A trademark is often a company's most valuable asset, hence the requirement of maximum protection under the laws of the market within which the company operates.
Malta, being a European Member State since 2004, offers two routes for trademark protection, depending on the business needs of the applicant. One can register a national/domestic trademark directly in Malta with the Malta Intellectual Property Office or obtain protection via the Community Trademark registration route, the latter having the added advantage of covering 27 countries within the EU.
Malta Trademark Protection
The main law governing trademarks in Malta is the Malta Trademarks Act 2000. The Act defines a trademark as any sign capable of being represented graphically; and which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
Under the Malta Trademarks Act, a trademark may consist of words (including personal names), figurative elements, letters, numerals or the shape of goods or their packaging.
In addition, marks and words must differ from those already legally utilized by other individuals or entities. In actual fact, the law provides for several grounds on which the Comptroller of Industrial Property may refuse to register a trademark. This decision would be subject to any potential appeal thereafter.
With regards to the technical side of Malta trademark protection procedures, one should note that:
(1) a separate trademark application must be filed in respect of each separate class of goods or services as multi class applications are not acceptable
(2) Maltese trademark law also extends protection to well-known marks in Malta eligible for protection in terms of the Paris Convention
(3) Malta is not a signatory to the Nice Classification of Goods and Services, however even though not a Party to the Nice Agreement, we still follow the Nice Classification as a non-participant country and at the moment, we are following the 10th Edition of this Agreement. This 10th Edition presents a list of 45 classes (34 classes of goods and 11 classes of services)
(4) there are various absolute and relative grounds for refusal of the registration of a TM and a registration may also be issued with territorial or specific limitations as to the use of the mark
(5) a trademark application may claim priority over a previously registered trademark if such trademark was duly applied for in any country or territory which is a member of the World Trade Organization or a party to the Paris Convention for the Protection of Industrial Property and if the Malta application is done within a period of six months from the date of filing of the first application
(6) a Malta Trademark is registered for a period of ten (10) years from the date of filing and may be renewed for further periods of ten (10) years.
Malta Trademark Protection Services
Our firm can assist in all aspects of Malta Trademark Protection including filing trademark applications, renewals and maintenance, trademark searches, internet domain name disputes and many other IP services required by your business.
Our trade mark experience and services include:
- Malta trademark registrations, renewals and general prosecution of same
- Community trademark registrations and renewals
- Recordal of assignments, changes, licenses, and other matters affecting the lifespan of a trademark
- Preventative legal advice with the aim of averting instances of trade mark infringement
- Litigation, arbitration or negotiation of legal rights, defending those rights & execution of infringement proceedings, if required
- Identical and similarity Malta and OHIM searches, company name searches, in-use searches, owner searches and searches with legal opinion
- General TM portfolio planning, restructuring or brand protection planning exercises and proposals.
