Trademarks and patents are essential elements for a company but before overviewing the relevant legal provisions for Malta Trademarks and Patents, it is required to ask: what are trademarks and patents? A trademark is a graphic or a word which represents a company or a product, while a patent is the protection of an innovative idea, usually translating into an innovative product. In order to give the most comprehensive overview, Malta Trademarks and Patents shall be discussed individually to provide greater detail.
Malta Trademarks
The Trademarks Act, Chapter 416 of the Laws of Malta, defines a trademark as any sign which can be produced graphically which serves to distinguish goods and services of an undertaking from any other. The Industrial Property Registrations Directorate (IPRD) within the Malta Commerce Department is responsible for the registration of trademarks.
To apply for a trademark to be registered in Malta, the appropriate application must be filed which must contain a list of goods and services for which the trademark in question will be used. Additional documents such as power of attorney or priority documents may also be submitted at the request of the Comptroller of the IPRD. Application incurs a fee of €116.47, covering filing, registration and publication in the gazette.
Upon application, the IPRD checks whether there already exists a similar or identical trademark and processing time usually takes from 8 months to 1 year. Upon approval of application, the registered trademark becomes the personal property of its owner. The trademark is registered for a period of ten years from the date of registration. It may be renewed at the request of the proprietor, and is subject to the payment of a prescribed renewal fee not more than 6 months before the date of expiry.
European Union Trademark
Furthermore, all European Union Trademarks are applicable to Malta and have protection in Malta due to Malta’s membership in the EU and thus automatically becoming part of the European Union Intellectual Property Office (EUIPO). A European Trademark is registered at the EUIPO, upon which applicants enjoy the protection of their trademark throughout the EU, meaning that the owner is given protection for all EU member states in one single application. The fees that are incurred are dependent upon the method of application; if the individual opts to apply online, the fee incurred is that of €850, while if in paper format, €1000.
Malta Patents
The Malta Patent and Designs Act, Chapter 417 of the Laws of Malta provides the following definition of a product which is patentable: an invention which is new, involves an inventive step, and is susceptible of industrial applications. When applying for a patent, the applicant is required to present to the IPRD:
- the relevant application form;
- power of attorney;
- request for the grant of a patent;
- a description of the invention;
- one or more claims (i.e. the subject matter to be protected by the patent);
- an abstract of the invention;
- the title of the invention (clearly and concisely stating the technical designation of the invention); and
- details of the inventor/s.
Moreover, all application documents need to be in either Maltese or English; if not, then they are to be translated to either English or Maltese prior to application by the prospective applicant. The fee incurred upon application is that of €116.47 and an additional €23.30 for every claim over the tenth claim. The processing time of the application is approximately 18 months.
An important question when it comes to a patent is: what are the effects of a patent? First of all, the term of the patent is valid for 20 years from the filing date of the application. In addition, a maintenance fee is paid upon the third year and each subsequent year thereafter – this is to be paid by not later than the last day of the month of the prescribed due date.
In addition, the proprietor of a patent for a product enjoys the right to prevent third parties from performing the following acts:
- making a product incorporating the subject matter of the patent;
- putting on the market a product which incorporates the subject matter of the patent, the use of such product, or incorporating or stocking such product; or
- inducing third parties to perform any of the above acts.
Furthermore, there also exists the possibility of obtaining a Supplementary Patent Certificate (SPC) which grants a further term of protection (maximum: 5 years) over and above the standard term of protection of 20 years.
European Patent
The only pan-European solution when it comes to patents is resorting to the European Patent Office (EPO). It is important to note that while Malta trademarks and patents have the same scope of application, the European Patent is different from the European Union Trademark, both in substance (one is a patent and one is a trademark), and also in the way they function in relation to the rest of the EU Member States. While an EU Trademark is automatically valid in all EU Member States, a European Patent, contrastingly, does not grant a unitary right – what it grants is a set of independent national patents. Therefore, a European patent application designating Malta which has been accorded a filing date, shall be equivalent to a regular national application, where appropriate and certain steps are required for such patent to be validated in Malta.
Malta Trademarks and Patents Services
Our Trademarks and Patents Services include registrations and renewals of Malta trademarks and patents, preventative advice regarding both trademark and patent infringement, litigation, arbitration or negotiation of legal rights, defending rights over trademarks and patents, and execution of infringement proceedings. In the case of trademarks, our lawyers may also assist you in identical and similarity Malta and OHIM searches, company name searches, in-use searches, owner searches and searches with legal opinion. Malta Trademarks and Patents both form part of our Intellectual Property practice group.
