Maltese law provides that a Malta trademark may be revoked on a number of grounds, in particular, where a trademark has not been put to genuine use in Malta within the first 5 years from date of registration and where there are no proper reasons for such non-use. Furthermore, if use of a trademark has been suspended for an uninterrupted period of 5 years and there are no proper reasons for such non-use, then this too can result in revocation of a registered Malta trademark. By way of exception, Article 42 (3) of Chapter 416 of the Laws of Malta provides that the registration of a trademark shall not be revoked on any of these grounds if such use is commenced or resumed after the expiry of the 5-year period and before the application for revocation is made.
These two grounds for revocation were the focus of the judgement to the case Dr. Luigi Sansone on behalf of Britvic Soft Drinks Ltd. vs. Marsovin Ltd. delivered by the Court of Appeal on the 24th February, 2012. The court clearly announced that preparations to use a mark do not amount to actual use of a mark in terms of Article 42 (3) of Chapter 416 of the Laws of Malta. This case also shed light on the definition of ‘use’ in that the Court provided that use of the mark need not necessarily be on the products, but could be in relation thereto for example, the mark could be used in the advertisements of the goods, albeit in the trade of goods. This, in the Court’s opinion, would still amount to ‘use’ within the ambit of law.
