Trademark Registration in Malta
Trademark in Malta refers to any sign that distinguishes the goods and services of one business entity from those of others and is also capable of being represented graphically. It consists of letters, words (including personal names), numerals, figurative elements or the shape of the packaging of goods. After obtaining a trademark registration in Malta, as a proprietor, you acquire the property right over the mark, along with specific remedies.
Rights conferred after trademark registration in Malta
The proprietor of the trademark has exclusive rights to the trademark in Malta. These rights are infringed in Malta when:
- A mark is used in the course of trade which is similar or identical to the trademark in relation to the services and goods which is identical or similar to those of an existing registered trademark, and there is a likelihood of confusion on the part of the public or the likelihood of association with the
- A mark is used in the course of trade which is similar or identical to the trademark in relation to the services and goods which is NOT identical or similar to those of an existing registered trademark, but the trademark has a reputation in Malta, and the usage of trademark is detrimental to the reputeor taking unfair advantage of the distinctive character of the trademark.
Authority for trademark registration in Malta
The office of Industrial Property Registrations Directorate or commonly known as Malta IPRD within the Department of Commerce, is the statutory authority in Malta that is responsible for trademark registration. The trademark registration is governed by the Trademarks Act.
Absolute Grounds for refusal of Registration of trademark
After checking the formalities of the application, Malta IPO checks for the substantive requirements in the application. Any mark that does not fall within the definition of trademark is not registered as a trademark.
Refusal of trademark can be made on the following grounds:
- If the mark lacks distinctive character;
- If the mark is made up of signs or indications which, in regular trade, represent the characteristics of the goods such as its kind, value, intended value, time of production of goods or rendering of services, geographical origin or represent other such characteristics of the goods;
- If the mark comprises only of signs or indications that have become customary in the current language or bona fide established practices of trade.
Notwithstanding, with the above three grounds of refusal, a mark can be registered as a trademark if you are able to prove that before the date of application, the mark had acquired a distinctive character as a result of use in Malta.
A trademark can also be refused registration if it consists exclusively of the following:
- The shape of goods which results from the nature of goods themselves or the shape of goods; and
- The shape that gives substantial value to the goods
The other absolute grounds for refusal of a trademark are:
- If the mark is against public morality or public policy;
- If the mark is likely to deceive the public regarding the nature, geographical origin or quality of the goods or services;
- If the Maltese law prohibits the usage of such a trademark;
- If the mark has been made in bad faith; and
- If the mark contains any arms, signs, or armorial bearings on the flags, as listed in Article 5.
Relative Grounds for refusal of Registration of trademark
Refusal of registration of a trademark can also be made if:
- The mark is similar or identical to an already registered trademark, and the services and goods for which the trademark has been applied are similar or identical to the services and goods for which the earlier trademark has already been protected.
- The mark is similar or identical to an already registered trademark, but the services and goods are not similar to those in the earlier trademark, yet the registration would take unfair advantage of the reputation or distinctive character of the earlier trademark;
- The use of the mark in Malta is restricted by virtue of any law protecting an unregistered trademark or any other sign which is normally used in the normal course of trade or by virtue of an earlier right.
However, the application for the registration of a trademark would not be refused if the proprietor of the earlier registered trademarkor right holder gives his/her consent for the registration of the application.
Step-by-step process of filing a Trademark application in Malta
Following is the step-by-step process to file the application for Trademark Registration in Malta:
- Making a Pre-application Search Request
- Making an application to the National Office
- Examination of the application
- Registration of the trademark
- Receiving the Certificate of Registration
- Making a Pre-application Search Request-
Before making the application for trademark registration, it is advised by the trademark experts at Enterslice, that you make a pre-application search request to search the National Trademark Database to check whether a similar or identical trademark already exists or not.
The search request must include the following:
- The words you wish that your search should be conducted on;
- The label/device/logo;
- The classes or class you want the search should be carried out in.
The pre-application search request can be made either via post or by email. A fee is also prescribed for this service which amounts to €10 per word and per class or per logo and per class.
There is another way to make search for a similar trademark i.e. searching the National Trademark Register where no fee is charged.
- Making an application to the National Office -
The application for trademark registration can be made online to the Industrial Property Registrations Directorate through online mode. While making an application, you need to demonstrate that your mark is distinctive on both relative and absolute grounds.
The timeline for filing a fresh trademark application is as follows:
- Submission of the application.
- Thereafter, vetting of the application takes place, which takes about four days’ time.
- Then the office makes an assessment of the application which further takes a period of 5 months.
- After the assessment of the application, the approval of the application begins which takes about 1 day.
- Finally, the delivery of service takes place which takes another day to be fulfilled.
The applicable fee for the filing of a trademark application is €115 per class and the validity of the trademark extends for a period of ten years from the date of application.
- Examination of the application -
Generally, it takes about 8 months’ time from the date of making the application to register a trademark in Malta. The examination process comprises checking the correctness of the particulars of the application form. Thereafter, the creation of the file for the trademark and the process of inputting and scanning in the National Trademark Database begins. Finally, absolute and relative examination of the trademark takes place with regard to the National Trademark Legislation.
The payment for the application can be made either directly at the office by cash or cheque, via post, online submission or bank transfers.
- Registration of the trademark-
If all the requirements of the application have been met in your application, the Maltese IPO registers your Trademark. In case the IPO finds any deficiencies in your application, or you do not meet the requirements, you will be given an opportunity to make amendments to the application to comply with the requirements. The communication is made by IPO in this regard.
- Receiving the Certificate of Registration-
If the application as filed originally or amended complies with the requirements of the legislation, Malta IPO registers your trademark. After registration of your trademark, it gets published and a certificate of registration is issued to you signifying that you are the rightful holder of the trademark.
Trademark registration in the EU:
Apart from registration of your trademark in Malta, there is another option that is available for you as an applicant, i.e. trademark registration in the EU. In case you are doing business in more than one EU country, trademark registration in the EU offers you the best choice as it offers protection across the EU. The EU trademarks are registered at the EU Intellectual Property Office (EUIPO). An EU trademark offers protection to the owner for all the EU member states just by one single registration. An interesting feature of the EU Tm is that this registration is an all-or-nothing deal which means that either you will get protection in all EU member states or you will not get the registration at all.
The fee for making an EU trademark application is €850 if made via online mode and €1000 if the same is made in paper format. The trademark experts at Enterslice suggest that you should opt for the online registration process as it is much more efficient and accurate.
There are a couple of benefits to making a trademark registration in the EU. They are as follows:
- A single EU trademark registration, made online, in a single language, gives you protection across all the member EU states;
- It grants its owner an exclusive right to use, license, sell etc., across all the current EU members and the future Member States of the EU at a reasonable cost.
- You are given the right to enforce your claim in a market of 500 million consumers.
What should aTrademark registration application in Malta contain?
All trade mark applications made to the Malta IPO must contain the following:
- A request to register your trademark;
- The name and address of the applicant;
- A statement of the services and goods with respect to which the trademark registration is sought;
- A graphical representation of the trademark;
- In case an attorney or representative has been appointed for filing the application, the name and address of such attorney or representative must be attached too;
- A declaration can also be attached claiming priority in cases where you want to take the benefit of an earlier application;
- An indication has to be made by you as an applicant that the trademark is being used by you or with your consent, in relation to those services or goods, or that you have a bona fide intention to use the trademark;
- The prescribed fee; and
- A statement spelling the name or names of the colours to be used in case where you wish to claim the colour as a distinctive feature of the trademark.
Licensing of Registered Trademark in Malta
The license to use the trademark can be both limited and general and it can be both exclusive and non-exclusive. Unless the license provides otherwise, the license is binding on the successor in title to the grantor’s interest. Depending on the terms of the agreement, the licensor can grant the licensee the right to grant a sub-license.
Transmission of a trademark in Malta
Like any other personal asset or moveable property, a registered trademark can be transferred by way of testamentary disposition, assignment or by operation of law.