprietor’s authorisation, unless the agent or representative justifies his action;
- an application for a designation of origin or a geographical indication had already been submitted in accordance with Paris Union legislation or the laws of Malta prior to the date of application for registration of the trademark or the date of the priority claimed for the application, subject to its subsequent registration;
- the above-mentioned designation of origin or geographical indication confers the right to prohibit use of a subsequent trademark on the person authorised under the relevant law to exercise the rights arising therefrom;
- the rights to a non-registered trademark or to another sign used in the course of trade, were acquired prior to the date of application for registration of the subsequent trademark, or the date of priority claimed for registration of the subsequent trademark, and that non-registered trademark or other sign confers on its proprietor the right to prohibit the use of the subsequent trademark; or
- to the extent that the use of the trademark may be prohibited by virtue of an earlier right, subject to some exceptions, and protected by means of copyright, registered designs or other rights that the Minister may prescribe by regulation.
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