ACT No. XII of 2019 AN ACT to repeal and replace the Trademarks Act, Cap. 416.

I assent.

(L.S.)

GEORGE VELLA

President

9th April, 2019

ACT No. XII of 2019

AN ACT to repeal and replace the Trademarks Act, Cap. 416.

BE IT ENACTED by the President, by and with the advice and

consent of the House of Representatives, in this present Parliament

assembled, and by the authority of the same, as follows:-

(1)

The short title of this Act is the Trademarks Act, 2019.

Short title and

commencement.

(2) This Act shall come into force on such date as the Minister

responsible for Intellectual Property may by notice in the Gazette

establish, and different dates may be so established for different

purposes and for different provisions of this Act.

PART I – GENERAL PROVISIONS

(1) This Act applies to every trademark in respect of goods

or services which is the subject of registration or of an application for

registration in Malta as an individual trademark, a certification mark or

a collective mark or of an international registration having effect in

(2) This Act transposes the provisions of Directive (EU) 2015/

2436 of 16 December 2015 to approximate the laws of the Member

States relating to trademarks (Recast).

(3) The processing of any personal data carried out in Malta in

the framework of this Act shall be subject to Regulation 2016/679

(EU) and the Data Protection Act.

(1)

For the purpose of this Act, the following definitions

"Comptroller" means the Comptroller of Industrial

Property as established under article 3 of the Patents and Designs

Act and includes any other person appointed to exercise all or

any of the powers and perform all or any of the duties of the

Comptroller;

"European Union" or "Union" means the European Union

referred to in the Treaty;

"infringement proceedings" in relation to a registered

trademark, includes proceedings under article 21;

"Member State" means a state which is a member of the

European Union;

"the Minister" means the Minister responsible for the

protection of Industrial Property;

"the Office" means the national Maltese entity officially

designated with the responsibility to register trademarks in

Malta;

"the Ordinance" shall mean the Industrial Property

(Protection) Ordinance;

"Paris Convention" means the convention referred to in

article 125;

"prescribed" means prescribed by this Act or by any

regulations made thereunder;

"publish" means make available to the public, and

references to publication in relation to registration, are to

publication under article 56(4);

"register" means the register of trademarks kept by the

Office;

"trade" includes any business or profession;

"the Treaty" has the same meaning assigned to it by article

2 of the European Union Act.

(2) References in this Act to a trademark include, unless the References to

context otherwise requires, reference to a certification mark or trademark.

collective mark referred to respectively in article 61(a) and (b).

PART II - REGISTERED TRADEMARKS

(1) A registered trademark is a property right obtained by Property right.

the registration of the trademark under this Act. The proprietor of a

registered trademark has the rights and remedies provided by this Act.

(2) A trademark may consist of any signs, in particular words, Signs of which a

including personal names, or designs, letters, numerals, colours, the trademark

consist.

shape of goods or of the packaging of goods, or sounds, provided that

such signs are capable of

(a) distinguishing the goods or services of one

undertaking from those of other undertakings; and

(b) being represented on the register in a manner which

enables the competent authorities and the public to determine the

clear and precise subject matter of the protection afforded to its

proprietor.

(1) The following shall not be registered as trademarks or, if Absolute

grounds for

registered, shall be liable to be declared invalid

refusal or

invalidity.

(a)

signs which cannot constitute a trademark;

(b) trademarks which are devoid of any distinctive

character;

(c) trademarks which consist exclusively of signs or

indications which may serve, in trade, to designate the kind,

quality, intended purpose, value, geographical origin, the time of

production of goods or of rendering of the service, or other

characteristics of the goods or services;

(d) trademarks which consist exclusively of signs or

indications which have become customary in the current

language or in the bona fide and established practices of the

trade;

(e)

signs which consist exclusively of -

(i) the shape, or another characteristic, which

results from the nature of the goods themselves;

(ii) the shape, or another characteristic, of goods

which is necessary to obtain a technical result;

(iii) the shape, or another characteristic, which

gives substantial value to the goods;

(f) trademarks which are contrary to public policy or to

accepted principles of morality;

(g) trademarks which are of such a nature as to deceive

the public or likely to deceive the public, for instance, as to the

nature, quality or geographical origin of the goods or services;

(h) trademarks which have not been authorised by the

competent authorities and are to be refused or invalidated

pursuant to Article 6ter of the Paris Convention;

(i) trademarks which are excluded from registration

pursuant to Union legislation or the laws of Malta, or to

international agreements to which the Union or Malta is party,

providing for protection of designations of origin and

geographical indications;

(j) trademarks which are excluded from registration

pursuant to Union legislation or international agreements to

which the Union is party, providing for protection of traditional

terms for wine;

(k) trademarks which are excluded from registration

pursuant to Union legislation or international agreements to

which the Union is party, providing for protection of traditional

specialities guaranteed;

(l) trademarks which consist of, or reproduce in their

essential elements, an earlier plant variety denomination

registered in accordance with Union legislation or the laws of

Malta, or international agreements to which the Union or Malta

is party, providing protection for plant variety rights, and which

are in respect of plant varieties of the same or closely related

species.

(2) A trademark shall be liable to be declared invalid where the

application for registration of the trademark was made in bad faith by

the applicant.

(3) A trademark shall not be registered or, if registered, is liable

to be declared invalid where and to the extent that

(a) the use of that trademark may be prohibited pursuant

to provisions of law other than trademark law of Malta or of the

Union;

(b) the trademark includes a sign of high symbolic value,

in particular a religious symbol;

(c) the trademark includes badges, emblems and

escutcheons other than those covered by Article 6ter of the Paris

Convention and which are of public interest, unless the consent

of the competent authority to their registration has been given in

conformity with the laws of Malta.

(4)

A trademark which consists of or contains -

(a) the arms, or any of the principal armorial bearings of

the arms appertaining to the President or the Roman Catholic

Archbishop of Malta, or any insignia or device so nearly

resembling such arms or any such armorial bearing as to be

likely to be mistaken for them or it;

(b)

a representation of the Presidential or Episcopal

flags;

(c) a representation of the President or the Archbishop,

or any colourable imitation thereof; or

(d) words, letters or devices likely to lead persons to

think that the applicant either has or recently has had Presidential

or Episcopal patronage or authorization,

shall not be registered unless it appears to the Comptroller that consent

has been given by or on behalf of the President or the Archbishop

Provided that the Minister may by regulations extend the

applicability of the provisions of this sub-article to apply mutatis

mutandis in respect of religions other than the Roman Catholic

Apostolic Religion.

(5) A trademark which consists of a representation of the national

flag of Malta shall not be registered.

(6) A trademark which contains a representation of the national

flag of Malta shall not be registered if it appears to the Comptroller

that the use of the trademark would be misleading or grossly offensive.

(7) A trademark shall not be registered in the cases specified in

article 127 or article 128 except as provided in said articles.

(8) A trademark shall not be refused registration in accordance

with sub-article (1)(b), (c) or (d) if, before the date of application for

registration, it has acquired a distinctive character as a result of the use

made of it in Malta. A trademark shall not be declared invalid for the

same reasons if, before the date of action for a declaration of

invalidity, following the use which has been made of it, it has acquired

a distinctive character as a result of the use made of it in Malta.

(1) A trademark shall not be registered or, if registered,

shall be liable to be declared invalid where

(a) it is identical with an earlier trademark, and the

goods or services for which the trademark is applied for or is

registered are identical with the goods or services for which the

earlier trademark is protected;

(b) because of its identity with, or similarity to, an earlier

trademark and the identity or similarity of the goods or services

covered by the trademarks, there exists a likelihood of confusion

on the part of the public, including the likelihood of association

by the public with the earlier trademark.

(2) "Earlier trademarks" within the meaning of sub-article (1)

means

(a) trademarks of the following kinds with a date of

application for registration which is earlier than the date of

application for registration of the trademark, taking account,

where appropriate, of the priorities claimed in respect of those

trademarks

(i)

EU trademarks;

(ii)

trademarks registered in Malta;

(iii) trademarks registered under

international

arrangements which have effect in Malta;

(b) EU trademarks which validly claim seniority, in

accordance with Regulation (EU) 2017/1001, of a trademark

referred to in sub-article (2)(a)(ii) and (iii), even when the latter

trademark has been surrendered or allowed to lapse;

(c) applications for the trademarks referred to in sub-

article (2)(a) and (b), subject to their registration;

(d) trademarks which, on the date of application for

registration of the trademark or, where appropriate, of the

priority claimed in respect of the application for registration of

the trademark, are well known in Malta, in the sense in which the

words "well-known" are used in Article 6bis of the Paris

Convention.

(3) Furthermore, a trademark shall not be registered or, if

registered, shall be liable to be declared invalid where

(a) it is identical with, or similar to, an earlier trademark

irrespective of whether the goods or services for which the

trademark is applied or registered are identical with, similar to or

not similar to those for which the earlier trademark is protected,

where the earlier trademark has a reputation in Malta or, in the

case of an EU trademark, has a reputation in the Union and the

use of the later trademark without due cause would take unfair

advantage of, or be detrimental to, the distinctive character or the

repute of the earlier trademark;

(b) an agent or representative of the proprietor of the

trademark applies for registration thereof in his own name

without the proprietor's authorisation, unless the agent or

representative justifies his action;

(c) to the extent that, pursuant to Union legislation or the

laws of Malta providing for protection of designations of origin

and geographical indications

(i) an application for a designation of origin or a

geographical indication had already been submitted in

accordance with Union legislation or the laws of Malta

prior to the date of application for registration of the

trademark or the date of the priority claimed for the

application, subject to its subsequent registration;

(ii) that designation of origin or geographical

indication confers on the person authorised under the

relevant law to exercise the rights arising therefrom, the

right to prohibit the use of a subsequent trademark.

(4) A trademark is not to be registered or, if registered, is liable to

be declared invalid where, and to the extent that

(a) rights to a non-registered trademark or to another

sign used in the course of trade, were acquired prior to the date

of application for registration of the subsequent trademark, or the

date of the priority claimed for the application for registration of

the subsequent trademark, and that non-registered trademark or

other sign confers on its proprietor the right to prohibit the use of

the subsequent trademark;

(b) the use of the trademark may be prohibited by virtue

of an earlier right, other than the rights referred to in sub-articles

(2) and (4)(a), and protected by means of

(i)

copyright;

(ii)

registered designs;

(iii) other rights which the Minister may prescribe

by regulation.

(5) A trademark shall not be refused registration or declared invalid

where the proprietor of the earlier trademark or other earlier right

consents to the registration of the later trademark.

The grounds for refusal of registration or invalidity in force in

Malta prior to the date of the entry into force of the Trademarks Act,

are to continue to apply in relation to trademarks for which an

application was made prior to such entry into force and which

remained regulated thereby.

Where the seniority of a national trademark or of a trademark

registered under international arrangements having effect in Malta,

which has been surrendered or allowed to lapse, is claimed for an EU

trademark, the invalidity or revocation of the trademark providing the

basis for the seniority claim may be established a posteriori, provided

that the invalidity or revocation could have been declared at the time

the mark was surrendered or allowed to lapse. In such a case, the

seniority shall cease to produce its effects.

Where grounds for refusal of registration or for invalidity of a Grounds for

trademark exist in respect of only some of the goods or services for refusal

invalidity

which that trademark has been applied or registered, refusal of relating

some of the

registration or invalidity shall cover those goods or services only.

goods or

services.

An action for a declaration of invalidity on the basis of an Lack of

earlier trademark shall not succeed at the date of the action for distinctive

character or of

invalidation if it would not have been successful at the filing date or reputation

earlier

the priority date of the later trademark for any of the following trademark

precluding a

reasons

declaration of

invalidity of a

registered

(a) the earlier trademark liable to be declared invalid

trademark.

pursuant to article 5(1)(b), (c) or (d) had not yet acquired a

distinctive character as referred to in article 5(8);

(b) the application for a declaration of invalidity is based

on article 6(1)(b) and the earlier trademark had not yet become

sufficiently distinctive to support a finding of likelihood of

confusion within the meaning of article 6(1)(b);

(c) the application for a declaration of invalidity is based

on article 6(3)(a) and the earlier trademark had not yet acquired a

reputation within the meaning of article 6(3)(a).

(1) Where, in Malta, the proprietor of an earlier trademark, Preclusion of a

as referred to in article 6(2) or article 6(3)(a) has acquiesced for a declaration

invalidity due to

period of five successive years, in the use of a later trademark acquiescence.

registered in Malta, he shall no longer be entitled on the basis of the

earlier trademark to apply for a declaration that the later trademark is

invalid in respect of the goods or services for which the later

trademark has been used, unless registration of the later trademark was

applied for in bad faith.

(2) Sub-article (1) is to apply to the proprietor of any other earlier

right referred to in article 6(4)(a) or (b).

(3) In the cases referred to in sub-articles (1) and (2), the

proprietor of the later registered trademark shall not be entitled to

oppose the use of the earlier right, even though that right may no

longer be invoked against the later trademark.

Rights conferred and limitations

(1) The registration of a trademark shall confer on the Rights conferred

by a trademark.

proprietor exclusive rights therein.

(2) Any reference in this Act to the infringement of a registered

trademark shall be deemed to be a reference to any such infringement

of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of

registration reckoned in accordance with article 56(3)

Provided that -

(a) no infringement proceedings may be begun before

the date on which the trademark is in fact registered; and

(b) no offence under article 109 shall be committed by

anything done before the date of publication of the registration.

(4) Without prejudice to the rights of proprietors acquired before

the filing date or the priority date of the registered trademark, the

proprietor of that registered trademark shall be entitled to prevent all

third parties not having his consent from using in the course of trade,

in relation to goods or services, any sign where

(a) the sign is identical with the trademark and is used in

relation to goods or services which are identical with those for

which it is registered;

(b) the sign is identical with, or similar to, the trademark

and is used in relation to goods or services which are identical

with, or similar to, the goods or services for which the trademark

is registered

Provided that there exists a likelihood of confusion

on the part of the public

Provided further that the likelihood of confusion

includes the likelihood of association between the sign and the

trademark;

(c) the sign is identical with, or similar to, the trademark

irrespective of whether it is used in relation to goods or services

which are identical with, similar to, or not similar to, those for

which the trademark is registered, where the latter has a

reputation in Malta and where use of that sign, without due

cause, takes unfair advantage of, or is detrimental to, the

distinctive character or the repute of the trademark.

(5) The following, in particular, may be prohibited under sub-

article (4)

(a)

affixing the sign to the goods or the packaging

thereof;

(b) offering the goods or putting them on the market, or

stocking them for those purposes, under the sign, or offering or

supplying services thereunder;

(c)

importing or exporting the goods under the sign;

(d) using the sign as a trade or company name or part of

a trade or company name;

(e)

using the sign on business papers or in advertising;

(f) using the sign in comparative advertising in a manner

that is contrary to Directive 2006/114/EC.

(6) A person who applies a registered trademark to material

intended to be used for labelling or packaging goods, as a business

paper, or for advertising goods or services, shall be treated as a party to

any use of the material which infringes the registered trademark if

when he applied the mark he knew or had reason to believe that the

application of the mark was not duly authorised by the proprietor or a

licensee.

(7) Without prejudice to the rights of proprietors acquired before

the filing date or the priority date of the registered trademark, the

proprietor of that registered trademark shall also be entitled to prevent

all third parties from bringing goods, in the course of trade, into Malta,

without being released for free circulation there, where such goods,

including the packaging thereof, come from third countries and bear

without authorisation a trademark which is identical with the

trademark registered in respect of such goods, or which cannot be

distinguished in its essential aspects from that trademark.

The entitlement of the trademark proprietor pursuant to the

first sub-paragraph shall lapse if, during the proceedings to determine

whether the registered trademark has been infringed, initiated in

accordance with Regulation (EU) No. 608/2013, evidence is provided

by the declarant or the holder of the goods that the proprietor of the

registered trademark is not entitled to prohibit the placing of the goods

on the market in the country of final destination.

(8) Where the use of a sign under the conditions referred to in

paragraphs (b) and (c) of sub-article (4) could not be prohibited before

the coming into force of the Trademarks Act, the rights conferred by Cap.

416. the trademark cannot be relied on to prevent the continued use of the

sign if such use had started prior to the said Act coming into force.

(9) Sub-articles (1), (4), (5) and (8) shall not affect provisions

applicable under any law relating to the protection against the use of a

sign other than use for the purposes of distinguishing goods or services,

where use of that sign without due cause takes unfair advantage of or is

detrimental to, the distinctive character or the repute of the trademark.

Where the risk exists that the packaging, labels, tags, security

or authenticity features or devices, or any other means to which the

trademark is affixed, could be used in relation to goods or services and

that use would constitute an infringement of the rights of the proprietor

of a trademark under article 12(4) and (5), the proprietor of that

trademark shall have the right to prohibit the following acts if carried

out in the course of trade

(a) affixing a sign identical with, or similar to, the

trademark on packaging, labels, tags, security or authenticity

features or devices, or any other means to which the mark may

be affixed;

(b) offering or placing on the market, or stocking for

those purposes, or importing or exporting, packaging, labels,

tags, security or authenticity features or devices, or any other

means to which the mark is affixed.

If the reproduction of a trademark in a dictionary,

encyclopaedia or similar reference work, in print or electronic form,

gives the impression that it constitutes the generic name of the goods

or services for which the trademark is registered, the publisher of the

work shall, at the request of the proprietor of the trademark, ensure

that the reproduction of the trademark is, without delay, and in the case

of the work in printed form at the latest in the next edition of the

publication, accompanied by an indication that it is a registered

trademark.

(1) Where a trademark is registered in the name of the agent

or representative of a person who is the proprietor of that trademark,

without the proprietor’s consent, the latter shall be entitled to do either

or both of the following

(a) oppose the use of the trademark by his agent or

representative;

(b)

demand the assignment of the trademark in his

favour.

(2) Sub-article (1) shall not apply where the agent or

representative justifies his action.

(1) A trademark shall not entitle the proprietor to prohibit a Limits on

effects of a

third party from using, in the course of trade

registered

trademark.

(a) the name or address of the third party, where that

third party is a natural person;

(b) signs or indications which are not distinctive or

which concern the kind, quality, quantity, intended purpose,

value, geographical origin, the time of production of goods or of

rendering of the services, or other characteristics of goods or

services;

(c) the trademark for the purpose of identifying or

referring to goods or services as those of the proprietor of that

trademark in particular where the use of the trademark is

necessary to indicate the intended purpose of a product or service

in particular as accessories or spare parts.

(2) Sub-article (1) shall only apply where the use made by the

third party is in accordance with honest practices in industrial or

commercial matters.

(3) (a) A trademark shall not entitle the proprietor to prohibit a

third party from using, in the course of trade in Malta, an earlier right,

if the right is recognised by law and if, or to the extent that, its use is

protected by virtue of any rule of law.

(b) For the purposes of this sub-article an "earlier right"

means an unregistered trademark or other sign continuously used

in relation to goods or services by a person or his predecessor in

title from a date prior to whichever is the earlier of -

(i) the use of the first-mentioned trademark in

relation to those goods or services by the proprietor or his

predecessor in title; or

(ii) the registration of the first-mentioned

trademark in respect of those goods or services in the name

of the proprietor or his predecessor in title.

(1) A trademark shall not entitle the proprietor to prohibit Exhaustion of

its use in relation to goods which have been put on the market in the the

conferred by a

Union under that trademark by the proprietor or with the proprietor’s trademark.

consent.

(2) Sub-article (1) shall not apply where there exist legitimate

reasons for the proprietor to oppose further commercialisation of the

goods, particularly where the condition of the goods is changed or

impaired after they have been put on the market.

(1) An applicant for registration of a trademark, or the

proprietor of a registered trademark, may -

(a) disclaim any right to the exclusive use of any

specified element of the trademark; or

(b) agree that the rights conferred by the registration

shall be subject to a specified territorial or other limitation.

(2) The Comptroller may disclaim any right to the exclusive use

of any specified element of the trademark.

(3) The Minister may make rules providing for the publication

and entry in the register of a disclaimer or limitation.

(4) Where the registration of a trademark is subject to a

disclaimer or limitation, the rights conferred by article 12 shall be

restricted accordingly.

(1) Subject to the provisions of articles 41 and 42, an

infringement of a registered trademark is actionable by the proprietor

of the trademark by sworn application to be filed in the First Hall of

the Civil Court.

(2) In an action for infringement all such relief as is available in

respect of the infringement of any other property right shall be

available to the plaintiff.

(1) Where a person is found to have infringed a registered

trademark, the Court may make an order requiring him –

(a) to cause the offending sign to be erased, removed or

obliterated from any infringing goods, material or articles in his

possession, custody or control; or

(b) if it is not reasonably practicable for the offending

sign to be erased, removed or obliterated, to secure the

destruction of the infringing goods, material or articles in

question.

(2) If an order under sub-article (1) is not complied with, or it

appears likely to the Court that such an order would not be complied

with, the Court may order that the infringing goods, material or articles

be delivered to such person as the Court may direct for erasure,

removal or obliteration of the sign, or for destruction, as the case may

be.

(1) The proprietor of a registered trademark may, by Order for

application, ask the First Hall of Civil Court for an order for the delivery

infringing

delivery up to him, or such other person as the Court may direct, of goods,

or articles.

any infringing goods, material or articles which a person has in his

possession, custody or control in the course of a business.

(2) An application shall not be made after the end of the period

specified in article 23; and no order shall be made unless the Court

also makes, or it appears to the Court that there are grounds for

making, an order under article 24.

(3) A person to whom any infringing goods, material or articles

are delivered up in pursuance of an order under this article shall retain

them pending the decision of the Court under article 24.

(4)

Nothing in this article affects any other power of the Court.

(1) In this Act the expressions "infringing goods", Meaning of

"infringing material" and "infringing articles" shall be construed in "infringing

goods, material

accordance with the following sub-articles of this article.

or articles".

(2) Goods are "infringing goods", in relation to a registered

trademark, if they or their packaging bear a sign identical or similar to

that mark and -

(a) the application of the sign to the goods or their

packaging is an infringement of the registered trademark; or

(b) the goods are proposed to be imported into Malta and

the application in Malta, of the sign, to them or their packaging

would be an infringement of the registered trademark; or

(c) the sign has otherwise been used in relation to the

goods in such a way as to infringe the registered trademark.

(3) Material is "infringing material", in relation to a registered

trademark, if it bears a sign identical or similar to that mark and -

(a) it is used for labelling or packaging goods, as a

business paper, or for advertising goods or services, in such a

way as to infringe the registered trademark; or

(b) it is intended to be so used and such use would

infringe the registered trademark.

(4) "Infringing articles", in relation to a registered trademark,

means articles -

(a) which are specifically designed or adapted for

making copies of a sign identical or similar to that trademark;

and

(b) which a person has in his possession, custody or

control, knowing or having reason to believe that they have been

used or are to be used to produce infringing goods or material.

(1) An application for an order under article 24 may not be

made after the end of the period of six years from -

(a) in the case of infringing goods, the date on which the

trademark was applied to the goods or their packaging;

(b) in the case of infringing material, the date on which

the trademark was applied to the material; or

(c) in the case of infringing articles, the date on which

they were made,

except as provided in the following sub-article.

(2) If during the whole or part of that period the proprietor of the

registered trademark is prevented by fraud or concealment from

discovering the facts entitling him to apply for an order, an application

may be made at any time before the end of the period of six years from

the date on which he could with reasonable diligence have discovered

those facts.

(1) Where infringing goods, material or articles have been

delivered up in pursuance of an order under article 21, an action by

sworn application may be brought before the Court by any party

interested -

(a) for an order that they be destroyed or forfeited in

favour of such person as the Court may think fit; or

(b)

for a decision that no such order should be made.

(2) In considering its decision, the Court shall consider whether

other remedies available in an action for infringement of the registered

trademark would be adequate to compensate the proprietor and any

licensee to protect their interests.

(3) The Court shall order the service of the sworn application on

persons having an interest in the goods, material or articles, and any

person having an interest shall be entitled -

(a) to appear in proceedings for an order under this

article, whether or not he was served with a notice; and

(b) to appeal against any order made, whether or not he

appeared at first instance, and any such order shall not take effect

until the end of the period within which an appeal may be filed

or, if before the end of that period an appeal is so filed, until the

final determination or abandonment of the proceedings on the

appeal.

(4) Where there is more than one person interested in the goods,

material or articles, the Court shall make such order as it thinks fit.

(5) If the Court decides that no order should have been made

under article 21, the person in whose possession, custody or control

the goods, material or articles were before being delivered up, is

obliged towards their return.

(1) Where a person threatens another with proceedings for Remedy for

groundless

infringement of a registered trademark other than-

threats of

infringement

proceedings.

(a)

use of the mark on goods or their packaging;

(b) the importation of goods to which, or to the

packaging of which, the mark has been applied; or

(c)

the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this

article by sworn application before the Civil Court, First Hall.

(2)

The relief which may be applied for is any of the following -

(a)

a declaration that the threats are unjustified;

(b)

an injunction against the continuance of the threats;

(c) damages in respect of any loss he may have sustained

by the threats, and the plaintiff is entitled to such relief unless the

defendant shows that the acts in respect of which proceedings

were threatened constitute, or if done would constitute, an

infringement of the registered trademark concerned.

(3) Where the defendant shows that the acts in respect of which

proceedings were threatened constitute or would constitute an

infringement of the registered trademark, the plaintiff shall

nevertheless be entitled to relief if he shows that the registration of the

trademark is invalid or liable to be revoked.

(4) The mere notification that a trademark is registered, or that an

application for registration has been made, does not constitute a threat

of proceedings for the purposes of this article.

(1) If, within a period of five years following the date of the

completion of the registration procedure, the proprietor has not put the

trademark to genuine use in Malta in connection with the goods or

services in respect of which it is registered, or if such use has been

suspended during a continuous five-year period, the trademark shall be

subject to the limits and sanctions provided for in article 27, article

29(1), article 51(1) and (2), and article 53(3) and (4), unless there are

proper reasons for non-use.

(2) Subject to Malta becoming member to the Protocol relating to

the Madrid Agreement concerning the International Registration of

Marks adopted at Madrid on 27 June, 1989, the five-year period

referred to in sub-article (1), for a trademark registered under

international arrangements and having effect in Malta, shall be

calculated from the date when the trademark can no longer be rejected

or opposed. Where an opposition has been lodged the period shall be

calculated from the date when a decision terminating the opposition

proceedings became final or the opposition was withdrawn.

(3) The date of commencement of the five-year period, as

referred to in sub-article (1) shall be entered in the register.

(4) The following shall also constitute use within the meaning of

sub-article (1)

(a) use of the trademark in a form differing in elements

which do not alter the distinctive character of the mark in the

form in which it was registered, regardless of whether or not the

trademark in the form as used is also registered in the name of

the proprietor;

(b) affixing of the trademark to goods or to the

packaging thereof in Malta solely for export purposes.

(5) Use of the trademark with the consent of the proprietor shall

be deemed to constitute use by the proprietor.

The proprietor of a trademark shall be entitled to prohibit the

use of a sign only to the extent that the proprietor's rights are not liable

to be revoked pursuant to article 29 at the time the infringement action

is brought. If the defendant so requests, the proprietor of the trademark

shall furnish proof that, during the five-year period preceding the date

of bringing the action, the trademark has been put to genuine use as

provided in article 26 in connection with the goods or services in

respect of which it is registered and which are cited as justification for

the action, or that there are proper reasons for non-use, provided that

the registration procedure of the trademark has at the date of bringing

the action been completed for not less than five years.

(1) In infringement proceedings, the proprietor of a Intervening

trademark shall not be entitled to prohibit the use of a later registered right

in infringement

mark where that later trademark would not be declared invalid proceedings.

pursuant to article 10, article 11(1) or (2) or article 53(3).

(2) In infringement proceedings, the proprietor of a trademark

shall not be entitled to prohibit the use of a later registered EU

trademark where that later trademark would not be declared invalid

pursuant to Article 60(1), (3) or (4), 61(1) or (2) or 64(2) of Regulation

(EU) No. 2017/1001.

(3) Where the proprietor of a trademark is not entitled to prohibit

the use of a later registered trademark pursuant to sub-article (1) or (2),

the proprietor of that later registered trademark shall not be entitled to

prohibit the use of the earlier trademark in infringement proceedings,

even though that earlier right may no longer be invoked against the

later trademark.

Revocation of registered trademark rights

(1) A trademark shall be liable to revocation if, within a Absence of

continuous five-year period, it has not been put to genuine use in Malta, genuine

grounds for

in connection with the goods or services in respect of which it is revocation.

registered, and there are no proper reasons for non-use.

(2) The registration of a trademark shall not be revoked on the

grounds mentioned in sub-article (1) if such use as is referred to in that

sub-article is commenced or resumed after the expiry of the five-year

period and before the action for revocation is made

Provided that, the commencement or resumption of use within

the three-month period preceding the filing of the action shall be

disregarded where preparations for the commencement or resumption

occur only after the proprietor becomes aware that the action may be

filed.

A trademark shall be liable to revocation if, after the date on Trademark

having become

which it was registered

generic or is a

misleading

indication as

(a) as a result of acts or inactivity of the proprietor, it has

grounds for

become the common name in the trade for a product or service in

revocation.

respect of which it is registered;

(b) as a result of the use made of it by the proprietor of

the trademark or with the proprietor's consent in respect of the

goods or services for which it is registered, it is liable to mislead

the public, particularly as to the nature, quality or geographical

origin of those goods or services.

Where grounds for revocation of a trademark exist in respect

of only some of the goods or services for which that trademark has

been registered, revocation shall cover those goods or services only.

Registered Trademarks as objects of property

A registered trademark is the personal property of its owner.

(1) Where a registered trademark is granted to two or more

persons jointly, each of them is entitled, subject to any agreement to

the contrary, to an equal undivided share in the registered trademark.

(2) The following provisions apply where two or more persons

are co-proprietors of a registered trademark, by virtue of sub-article (1)

or otherwise.

(3) Subject to any agreement to the contrary, each co-proprietor is

entitled, personally or through his agents, to do for his own benefit and

without the consent of or the need to account to any other co-

proprietor, any act which would otherwise amount to an infringement

of the registered trademark.

(4) Notwithstanding the provisions of sub-article (3) a co-

proprietor may not without the consent of the other or others -

(a)

grant a licence to use the registered trademark; or

(b) assign or cede control of his share in the registered

trademark.

(5) Infringement proceedings may be brought by any co-

proprietor, but a co-proprietor may not, without the leave of the Court,

proceed with the action unless the other, or each of the other co-

proprietors, is joined in the suit.

A co-proprietor who is thus joined in the suit shall not be

liable for any costs in the action.

Nothing in this sub-article affects the making of any

precautionary warrant on the application of a single co-proprietor.

(6) Nothing in this article affects the rights and obligations of

trustees or personal representatives, or their rights and obligations as

such.

(1) A registered trademark is transmissible by assignment, Transmission of

testamentary disposition or operation of law in the same way as other a trademark.

personal or moveable property.

(2) A registered trademark may be transferred, separately from Transfer of a

any transfer of the undertaking, in respect of some or all of the goods registered

trademark.

or services for which it is registered.

(3) A transfer of the whole of the undertaking shall include the

transfer of the trademark except where there is agreement to the

contrary or circumstances clearly dictate otherwise. This provision

shall apply to the contractual obligation to transfer the undertaking.

(4) An assignment of a registered trademark is not effective

unless it is in writing signed by or on behalf of the assignor or, as the

case may be, by a personal representative.

(5) Nothing in this Act shall be construed as affecting the

assignment or other transmission of an unregistered trademark as part

of the goodwill of a business.

(6) The Minister may make regulations for the recordal of

transfers in the register.

(1)

On application being made to the Comptroller by –

Registration of

transactions

affecting a

(a) a person claiming to be entitled to an interest in or

registered

trademark.

under a registered trademark by virtue of a registrable

transaction; or

(b) any other person claiming to be affected by such a

transaction,

the prescribed particulars of the transaction shall be entered in the

register.

(2)

The following are registrable transactions -

(a)

an assignment of a registered trademark or any right

in it;

(b)

the grant of a licence under a registered trademark;

(c) the transfer of a registered trademark by testamentary

disposition;

(d) an order of a Court or other competent authority

transferring a registered trademark or any right in or under it.

(3) Until an application has been made for registration of the

prescribed particulars of a registrable transaction -

(a) the transaction is ineffective as against a person

acquiring in good faith a conflicting interest in the registered

trademark, and

(b) a person claiming to be a licensee by virtue of the

transaction shall not have the protection of article 41 or 42.

(4) Where a person becomes the proprietor or a licensee of a

registered trademark by virtue of a registrable transaction, he shall not

be entitled to damages or an account of profits in respect of any

infringement of the registered trademark occurring after the date of the

registrable transaction and before the prescribed particulars of the

transaction are registered, unless

(a) an application for registration of the prescribed

particulars of the transaction is made before the end of the period

of six months beginning with the date of the transaction; or

(b) the Court is satisfied that it was not practicable for

such an application to be made before the end of that period and

that an application was made as soon as practicable thereafter.

(5)

The Minister may make regulations prescribing rules as to -

(a) amendment of registered particulars relating to a

licence so as to reflect any alteration of the terms of the licence;

(b)

the removal of such particulars from the register -

(i) where it appears from the registered particulars

that the licence was granted for a fixed period and that

period has expired;

(ii) where no such period is indicated and, after

such period as may be prescribed, and after the

Comptroller has notified the parties of his intention to

remove the particulars from the register and the parties

have not indicated their agreement that such particulars

should not be removed for such period as the parties shall

have agreed and indicated to the Comptroller;

(c) the amendment or removal from the register of

particulars relating to a security interest on the application of, or

with the consent of, the person entitled to the benefit of that

interest.

The provisions of article 32 to 35 apply mutatis mutandis in Application for

relation to an application for the registration of a trademark in the registration

trademark as an

same manner in relation to a registered trademark.

object of

property.

(1) A trademark may, independently of the undertaking, be Rights in rem.

given as security or be the subject of rights in rem.

(2) The Minister may make regulations for the recordal of a

security or of rights in rem in the register.

(1) A trademark may be levied in execution.

Levy of

execution.

(2) The Minister may make regulations for the recordal of levy of

execution in the register.

(1) A trademark may be licensed for some or all of the Licensing.

goods or services for which it is registered, and for the whole or part of

Malta. A licence may be exclusive or non-exclusive.

(2) Unless the licence provides otherwise, it is binding on a

successor in title to the grantor’s interest, and references in this Act to

doing anything with, or without, the consent of the proprietor of a

registered trademark shall be construed accordingly.

(3) Where the licence so provides, a sub-licence may be granted

by the licensee; and references in this Act to a licence or licensee

include a sub-licence or sub-licensee.

(4) The proprietor of a trademark may invoke the rights conferred

by that trademark against a licensee who contravenes any provision in

his licensing contract with regard to

(a)

its duration;

(b) the form covered by the registration in which the

trademark may be used;

(c) the scope of the goods or services for which the

licence is granted;

(d)

the territory in which the trademark may be affixed;

or

(e)

the quality of the goods manufactured or of the

services provided by the licensee.

(5) Without prejudice to the provisions of the licensing contract,

the licensee may bring proceedings for infringement of a trademark

only if its proprietor consents thereto. However, the holder of an

exclusive licence may bring such proceedings if the proprietor of the

trademark, after formal notice, does not himself bring infringement

proceedings within an appropriate period.

(6) A licensee shall, for the purpose of obtaining compensation

for damage suffered by him, be entitled to intervene in infringement

proceedings brought by the proprietor of the trademark.

(7) The Minister may make regulations for the recordal of

licences in the register.

(1) In this Act an "exclusive licence" means a licence

(whether general or limited) authorising the licensee to the exclusion

of all other persons, including the person granting the licence, to use a

registered trademark in the manner authorised by the licence.

(2) An exclusive licensee has the same rights against a successor

in title who is bound by the licence as he has against the person

granting the licence.

(1) The provisions of this article shall apply with respect to

the rights of a licensee in relation to infringement of a registered

trademark

Provided that they shall not apply where or to the extent that,

in accordance with article 42(1) an exclusive licensee has a right to

bring proceedings in his own name.

(2) A licensee is entitled, unless his licence provides otherwise, to

call on the proprietor of the registered trademark to take infringement

proceedings in respect of any matter which affects his interests.

(3)

If the proprietor -

(a)

refuses to do so; or

(b)

fails to do so within two months after being called

upon,

the licensee may bring the proceedings in his own name as if he were the

proprietor.

(4)

Where infringement proceedings are brought by a licensee by

virtue of this article, the proprietor shall be joined in the suit.

(5) In infringement proceedings brought by the proprietor of a

registered trademark any loss suffered or likely to be suffered by

licensees shall be taken into account by the Court which shall give

such directions as it thinks fit with regard to the disposal and

distribution of any sum awarded as a remedy for the infringement.

(1) An exclusive licence may provide that the licensee shall Exclusive

have, to such extent as may be provided by the licence, the same rights licensee

right and

and remedies in respect of matters occurring after the grant of the remedies

assignee.

licence as if the licence had been an assignment.

Where or to the extent that such provision is made, the

licensee shall be entitled, subject to the provisions of the licence and to

the following provisions of this article, to bring infringement

proceedings in his own name against any person other than the

proprietor.

(2) The rights and remedies of an exclusive licensee are

concurrent with those of the proprietor of the registered trademark;

and references in this Act to the proprietor of a registered trademark

relating to infringement shall be construed accordingly.

(3) In an action brought by an exclusive licensee under this article

a defendant may avail himself of any defence which would have been

available to him if the action had been brought by the proprietor of the

registered trademark.

(4) Where proceedings for infringement of a registered trademark

are brought by the proprietor or by the exclusive licensee relating to an

infringement in respect of which they have concurrent right of action,

the proprietor or, as the case may be, the exclusive licensee who is not

the plaintiff shall be joined in the suit.

(5) (a) Where an action for infringement of a registered

trademark relating to an infringement in respect of which the

proprietor and an exclusive licensee have concurrent right of action is

brought -

(i) the Court shall in assessing damages take into

account -

(1)

the terms of the licence; and

(2) any pecuniary remedy already awarded or

available to either of them in respect of the infringement;

(ii) no account of profits shall be ordered to be made if

an award of damages has been made, or an account of profits has

been ordered, in favour of either of them in respect of the

infringement; and

(iii) the Court shall, if an account of profits has been

ordered, apportion subject to any agreement between them, the

profits between them as the Court considers just.

(b) The provisions of this sub-article apply whether action

is brought by the proprietor alone, or it is brought by the proprietor and

the exclusive licensee; and if they are not both parties the Court may

give such directions as it deems fit with regard to the disposal and

distribution of any sum awarded as remedy for the infringement.

(6) The proprietor of a registered trademark shall notify any

exclusive licensee who has a concurrent right of action before applying

for an order under article 21; and the Court may on the application of

the licensee make such order under that article as it thinks fit having

regard to the terms of the licensee.

(7) The provisions of sub-articles (4) to (6) shall be without

prejudice to any agreement to the contrary between the exclusive

licensee and the proprietor.

Applications for the registration of a trademark

(1) An application for registration of a trademark shall

contain at least all of the following

(a)

a request for registration;

(b)

information identifying the applicant;

(c) a list of the goods or services in respect of which the

registration is requested;

(d) a representation of the trademark, which satisfies the

requirements set out in sub-article (2)(b) of article 4.

(2) The application for a trademark shall be subject to the

payment of the prescribed fee.

(1) The date of filing of a trademark application shall be the

date on which the documents containing the information specified in

article 43(1) are filed with the Office by the applicant.

(2)

The accordance of the date of filing is to be subject to the

payment of a fee as referred to in article 43(2)

Provided that where the elements are furnished on different

days, the date of filing shall be the date on which the last element is so

furnished.

(3) References in this Act to the date of application for

registration shall be construed as a reference to the date of filing of the

application.

(1) The goods and services in respect of which trademark Designation and

registration is applied for shall be classified in conformity with the classification

goods and

system of classification established by the Nice Agreement services.

Concerning the International Classification of Goods and Services for

the Purposes of the Registration of Marks of 15 June 1957 ("the Nice

Classification").

(2) The goods and services for which protection is sought shall be

identified by the applicant with sufficient clarity and precision to

enable the competent authorities and economic operators, on that sole

basis, to determine the extent of the protection sought.

(3) For the purposes of sub-article (2), the general indications

included in the class headings of the Nice Classification or other

general terms may be used, provided that they comply with the

requisite standards of clarity and precision set out in this article.

(4) The Office shall reject an application in respect of indications

or terms which are unclear or imprecise, where the applicant does not

suggest an acceptable wording within a period set by the Office to that

effect.

(5) The use of general terms, including the general indications of

the class headings of the Nice Classification, shall be interpreted as

including all the goods or services clearly covered by the literal

meaning of the indication or term. The use of such terms or indications

shall not be interpreted as comprising a claim to goods or services

which cannot be so understood.

(6) Where the applicant requests registration for more than one

class, the applicant shall group the goods and services according to the

classes of the Nice Classification, each group being preceded by the

number of the class to which that group of goods or services belongs,

and shall present them in the order of the classes.

(7) Goods and services shall not be regarded as being similar to

each other on the ground that they appear in the same class under the

Nice Classification. Goods and services shall not be regarded as being

dissimilar from each other on the ground that they appear in different

classes under the Nice Classification.

(8) Any question arising as to the class within which any goods or

services fall shall be determined by the Comptroller, whose decision

shall be final.

(1) A person who has duly filed an application for

protection of a trademark in a country which is a member of the World

Trade Organisation or a party to the Paris Convention, hereinafter in

this Act referred to as a "Convention application", or his successor in

title, has a right to priority, for the purposes of registering the same

trademark under this Act for any or all of the same goods or services

for which such an application has been filed, for a period of six months

from the date of filing of the first such application.

(2) If the application for registration under this Act is made

within such six-month period -

(a) the relevant date for the purposes of establishing

which rights take precedence shall be the date of filing of the

first Convention application; and

(b) the registrability of the trademark shall not be

affected by any use of the mark in Malta in the period between

that date and the date of the application under this Act.

(3) (a) Any filing which in a country which is a member of the

World Trade Organisation or is a party to the Paris Convention is made

under its legislation or any international agreement to which such

country is a party, treated as if it were a regular national filing, shall be

treated as giving rise to the right of priority.

(b) For the purposes of this sub-article "regular national

filing" means a filing which is adequate to establish the date on which

the application was filed in that country, whatever may be the

subsequent application.

(4) A subsequent application concerning the same goods or

services as the first Convention application, filed in the same

Convention country, shall be considered the first Convention

application (the filing date of which is the starting date of the period of

priority), if at the time of the subsequent application -

(a) the previous application has been withdrawn,

abandoned or refused, without having been laid open to public

inspection and without leaving any rights outstanding; and

(b) it has not yet served as a basis for claiming a right of

priority, and the previous application may not thereafter serve as

a basis for claiming a right of priority.

(5) Provision may be made by rules as to the manner of claiming

a right to priority on the basis of a Convention application.

(6) A right to priority arising as a result of a Convention

application may be assigned or otherwise transmitted, either with the

application or independently.

(1) The Minister may make regulations conferring on a Claim to

person who has duly filed an application for protection of a trademark priority

other relevant

in a country or territory in relation to which the Maltese Government is overseas

application.

a party to a treaty, convention, arrangement or engagement for the

reciprocal protection of trademarks, a right to priority, for the purpose

of registering the same trademark under this Act for any or all of the

same goods or services, for such a period as may be specified in the

application from the date of filing of that application.

(2) Such regulations may make provisions similar to those

contained in article 46 in relation to Convention applications or such

other provision as appears to the Minister to be appropriate.

(1) The Comptroller shall examine whether an application Examination of

application.

for registration of a trademark satisfies the requirements of this Act

Provided that the Minister may prescribe regulations as to

whether such examination shall include ex officio relative grounds

examination.

(2) If it appears to the Comptroller that the requirements for

registration are not met, he shall inform the applicant and give him an

opportunity to make representations or to amend the application within

such period as the Comptroller may specify.

(3) If the applicant fails to satisfy the Comptroller that those

requirements are met, or to amend the application so as to meet them,

or fails to respond before the end of the specified period, the

Comptroller shall refuse the application.

(4) If it appears to the Comptroller that the requirements for

registration are met, he shall accept the application as eligible for

registration.

(1) The applicant may at any time withdraw his application Withdrawal,

restriction or

or restrict the goods or services covered by the application.

amendment of

application.

(2) Save as provided in sub-article (1), an application may be

amended, at the request of the applicant, only by correcting -

(a)

the name or address of the applicant;

(b)

errors of wording or of copying; or

(c) obvious mistakes, and then only where the correction

does not substantially affect the identity of the trademark or

extend the goods or services covered by the application.

(1) The proprietor of an earlier trademark as referred to in

article 6(2) and article 6(3)(a), and the person authorised under the

relevant law to exercise the rights arising from a protected designation

of origin or geographical indication as referred to in article 6(3)(c)

shall be entitled to file a notice of opposition to the registration of a

trademark before the Comptroller. A notice of opposition may be filed

on the basis of one or more earlier rights, provided that they all belong

to the same proprietor, and on the basis of part or the totality of the

goods or services in respect of which the earlier right is protected or

applied for, and may be directed against part or the totality of the

goods or services in respect of which the contested mark is applied for.

(2) The parties shall be granted, at their joint request, a period of

up to 90 working days from the date of the notification by the Office of

the opposition to the applicant in order to allow for the possibility of a

friendly settlement between the opposing party and the applicant.

(3) The Minister may make regulations in respect of all aspects

relevant to the opposition procedure.

(1) In opposition proceedings pursuant to article 50, where

at the filing date or date of priority of the later trademark, the five-year

period within which the earlier trademark must have been put to

genuine use as provided for in article 26 had expired, at the request of

the applicant, the proprietor of the earlier trademark who has given

notice of opposition shall furnish proof that the earlier trademark has

been put to genuine use as provided for in article 26 during the five-

year period preceding the filing date or date of priority of the later

trademark, or that proper reasons for non-use existed. In the absence of

proof to this effect, the opposition shall be rejected.

(2) If the earlier trademark has been used in relation to only part

of the goods or services for which it is registered, it shall, for the

purpose of the examination of the opposition as provided for in sub-

article (1), be deemed to be registered in respect of that part of the

goods or services only.

(3) Sub-articles (1) and (2) shall also apply where the earlier

trademark is an EU trademark. In such a case, the genuine use of the

EU trademark shall be determined in accordance with Article 18 of

Regulation (EU) No. 2017/1001.

(1) Without prejudice to the right of the parties to seek Procedure for

recourse to the courts, the revocation or declaration of invalidity of a revocation

declaration of

registered trademark may be brought before the Comptroller as invalidity.

provided for under this Act or by sworn application to be filed in the

First Hall of the Civil Court

Provided that invalidity and revocation proceedings may only

be initiated before the Comptroller as from 14th January 2023 or any

date before as may be prescribed by the Minister.

(2) An action for revocation of a registered trademark shall be

brought on any one or more of the grounds provided for in articles 29

and 30.

(3) An action for declaration of invalidity of a registered

trademark shall be brought on

(a) any one or more of the grounds provided for in article

5; and, or

(b)

any one or more of the grounds provided for in article

6

Provided that it shall only be possible to bring an action for

declaration of invalidity of a registered trademark before the

Comptroller on any one or more of the grounds of article 5 and article

6(1) to (3).

(4) An action for revocation or for a declaration of invalidity of a

registered trademark before the Comptroller may only be filed

(a) in the case of sub-articles (2) and (3)(a), by any

natural or legal person and any group or body set up for the

purpose of representing the interests of manufacturers,

producers, suppliers of services, traders or consumers, and

which, under the terms of the law governing it, has the capacity

to sue in its own name and to be sued;

(b) in the case of sub-article (3)(b), by the proprietor of an

earlier trademark as referred to in article 6(2) and article 6(3)(a),

and the person authorised under the relevant law to exercise the

rights arising from a protected designation of origin or

geographical indication as referred to in article 6(3)(c).

(5) An action for revocation or for a declaration of invalidity may

be directed against a part or the totality of the goods or services in

respect of which the contested mark is registered.

(6) An action for a declaration of invalidity may be filed on the

basis of one or more earlier rights, provided they all belong to the same

proprietor.

(7) If an action for invalidity or revocation has been brought

before the Comptroller, it shall not be possible to file for an action on

the same grounds before the First Hall of the Civil Court after the

proceedings before the Comptroller have been concluded

Provided that, when a person brings an action for invalidity or

revocation before the Comptroller, at any stage before the proceedings

are concluded, that person may bring an action for invalidity or

revocation on the same grounds before the First Hall of the Civil Court

as a result of which the proceedings before the Comptroller will

discontinue

Provided further that if an action for invalidity or revocation

has been brought before the First Hall of the Civil Court, it shall not be

possible to file for an action on the same grounds before the

Comptroller.

(1) In proceedings for a declaration of invalidity based on a

registered trademark with an earlier filing date or priority date, if the

proprietor of the later trademark so requests, the proprietor of the

earlier trademark shall furnish proof that, during the five-year period

preceding the date of the action for a declaration of invalidity, the

earlier trademark has been put to genuine use, as provided for in article

26, in connection with the goods or services in respect of which it is

registered and which are cited as justification for the action, or that

there are proper reasons for non-use, provided that the registration

process of the earlier trademark has at the date of the action for a

declaration of invalidity been completed for not less than five years.

(2) Where, at the filing date or date of priority of the later

trademark, the five-year period within which the earlier trademark was

to have been put to genuine use, as provided for in article 26, had

expired, the proprietor of the earlier trademark shall, in addition to the

proof required under sub-article (1), furnish proof that the trademark

was put to genuine use during the five-year period preceding the filing

date or date of priority, or that proper reasons for non-use existed.

(3) In the absence of the proof referred to in sub-articles (1) and

(2), an action for a declaration of invalidity on the basis of an earlier

trademark shall be rejected.

(4) If the earlier trademark has been used in accordance with

article 26 in relation to only part of the goods or services for which it is

registered, it shall, for the purpose of the examination of the action for

a declaration of invalidity, be deemed to be registered in respect of that

part of the goods or services only.

(5) Sub-articles (1) to (4) shall also apply where the earlier

trademark is an EU trademark. In such a case, genuine use of the EU

trademark shall be determined in accordance with Article 18 of

Regulation (EU) No. 2017/1001.

(1) A registered trademark shall be deemed not to have had, Consequences

as from the date of the action for revocation, the effects specified in of

and invalidity.

this Act, to the extent that the rights of the proprietor have been

revoked. An earlier date, on which one of the grounds for revocation

occurred, may be fixed in the decision on the action for revocation, at

the request of one of the parties.

(2) A registered trademark shall be deemed not to have had, as

from the outset, the effects specified in this Act, to the extent that the

trademark has been declared invalid.

Parties to the proceedings or, where appointed, their Communications

representatives, shall designate an official address for all official with

Comptroller.

communications with the Comptroller and shall have an official

address to be situated in the European Economic Area.

(1) Where an application has been accepted as eligible for Registration.

registration, the Comptroller shall register the trademark, unless it

appears to him, having regard to matters coming to his notice after he

accepted the application, that it was accepted in error.

(2) A trademark shall not be registered and the application shall

be deemed to be withdrawn unless any fee prescribed in respect of any

action taken before the registration is paid within the prescribed

period.

(3) A trademark when registered shall be registered as of the date

of filing of the application for registration, and that date shall be

deemed for the purposes of this Act to be the date of registration.

(4) On the registration of a trademark the Comptroller shall

publish the registration in the prescribed manner and issue to the

applicant a certificate of registration

Provided that when an opposition has been received within

the prescribed time the Comptroller shall only publish such

registration in the event the said opposition has been rejected

Provided further that if more than one opposition has been

received and one or more oppositions have been accepted, such

publication shall not take place.

(5) Notwithstanding sub-article (4) above the Comptroller shall

publish the registration of a trademark where an agreement has been

reached following an opposition that there shall be an amendment to

the goods or services in respect of which the trademark applied for is

to be registered

Provided that such registration shall take place only when

such amendment has been effected by the applicant.

(1) A trademark shall be registered for a period of 10 years

from the date of filing of the application.

(2) Registration may be renewed in accordance with article 58 for

further 10-year periods.

(1) Registration of a trademark shall be renewed at the

request of the proprietor of the trademark or of any person authorised

to do so by law or by contract, provided that the renewal fees have

been paid not earlier than six months before the date of expiry.

(2) The Comptroller shall inform the proprietor of the trademark

of the expiry of the registration at least six months before the said

expiry. The Comptroller shall not be held liable for failure to give such

information.

(3) The request for renewal shall be submitted and the renewal

fees shall be paid within a period of not more than six months

immediately preceding the expiry of the registration or of the

subsequent renewal thereof. Failing that, the request may be submitted

within a further period of six months immediately following the expiry

of the registration or of the subsequent renewal thereof. The renewal

fees and an additional fee shall be paid within that further period.

(4) Renewal shall take effect from the day following the date on

which the existing registration expires. The renewal shall be recorded

in the register.

(5) If the registration is not renewed in accordance with the above

provisions, the Comptroller shall remove the trademark from the

register.

(6) Provision may be made by rules for the restoration of the

registration of a trademark which has been removed from the register,

subject to such conditions (if any) as may be prescribed.

(7) The renewal or restoration of the registration of a trademark

shall be published in the prescribed manner.

(1) A registered trademark shall not be altered in the Alteration of a

registered

register, during the period of registration or on renewal.

trademark.

(2) Nevertheless, the Comptroller may, at the request of the

proprietor, allow the alteration of a registered trademark where the

mark includes the proprietor’s name or address and the alteration is

limited to the alteration of that name or address and does not

substantially affect the identity of the mark.

(3) Provision shall be made by rules for the publication of any

such alteration and the making of objections by any person claiming to

be affected by it.

(1) A registered trademark may be surrendered by the Surrender of a

proprietor in respect of any or all of the goods or services for which it registered

trademark.

is registered.

(2)

Provision may be made by rules -

(a)

as to the manner and effect of a surrender; and

(b) for protecting the interests of other persons having a

right in the registered trademark.

For the purposes of this Act, the following definitions apply

Definitions of

certification

marks and

(a) "certification mark" means a trademark which is

collective

marks.

described as such when the mark is applied for and is capable of

distinguishing goods or services which are certified by the

proprietor of the mark in respect of material, mode of

manufacture of goods or performance of services, quality,

accuracy or other characteristics, from goods and services which

are not so certified;

(b) "collective mark" means a trademark which is

described as such when the mark is applied for and is capable of

distinguishing the goods or services of members of an

association which is the proprietor of the mark from the goods or

services of other undertakings.

The provisions of this Act apply to certification marks subject General

to the following provisions which may, by regulations, be amended by disposition.

the Minister.

In relation to a certification mark the reference in the

definition of "trademark" in article 4 (2)(a) to distinguishing goods or

services of one undertaking from those of other undertakings shall be

construed as a reference to distinguishing goods or services which are

certified from those which are not.

(1) Any natural or legal person, including institutions,

authorities and bodies governed by public law, may apply for

certification marks provided that such person does not carry on a

business involving the supply of goods or services of the kind

certified.

(2) Signs or indications which may serve, in trade, to designate

the geographical origin of the goods or services may constitute

certification marks. Such a certification mark shall not entitle the

proprietor to prohibit a third party from using in the course of trade

such signs or indications, provided that third party uses them in

accordance with honest practices in industrial or commercial matters.

In particular, such a mark may not be invoked against a third party who

is entitled to use a geographical name.

(3) The requirements laid down in article 26 shall be satisfied

where genuine use of a certification mark in accordance with article 26

is made by any person who has the authority to use it.

A certification mark shall not be registered if the proprietor

carries on a business involving the supply of goods or services of the

kind certified.

(1) A certification mark shall not be registered if the public

is liable to be misled as regards the character or significance of the

mark, in particular if it is likely to be taken to be something other than

a certification mark.

(2) The Comptroller may accordingly require that a mark in

respect of which application is made for registration includes some

indication that it is a certification mark, and notwithstanding the

provisions of article 49(2), an application may be amended so as to

comply with any such requirement.

An applicant for registration of a certification mark must file

with the Comptroller regulations governing the use of the mark

specifying the person authorised to use the mark, the characteristics to

be certified by the mark, how the certifying body is to test those

characteristics and to supervise the use of the mark, the fees (if any) to

be paid in connection with the operation of the mark and the

procedures for resolving disputes and any further requirements with

which the regulations have to comply as may be established by any

rule made by the Minister.

(1)

A certification mark shall not be registered unless -

Approval of

regulations, etc.

(a)

the regulations governing the use of the mark -

(i) comply with article 67 and any further

requirements imposed by rules; and

(ii) are not contrary to public policy or to accepted

principles of morality; and

(b) the applicant is competent to certify the goods or

services for which the mark is to be registered.

(2) The application shall be deemed to be withdrawn if before the

end of any period as may be prescribed after the date of the application

for registration of a certification mark, the applicant fails to file the

regulations with the Comptroller and pay the prescribed fee.

(1) The Comptroller shall consider

whether

the Requirements.

requirements mentioned in article 68(1) are met.

(2) If it appears to the Comptroller that those requirements are not

met, he shall inform the applicant and give him an opportunity, within

such period as the Comptroller may specify, to make representations or

to file amended regulations.

(3) If the applicant fails to satisfy the Comptroller that those

requirements are met, or to file regulations amended so as to meet

them, or fails to respond before the end of the specified period, the

Comptroller shall refuse the application.

(4) If it appears to the Comptroller that those requirements, and

the requirements for registration are met, he shall accept the

application and shall proceed in accordance with article 56.

The regulations governing the use of a registered certification Regulations to

mark shall be open to public inspection in the same way as the register. be

inspection.

An amendment of the regulations governing the use of a Amendment of

registered collective mark is not effective unless and until the amended regulations.

regulations are filed with the Comptroller and accepted by him.

The assignment or other transmission of a registered

certification mark is not effective without the consent of the

Comptroller.

The provisions of sub-article (7) of article 12 and of sub-

article (2) of article 24 apply in relation to an authorized user of a

registered certificate mark as in relation to a licensee of a trademark.

In infringement proceedings brought by the proprietor of a

registered certification mark, any loss suffered or likely to be suffered

by authorised users shall be taken into account by the Court which

shall give such directions as it thinks fit with regard to the disposal and

distribution of any sum awarded as a remedy for infringement.

Apart from the grounds of revocation provided for in article

29, the registration of a certification mark may be revoked on any of

the following grounds

(a) that the proprietor has begun to carry out such a

business in contravention of article 65;

(b) that the manner in which the mark has been used by

the proprietor has caused it to become liable to mislead the

public in the manner referred to in article 66(1);

(c) that the proprietor has failed to observe, or to secure

the observance of the regulations governing the use of the mark;

(d) that an amendment of the regulations has been made

so that the regulations -

(i)

no longer comply with article 67; or

(ii) are contrary to public policy or to accepted

principles of morality;

(e) that the proprietor is no longer competent to certify

the goods or services for which the mark is registered.

Apart from the grounds of invalidity provided for in articles 5

and 6, the registration of a certification mark may be declared invalid

on the grounds that the mark was registered in breach of the provisions

of articles 65, 66(1) or 68(1).

The provisions of this Act apply to collective marks subject to

the following provisions, which may, by regulations, be amended by

the Minister.

In relation to a collective mark the reference in the definition Signs of which a

of "trademark" in article 4(2)(a) to distinguishing goods or services of collective

may consist.

one undertaking from those of other undertakings shall be construed as

a reference to distinguishing goods or services of members of the

association which is the proprietor of the mark from those of other

undertakings.

(1) Associations of manufacturers, producers, suppliers of Capacity of

services or traders, which, under the terms of the law governing them, Associations

accomplish

have the capacity in their own name to have rights and obligations, to legal

Collective

make contracts or accomplish other legal acts, and to sue and be sued, Marks.

as well as legal persons governed by public law, may apply for

collective marks.

(2) Signs or indications which may serve, in trade, to designate

the geographical origin of the goods or services may constitute

collective marks. Such a collective mark shall not entitle the proprietor

to prohibit a third party from using, in the course of trade, such signs

or indications, provided that third party uses them in accordance with

honest practices in industrial or commercial matters. In particular, such

a mark may not be invoked against a third party who is entitled to use a

geographical name.

(1) A collective mark shall not be registered if the public is Collective mark

liable to be misled as regards the character or significance of the mark, not

misleading as to

in particular if it is likely to be construed as something other than a character

significance.

collective mark.

(2) The Comptroller may accordingly require that a mark in

respect of which application is made for registration includes some

indication that it is a collective mark; and notwithstanding the

provisions of article 49(2), an application may be amended so as to

comply with any such requirement.

(1) An applicant for a collective mark shall submit the Regulations

governing use

regulations governing its use to the Comptroller.

of a collective

mark.

(2) The regulations governing use shall specify at least the

persons authorised to use the mark, the conditions of membership of

the association and the conditions of use of the mark, including

sanctions. The regulations governing use of a mark referred to in

article 79(1) shall authorise any person whose goods or services

originate in the geographical area concerned to become a member of

the association which is the proprietor of the mark, provided that the

person fulfils all the other conditions of the regulations.

(1) A collective mark shall not be registered unless the Approval of

regulations by

regulations governing the use of the mark -

Comptroller.

(a) comply with article 81(2)

and

any

further

requirements imposed by rules; and

(b) are not contrary to public policy or to accepted

principles of morality.

(2) The application shall be deemed to be withdrawn if before the

end of any period as may be prescribed after the date of the application

for registration of a collective mark, the applicant fails to file the

regulations with the Comptroller and pay the prescribed fee.

(1) The Comptroller shall consider

whether

the

requirements mentioned in article 82(1) are met.

(2) If it appears to the Comptroller that those requirements are not

met, he shall inform the applicant and give him an opportunity, within

such period as the Comptroller may specify, to make representations or

to file amended regulations.

(3) If the applicant fails to satisfy the Comptroller that those

requirements are met, or to file regulations amended so as to meet

them, or fails to respond before the end of the specified period, the

Comptroller shall refuse the application.

(4) If it appears to the Comptroller that those requirements, and

the other requirements for registration, are met, he shall accept the

application and shall proceed in accordance with article 56.

The regulations governing the use of a registered collective

mark shall be open to public inspection in the same way as the register.

(1) In addition to the grounds for refusal of a trademark

application provided for in article 5, where appropriate with the

exception of article 5(1)(c) concerning signs or indications which may

serve, in trade, to designate the geographical origin of the goods or

services, and article 6, and without prejudice to the right of the Office

not to undertake examination ex officio of relative grounds, an

application for a collective mark shall be refused where the provisions

of article 61(b), article 79 or article 81 are not satisfied, or where the

regulations governing use of that collective mark are contrary to public

policy or to accepted principles of morality.

(2) An application for a collective mark shall also be refused if

the public is liable to be misled as regards the character or the

significance of the mark, in particular if it is likely to be taken to be

something other than a collective mark.

(3)

An application shall not be refused if the applicant, as a result

of amendment of the regulations governing use of the collective mark,

meets the requirements referred to in sub-articles (1) and (2).

The requirements of article 26 shall be satisfied where Use of

genuine use of a collective mark in accordance with that article is collective

marks.

made by any person who has authority to use it.

(1) The proprietor of a collective mark shall submit to the Amendments to

the regulations

Comptroller any amended regulations governing use.

governing use

of a collective

mark.

(2) Amendments to the regulations governing use shall be

mentioned in the register unless the amended regulations do not satisfy

the requirements of article 81 or involve one of the grounds for refusal

referred to in article 85.

(3) For the purposes of this Act, amendments to the regulations

governing use shall take effect only from the date of entry of the

mention of those amendments in the register.

(1) Article 39(5) and (6) shall apply to every person who has Persons entitled

to bring an

the authority to use a collective mark.

action for

infringement.

(2) The proprietor of a collective mark shall be entitled to claim

compensation on behalf of persons who have authority to use the

collective mark where those persons have sustained damage as a result

of unauthorised use of the collective mark.

In addition to the grounds for the revocation provided for in Additional

articles 29 and 30, the rights of the proprietor of a collective mark shall grounds

revocation –

be revoked on any of the following grounds

collective

marks.

(a) the proprietor does not take reasonable steps to

prevent the mark being used in a manner that is incompatible

with the conditions of use laid down in the regulations governing

use, including any amendments thereto mentioned in the register;

(b) the manner in which the mark has been used by

authorised persons has caused it to become liable to mislead the

public in the manner referred to in article 85(2);

(c) an amendment to the regulations governing use of the

mark has been mentioned in the register in breach of article

87(2), unless the proprietor of the mark, by further amending the

regulations governing use, complies with the requirements of

that article.

In addition to the grounds for invalidity provided for in

article 5, where appropriate with the exception of article 5(1)(c)

concerning signs or indications which may serve, in trade, to designate

the geographical origin of the goods or services, and article 6, a

collective mark which is registered in breach of article 85 shall be

declared invalid unless the proprietor of the mark, by amending the

regulations governing use, complies with the requirements of article

85. PART III - ADMINISTRATIVE AND OTHER

SUPPLEMENTARY PROVISIONS

(1)

(a)

The Comptroller shall maintain a register of

trademarks.

(b) References in this Act to "the register" are to that

register; and references to registration, in particular, in the expression

"registered trademark", are, unless the context otherwise requires, to

registration in that register.

(2)

There shall be entered in the register in accordance with this

Act -

(a)

registered trademarks;

(b) such particulars as may be prescribed of registrable

transactions affecting a registered trademark; and

(c) such other matters relating to registered trademarks

as may be prescribed.

(3) The register shall be kept in such manner as may be

prescribed, and provision shall in particular be made for -

(a)

public inspection of the register; and

(b) the supply of certified or uncertified copies, or

extracts, of entries in the register.

(1) Any person having a sufficient interest may apply for

the rectification of an error or omission in the register

Provided that an application for rectification may not be made

in respect of a matter affecting the validity of the registration of a

trademark.

(2) An application for rectification may be made either to the

Comptroller or to the Court

Provided that if proceedings concerning the trademarks in

question are pending before the Court -

(a)

the application must be made to the Court; and

(b) if the application is made to the Comptroller, he may

at any stage of the proceedings refer the application to the Court.

(3) Except where the Comptroller or the Court directs otherwise

the effect of rectification of the register is that the error or omission in

question shall be deemed never to have been made.

(4) The Comptroller may, on request made in the prescribed

manner by the proprietor of a registered trademark, or a licensee, enter

any change in his name or address as recorded in the register.

(5) The Comptroller may remove from the register any matter

appearing to him to have ceased to have effect.

(6) The applicant or proprietor may divide a national trademark

application or registration into two or more separate applications or

registrations by sending a declaration to the Office and indicating for

each divisional application or registration the goods or services

covered by the original application or registration which are to be

covered by the divisional applications or registrations.

(1) The Minister may by regulations make rules empowering Adaptation of

the Comptroller to do such things as may be necessary to implement entries

classification.

any amended or substituted classification of goods or services for the

purposes of the registration of trademarks, and without prejudice to the

generality of the aforesaid provision may in particular be made for the

amendment of existing entries on the register so as to accord with the

new classification.

(2) Any such power of amendment shall not be exercised so as to

extend the rights conferred by the registration, except where it appears

to the Comptroller that compliance with this requirement would

involve undue complexity and that any extension would not be

substantial and would not adversely affect the right of any person.

(3)

The rules may moreover empower the Comptroller -

(a) to require the proprietor of a registered trademark,

within such time as may be prescribed, to file a proposal for

amendment of the register; and

(b) to cancel or refuse to renew the registration of the

trademark in the event of his failing to do so.

(4) Any such proposal shall be advertised, and may be opposed,

in such manner as may be prescribed.

The Comptroller may require the use of such forms as he may

direct for any purpose relating to the registration of a trademark or any

other proceeding before him under this Act.

(1) Subject to such restrictions as the Minister may by

regulations impose after publication of the registration of a trademark,

the Comptroller shall on request provide a person with such

information and permit him to inspect such documents relating to the

registered trademark, as may be specified in the request.

Any such request must be made in such manner and be

accompanied by such fee as may be prescribed.

(2) Before publication of registration of a trademark, documents

or information constituting or relating to the application shall not be

published by the Comptroller or communicated by him to any person

except -

(a) in such cases and to such extent as may be

prescribed; or

(b)

with the consent of the applicant.

(1) The Comptroller shall not be taken to warrant the

validity of the registration of a trademark under this Act or under any

treaty, convention, arrangement or engagement to which Malta is a

party.

(2) The Comptroller is not subject to any liability by reason of, or

in connection with, any examination required or authorised by this

Act, or any such treaty, convention, arrangement or engagement, or

any report or other proceedings consequent on such examination.

(3) No action shall lie against an Officer of the Comptroller in

respect of any matter for which, by virtue of this article, the

Comptroller is not liable.

In all legal proceedings relating to a registered trademark

(including proceedings for rectification of the register) the registration

of a person as proprietor of a trademark shall be prima facie evidence

of the validity of the original registration and of any subsequent

assignment or other transmission of it.

(1) If in proceedings before the Court the validity of the

registration of a trademark is contested and it is found by the Court

that the trademark is validly registered, the Court shall give judgement

accordingly.

(2) Where the Court has given such a judgement and in

subsequent proceedings –

(a)

the validity of the registration is again questioned;

and

(b) the proprietor obtains a final order or judgement in

his favour,

the proprietor shall be entitled to his costs unless the Court directs

otherwise.

(1)

In proceedings before the Court involving a demand for- Comptroller’s

appearance in

proceedings

(a)

the revocation of the registration of a trademark;

involving the

register.

(b) a declaration of the invalidity of the registration of a

trademark; or

(c)

the rectification of the register,

the Comptroller shall be notified with the proceedings and shall be

entitled to appear and to be heard if so directed by the Court.

(2) Unless otherwise directed by the Court, the Comptroller may,

instead of appearing, file in the record of the case a statement in

writing signed by him, giving particulars of -

(a)

any proceedings before him in relation to the matter

in issue;

(b)

the grounds of any decision given by him affecting it;

(c)

the practice of the Office in like cases; or

(d) such matters relevant to the issues and within his

knowledge as Comptroller as he thinks fit,

and the statement shall be deemed to form part of the evidence in the

proceedings.

(1) Any decision of the Comptroller under this Act, may be Appeals from

appealed from, before the Court of Appeal composed in the manner the

Comptroller’s

provided in sub-article (9) of article 41 of the Code of Organization decision.

and Civil Procedure by application within fifteen days of service of the

Comptroller’s decision.

(2) For the purposes of sub-article (1) "decision" means any act,

other than such acts as may by regulations be prescribed, done by the

Comptroller in exercise of a discretion vested in him by or under this

Act.

(3) The Minister may make rules governing appeals to the Court

of Appeal under this Act, and presenting a scale of costs and fees in

relation to such appeals.

(1) The Minister responsible for the protection of industrial

property may make regulations for the better administration of this

Act, making such rules as are required by any provisions of this Act,

prescribing anything authorised or required by any provision of this

Act to be prescribed, and generally for regulating practice and

procedure under this Act, and in particular provision may be made -

(a) with regard to the manner of filing of applications

and other documents;

(b) for the submission of documents and the filing and

authentication of any translation;

(c)

with regard to the service of documents;

(d) authorising the rectification of irregularities of

procedure;

(e) prescribing time limits for anything required to be

done in connection with any proceeding under this Act;

(f) for the extension of any time limit so prescribed, or

specified by the Comptroller whether or not such time limit has

already expired;

(g) for the division of a national trademark application or

registration by the applicant or proprietor, into two or more

separate applications or registrations;

(h) providing for the

possibility

of

multi-class

applications and registrations;

(i) in the case of multi class registration, for the

possibility of a renewal of registration in respect of only those

goods and services for which a submission of a request for

renewal has been received and for which a payment of fees has

been effected;

(j)

to align legislation following amendment to the

Directive (EU) 2015/2436 of the European Parliament and of the

Council of 16 December 2015 to approximate the laws of the

Member States relating to trademarks.

(1) There shall be paid in respect of applications and other Fees.

matters under this Act such fees as may be prescribed.

(2)

Provision may be made by rules as to -

(a)

the payment of a single fee in respect of two or more

matters;

(b) the circumstances, if any, in which a fee may be

repaid or remitted;

(c) prescribing an additional fee for each class of goods

and services beyond the first class, for the application and

renewal of a trademark;

(d) circumstances where different fees may be charged

or may not be charged at all.

(1) The Comptroller may give directions specifying the Hours of

hours of business of the Industrial Property Office for the purpose of business

business days.

the transaction by the public of business under this Act, and the days

which are business days for that purpose.

(2) Business done on any day after the specified hours of

business, or on a day which is not a business day, shall be deemed to

have been done on the next business day; and where the time for doing

anything under this Act expires on a day which is not a business day,

that time shall be extended to the next business day.

(3) Directions under this article may make different provisions

for different classes of business and shall be published in the

prescribed manner.

Except as may otherwise be prescribed, any act required or Recognition of

authorised by this Act to be done by or in respect of a person in trademark

agents.

connection with the registration of a trademark, or any procedure

relating to a registered trademark, may be done by or in respect of an

agent authorised by that person in writing.

(1) The Minister may make rules requiring the keeping of a The register of

register of persons who act as agent for the purpose of applying for or trademark

agents/

obtaining the registration of trademarks; and in this Act a "registered attorneys.

trademark agent" means a person whose name is entered in the register

kept under this article.

(2) The Minister may make rules regulating the registration of

persons as registered trademark agents, and may in particular -

(a) require the payment of such fees in connection with

such registration as may be prescribed; and

(b) authorise in such cases as shall be specified the

erasure from the register of the name of any person registered as

a registered trademark agent or the suspension of such a

registration.

(3)

Only registered persons may -

(a) carry on a business under any name or other

description which contains the words "registered trademark

agent"; or

(b) in the course of a business otherwise describe or hold

himself out, or permit themselves to be described or held out, as

registered trademark agents.

The provisions of article 588 of the Code of Organization and

Civil Procedure shall apply with regard to registered trademark agents

as they apply with respect to advocates and legal procurators.

The Comptroller may, in accordance with such rules as may

be prescribed, refuse to recognize as agent in respect of any business

under this Act -

(a) a person who not being a registered trademark agent

shall have falsely posed as such;

(b) a person whose name has been erased from and not

restored to, or who is suspended from, the register of trademark

agents on the grounds of misconduct;

(c) a partnership or body corporate of which one of the

partners or directors is a person whom the Comptroller could

refuse to recognize under paragraph (a) or (b) above.

PART IV - CRIMINAL OFFENCES

(1) Any person who with a view to gain for himself or Unauthorised

another, or with intent to cause loss to another, and without the consent use

trademark, etc.,

of the proprietor -

in relation to

goods.

(a) applies to goods or their packaging a sign identical

to, or likely to be mistaken for, a registered trademark; or

(b) sells or lets for hire, offers or exposes for sale or hire

or distributes goods which bear, or the packaging of which bears,

such a sign; or

(c) has in his possession, custody or control in the course

of a business any such goods with a view to the doing of

anything, by himself or another, which would be an offence

under paragraph (b); or

(d) applies a sign identical to, or likely to be mistaken

for, a registered trademark to material intended to be used -

(i)

for labelling or packaging goods;

(ii)

as a business paper in relation to goods; or

(iii) for advertising goods; or

(e) uses, in the course of a business material bearing

such a sign for labelling or packaging goods, or as a business

paper in relation to goods, or for advertising goods; or

(f) has in his possession, custody or control in the course

of a business any such material with a view to the doing of

anything, by himself or another, which would be an offence

under paragraph (e); or

(g) (i) makes an article specifically designed or adapted

for making copies of a sign of or to make a sign likely to be

mistaken for, a registered trademark; or

(ii) has such an article in his possession, custody or

control in the course of a business,

knowing or having reason to believe that it has been, or is to be, used

to produce goods, or material for labelling or packaging goods, as a

business paper in relation to goods, or for advertising goods,

shall be guilty of an offence against this article.

(2)

A person does not commit an offence against this article

unless -

(a) the goods to which the offence refers are goods in

respect of which the trademark is registered; or

(b) the trademark has a reputation in Malta and the use of

the sign takes or would take unfair advantage of, or is or would

be detrimental to, the distinctive character or the repute of the

trademark.

(3) It is a defence for a person charged with an offence against

this article to show that he believed on reasonable grounds that the use

of the sign in the manner in which it was used, or was to be used, was

not an infringement of the registered trademark.

(4) A person guilty of an offence under this article shall be liable

on conviction to imprisonment for a term not exceeding three years or

to a fine (multa) of not more than twenty-three thousand and two

hundred and ninety-five euro (€23,295) or to both such fine and

imprisonment.

(1) Any person who knowing or having reason to believe

that it is false:-

(a) makes, or causes to be made, a false entry in the

register of trademarks; or

(b) makes, or causes to be made, anything falsely

purporting to be a copy of an entry in the register; or

(c) produces or tenders or causes to be produced or

tendered in evidence any such thing,

shall be guilty of an offence against this article.

(2) A person guilty of an offence against this article shall be

liable on conviction to imprisonment for a term not exceeding two

years or a fine (multa) of not more than eleven thousand and six

h u n d r e d a n d f i f t y e u r o ( € 11 , 6 5 0 ) o r t o b o t h s u c h f i n e a n d

imprisonment.

(1)

It shall be an offence against this article for a person -

(a) to falsely represent a trademark as a registered

trademark; or

(b) to make a false representation as to the goods or

services for which a trademark is registered, knowing or having

reason to believe that the representation is false.

(2) For the purposes of this article, the use in Malta in relation to

a trademark -

(a)

of the word "registered"; or

(b) of any other word or symbol importing a reference,

express or implied, to registration, shall be deemed to be a

representation as to registration under this Act unless it is shown

that the reference is to registration elsewhere than in Malta and

that the trademark is in fact so registered for the goods or

services in question.

(3) A person guilty of an offence against this article shall be

liable on conviction to a fine (multa) of not more than eleven thousand

and six hundred and fifty euro (€11,650).

(1) A person shall not without the authority of the President Unauthorised

use in connection with any business any device, emblem or title in use

devices,

such a manner as to be calculated to lead to the belief that he is emblems, etc.

employed by, or supplies goods or services to, the President.

(2) Any person who contravenes the provisions of sub-article (1)

shall be guilty of an offence against this article and shall on conviction

be liable to a fine (multa) of not more than six thousand and nine

hundred and ninety euro (€6,990).

The Court may, moreover, in the cases referred to in article Delivery up of

109, on the demand of the prosecution, order that the machinery or infringing

articles, etc.

other industrial means or contrivances used in contravention of the

rights of the proprietors of the trademarks, the infringing articles, and

the apparatus destined for their production, be forfeited, wholly or in

part, and delivered to the holder of the trademark, without prejudice to

any other right to relief under this Act.

Pending any proceedings for any one of the offences referred Powers of

to in this Part, any Magistrate, if he is satisfied by information on oath Magistrates.

that there is reasonable cause to suspect that any goods or things by

means of, or in relation to which the offence has been committed, are

in any house or premises of the accused, or are in his possession or

under his control in any other place, may, by a warrant under his hand,

direct any Officer of the Police to be named in the warrant, to enter any

house, premises or place, also to be named therein, and there to search

for, seize, and remove such goods or things.

If the owner of any goods or things, which, if he were Where owner of

convicted of any of the offences referred to in this Part, would be liable goods

unknown.

to forfeiture, is unknown or cannot be found, any Magistrate may in

the like manner and in the circumstances required in the last preceding

article, issue the said warrant.

The goods and things so seized shall be produced before the

Court of Magistrates sitting as a court of criminal judicature, and such

Court shall determine whether they are liable to forfeiture under this

Act.

(1) In the case referred to in article 114, the Court shall

order the issue of banns which shall be published twice, with an

interval of at least eight days, in the Gazette, and posted up at the

entrance of the building wherein the Court sits, and in any other place

which the court may deem fit, stating that the goods or things seized

shall be forfeited, unless at the time and place named in the banns the

owner of such goods or things or other person interested in such goods

or things attends before the Court at the time and place indicated in the

banns and shows cause to the contrary.

(2) If the owner or any person on his behalf, or other person

interested in the said goods or things, fails to attend at the time and

place named in the banns to show cause to the contrary, it shall be

lawful for the Court to direct that such goods or things or any of them

be forfeited.

The Court may direct that the goods or things so forfeited be

destroyed or disposed of, after the trademarks or other trade

descriptions have been obliterated from them, and may also direct that,

out of the net proceeds which may be realized by the disposal of such

goods or things and up to the amount thereof, any persons who, being

in good faith, were injured by the forfeiture, be awarded compensation

for any loss caused to them.

Criminal actions under this Act shall be barred by the lapse of

criminal actions.

three years from the day on which the act constituting the offence was

committed, if the person to whose prejudice the act was committed,

had no previous knowledge thereof; in all other cases the period of

limitation shall be one year from the day on which such person became

aware of that act.

The provisions relating to the use of forged marks shall not

apply to the use of any mark of manufacture or description used in

trade to indicate goods of a particular class, or the manufacture thereof

by any particular method, where, at the time of the promulgation of

this Act, such mark of manufacture or description was lawfully and

generally applied for the above-mentioned purpose

Provided that where such mark of manufacture or description

includes the name of a place or country and the goods are not produced

in the place or country indicated in the mark of manufacture or

description so used, the provisions of this article shall not apply, unless

there is added to the mark of manufacture or description, immediately

before or after the name of the said place or country, in an equally

conspicuous manner, the name of the place or country in which the

goods were actually made or produced, and unless there is also stated

that the goods were made or produced in that place or country.

Any person who falsely claims to be a registered trademark Person falsely

agent when he is not so registered in accordance with article 105, shall representing

himself as a

be guilty of an offence against this article and shall on conviction be registered

trademark

liable to a fine (multa) of not more than one thousand and one hundred agent.

and sixty-five euro (€1,165).

The provisions of this Part shall apply without prejudice to the Right to

right of any person to claim damages in consequence of any Act damages

affected.

constituting an offence.

No proceedings shall be instituted against any person in the Employer and

service of another person, if, he shows that in good faith, he acted in employee.

obedience to the instructions of his employer, and, on being questioned

by the Police, gives full information relating to his employer and of the

facts of the case as known to him.

PART V - MISCELLANEOUS ON CIVIL PROCEEDINGS AND

ACTIONS

In any civil proceedings under this Act if a question arises as Burden of

to the use to which a registered trademark has been put, the burden of proving

trademark.

proof that a particular use has been made shall lie on the proprietor.

Civil actions under this Act shall be barred by the lapse of five Limitations of

years in all cases in which no other period within which such actions civil actions.

may be brought is fixed in this Act.

PART VI - INTERNATIONAL MATTERS

SECTION 1

The Paris Convention

(1)

In this Part –

The Paris

Convention.

(a) "Convention country" means a country, other than

Malta, which is a party to that Convention; and

(b) "the Paris Convention" means the Paris Convention

for the Protection of Industrial Property of 20 March 1883, as

revised or amended from time to time.

(2) The Minister may make regulations to make provision, as

appear to him appropriate in consequence of any revision or

amendment of the Paris Convention after the passing of this Act to

enable Malta to comply with any provisions of such amendment, and

such regulations may in particular provide that any of the provisions of

Part II of this Act shall no longer apply or shall apply with such

amendments as may be required.

(1) References in this Act to a trademark which is entitled

to protection under the Paris Convention as a well-known trademark

are to a mark which is well-known in Malta as being the mark of a

person who is a national of a Convention country, or is domiciled in, or

has a real and effective industrial or commercial establishment in a

Convention country, whether or not that person carries on business, or

has any goodwill, in Malta, and reference to the proprietor of such a

mark shall be construed accordingly.

(2) Subject to the provisions of article 11, the proprietor of a

trademark which is entitled to protection under the Paris Convention as

a well-known trademark is entitled to restrain by injunction the use in

Malta of a trademark which, or the essential part of which, is identical

or similar to his mark, in relation to identical or similar goods or

services, where the use is likely to cause confusion.

(3) Nothing in sub-article (2) shall affect the continuation of any

bona fide use of a trademark begun before the coming into force of the

Trademarks Act.

(1) A trademark which consists of or contains the flag of a

Convention country shall not be registered without the authorisation of

the competent authorities of that country, unless it appears to the

Comptroller that use of the flag in the manner proposed is permitted

without such authorisation.

(2) A trademark which consists of or contains the armorial

bearing or any other State emblem of a Convention country which is

protected under the Paris Convention shall not be registered without

the authorisation of the competent authorities of that country.

(3) A trademark which consists of or contains an official sign or

hallmark indicating control and warranty adopted by a Convention

country shall not, where the sign or hall mark is protected under the

Paris Convention, be registered in relation to goods or services of the

same, or a similar kind, as those in relation to which it indicates

control and warranty, without the authorisation of the competent

authorities of the country concerned.

(4) The provisions of this article relative to national flags and

other State emblems, and official signs or hallmarks apply equally to

anything which from a heraldic point of view imitates any such flag or

other emblem, or sign or hallmark.

(5) Nothing in this article prevents the registration of a trademark

on the application of a national of a country who is authorised to make

use of a State emblem or official sign or hallmark, of that country,

notwithstanding that it is similar to that of another country.

(6) Where by virtue of this article the authorisation of the

competent authorities of a Convention country is or would be required

for the registration of a trademark, those authorities are entitled to

restrain any use of the mark in Malta without their authorisation.

(1) This article applies to the armorial bearing, flags or Emblems, etc.,

other emblems, and the names and their abbreviations, of international of

international

intergovernmental organisations of which one or more Convention organisations

Article 6ter.

countries are members.

(2) A trademark which consists of or contains any such emblem,

abbreviation or name which is protected under the Paris Convention

shall not be registered without the authorisation of the international

organisation concerned, unless it appears to the Comptroller that the

use of the emblem, abbreviation or name in the manner proposed -

(a) is not such as suggests to the public that a connection

exists between the organisation and the trademark; or

(b) is not likely to mislead the public as to the existence

of a connection between the user and the organisation.

(3) The provisions of this article relative to emblems of an

international organisation apply equally to anything which from a

heraldic point of view imitates any such emblem.

(4) Where by virtue of this article the authorisation of an

international organisation is or would be required for the registration

of a trademark, that organisation is entitled to restrain any use of the

mark in Malta without its authorisation.

(5) Nothing in this article affects the right of a person whose bona

fide use of the trademark in question began before 1st January 2000.

(1) For the purposes of article 127 State emblems of a Notification

Convention country (other than the national flag), and official signs or under

6ter of the

hallmarks, shall be regarded as protected under the Paris Convention Convention.

only if, or to the extent that –

(a) the country in question has notified Malta in

accordance with Article 6ter (3) of the Convention that it desires

to protect that emblem, sign or hallmark;

(b)

the notification remains in force; and

(c) Malta has not objected to it in accordance with

Article 6ter (4) or any such objection has been withdrawn.

(2) For the purposes of article 128 the emblems, abbreviations

and names of an international organisation shall be regarded as

protected under the Paris Convention only if, or to the extent that -

(a) the organisation in question has notified Malta in

accordance with Article 6ter (3) of the Convention that it desires

to protect that emblem, abbreviation or name;

(b)

the notification remains in force; and

(c) Malta has not objected to it in accordance with

Article 6ter (4) or any such objection has been withdrawn.

(3) Notification under Article 6ter (3) of the Paris Convention

shall have effect only in relation to applications for registration made

more than two months after the receipt of the notification.

(4) The Comptroller shall keep and make available for public

inspection by any person, as prescribed in the regulations, a list of the

state emblems and official signs or hallmarks, and the emblems,

abbreviations and names of international organisations, which are for

the time being protected under the Paris Convention by virtue of

notification under Article 6ter (3).

(1) The following provisions apply where an application for

registration of a trademark is made by a person who is an agent or

representative of a person who is the proprietor of the mark in a

Convention country.

(2) The proprietor may by sworn application before the First Hall

of the Civil Court -

(i) demand a declaration of invalidity of the

registration; or

(ii) demand the rectification of the register so as to

substitute his name as the proprietor of the registered

trademark.

(3) The proprietor may restrain any use of the trademark in Malta

which is not authorised by him.

(4) Sub-articles (2) and (3) shall not apply if, or to the extent that,

the agent or representative shows that his actions were authorised by

the proprietor.

(5) An application under sub-article (2) must be made within

three years of the proprietor becoming aware of the registration; and

no injunction shall be granted under sub-article (3) in respect of a use

in which the proprietor has acquiesced for a continuous period of three

years or more.

SECTION 2

The Madrid System for the International

Registration of Trademarks

In this Part –

The Madrid

Protocol.

"basic application" means an application for registration of a mark,

filed with the Comptroller under this Act, and which is used as a basis

for the filing of an international application under the Madrid Protocol;

"basic registration" means a mark registered by the Comptroller

under this Act, and which is used as the basis for the filing of an

international application under the Madrid Protocol;

"Common Regulations" means the Common Regulations under the

Madrid Agreement and Madrid Protocol;

"international application" means an application to obtain

registration of a mark under the Madrid Protocol;

"the International Bureau" means the International Bureau of the

World Intellectual Property Organisation;

"international trademark (Malta)" means a trademark which is

entitled to protection in Malta under that Protocol;

"International Register" means the official collection of data

concerning international registrations of marks maintained by the

International Bureau;

"Madrid agreement" means the Madrid Agreement concerning the

international Registration of Marks of April 14, 1891;

"the Madrid Protocol" means the Protocol relating to the Madrid

Agreement concerning the International Registration of Marks adopted

at Madrid on 27 June, 1989.

(1) The Minister may by Order make such provisions as

may be necessary for giving effect in Malta to the provisions of the

Madrid Protocol or any other regional or international registration

systems concerning trademarks and without prejudice to the generality

of the foregoing.

(2)

The Order may, in particular, be made with respect to -

(a) the making of applications for international

registrations by way of the Industrial Property Office as the

Office of origin;

(b) the procedures to be followed where the basic Malta

application or registration fails or ceases to be in force;

(c) the procedures to be followed where the Industrial

Property Office receives from the International Bureau a request

for extension of protection to Malta;

(d) the effects of a successful request for extension of

protection to Malta;

(e) the transformation of an application for an

international registration or an international registration into a

national application for registration;

(f) the communication

of

information

to

the

International Bureau;

(g) the payment of fees and amounts prescribed in

respect of applications for international registrations, extensions

of protection and renewals.

(3) Without prejudice to the generality of sub-article (1),

provision may be made by regulations under this article applying in

relation to "an international trademark (Malta)" the provisions of

article 25 and of articles 108 to 122.

PART VIII - TRANSITORY PROVISIONS

(1)

In this Part -

"existing registered mark" means a trademark, registered under the

Ordinance and under the Trademarks Act immediately before the Cap. 416.

commencement of this Act;

"former register" means the register kept under the Trademarks Act; Cap. 416.

"new register" means the register kept under this Act.

(2)

For the purposes of this Part -

(a) an application shall be treated as pending on the

commencement of this Act if it was made but not finally

determined before commencement; and

(b) the date on which it was made shall be taken to be the

date of filing under the Trademarks Act.

(1) Existing registered marks shall, on the commencement Existing

of this Act, be transferred to the new register and subject to the registered

marks.

provisions of this Part, shall have effect as if they were registered

under this Act.

(2) Existing registered marks registered as a series under article

91(2) and (3) of the Ordinance and which are still valid before the

coming into force of this Act, shall be similarly registered in the new

register.

(1) Proceedings which are pending on the commencement Proceedings

of this Act shall be dealt with under the legislation under which they under

law.

were instituted and any necessary alteration pursuant to such

proceedings shall be made to the new register.

(2) A disclaimer or limitation entered on the former register in

relation to an existing registered mark immediately before the

commencement of this Act shall be transferred to the new register and

have effect as if entered on the register in pursuance of article 18.

(1) Upon the coming into force of this Act, articles 12 to 17 Effects of

shall apply in relation to an existing registered mark and subject to registration

infringement.

sub-article (2) hereof, article 19 shall apply in relation to any

infringement of an existing registered mark committed after the

commencement of this Act.

(2) After the coming into force of this Act, it shall not be an

infringement of an existing registered mark to continue with any use

which did not amount to infringement of the existing registered

trademark under the Ordinance and under the Trademarks Act.

Article 21 shall apply to infringing goods, material or articles

whether made before or after the commencement of this Act.

Article 41 shall also apply to licences granted and to

infringements committed before the commencement of this Act.

The obligations under article 34 shall apply to transactions

and events occurring after the commencement of the Trademarks Act

in relation to an existing registered trademark and the Ordinance shall

continue to apply in relation to transactions and events which occurred

before the commencement of said Act.

Articles 39 and 40(2) shall apply only in relation to licences

granted after the commencement of the Trademarks Act.

(1) An application for registration of a mark under the

Trademarks Act which is pending on the commencement of this Act

shall be dealt with under the Trademarks Act subject to the other

provisions of this article, and, when registered, the mark shall be

treated for the purposes of this Part as an existing registered mark.

(2) The power of the Minister under article 101 to make rules

regulating practice and procedure, and in relation to the matters

mentioned in sub-article (2) of that article, is exercisable in relation to

such an application; and different provision may be made for such

applications from that made for other applications.

(1) In the case of a pending application for registration for

which the applicant or his representative has not received any

communication from the Office relating to the registrability of the

application before the commencement of this Act, the applicant may

give notice to the Comptroller claiming to have the registrability of the

mark determined in accordance with the provisions of this Act.

(2) The notice must be in the prescribed form, be accompanied by

the appropriate fee and be given no later than six months after the

commencement of this Act.

(3) Notice duly given shall be irrevocable and shall have the

effect that the application shall be treated as if made immediately after

the commencement of this Act.

(1) The Trademarks Act, hereinafter referred to as "the

repealed Act", is hereby repealed, and any references in any law to the

repealed Act shall be construed as references to this Act.

(2)

Notwithstanding the provisions of sub-article (1)

(a) the repealed Act shall remain in force for the purpose

of any act, decision, action or proceedings taken in respect of any

breach of the repealed Act that occurred or were instituted prior

to the coming into force of this Act; and

(b) any subsidiary legislation made under the provisions

of the repealed Act shall, until other provision is made under or

by virtue of this Act, continue in force and have effect as if it was

made under this Act.

Passed by the House of Representatives at Sitting No. 215 of the

3rd April, 2019.

ANĠLU FARRUGIA

Speaker

RAYMOND SCICLUNA

Clerk of the House of Representatives

€5.76