New Trademarks Act

Posted on: 09 May 2019

Category: Articles, News

An act to repeal and replace the Trademarks Act, Chapter 416 of the Laws of Malta has been published and shall soon come into force. The new Trademarks Act, Chapter 596 of the Laws of Malta ( the “Act”) transposes Directive (EU) 2015/2436 into national law – an attempt to approximate the laws of Member States in relation to trademarks.

New types of trademarks have been included in the Act. Apart from word marks, logos, shape marks, three-dimensional trademarks and collective and certification marks, the Act now also allows the following types of marks to be registered:

  • Position;
  • Pattern;
  • Colour;
  • Sound;
  • Motion;
  • Multimedia; and
  • Holograms

Individuals or companies will be able to protect these new types of trademarks in Malta once the New Act comes into force.

The grounds of refusal sections have also been amended in order to refer to European and international trademarks. The functionality exclusion found in the previous law was expanded upon in the new Act. This exclusion means that a trademark may not be registered if it is deemed to be ‘functional’ by virtue of its shape or nature or is necessary to achieve a technical result or adds value to a product. The Act now refers to “the shape, or another characteristic” which therefore means that any feature which could be deemed to be functional, can now be used as an objection to the registration of a trademark.

In anticipation of the new Act, the Maltese Commerce Department has streamlined the trademark registration process. The new revised procedure took effect in late 2018, with the introduction of S.L. 416.03, the Trademark Search and Opposition Rules. The Commerce Department is the national Maltese entity officially designated with the responsibility to register trademarks in Malta(“the Office”). Whereas previously the law did not allow trademark owners to oppose the registration of another trademark, the new law will now allow the possibility of trademark owners to prevent conflicting marks from being registered in the first place. In this way, earlier trademark owners may initiate opposition proceedings before the Office, instead of initiating proceedings before the courts in Malta in order to revoke a registration.

The new procedure is as follows:

  1. The Office runs a search on the National Trademark database.
  2. Applicant is informed of an earlier mark/s and is given opportunity to continue or withdraw the application.
  3. If application is not withdrawn, owner/s of earlier mark/s are informed and advised that they may oppose such registration within 60 working days of its publication on the IP online journal.
  4. Application is published for opposition on the IP online journal.
  5. Earlier right holders or interested parties may submit an opposition accompanied by a fee of €50.
  6. Applicant is informed of opposition and may withdraw application or restrict the goods/services or reach an amicable agreement with opponent or submit a counter-statement to the opposition.
  7. Where a counter-statement is submitted, the opponent is informed and can maintain the opposition at an additional fee of €150.
  8. The Office may accept or refuse the opposition. Any appeals may be made before the Court of Appeal.
  9. The registration of the application will then be published on the IP online journal on the first working day of the week.

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