TRADEMARKS ACT *

TRADEMARKS

CHAPTER 416

TRADEMARKS ACT *

To regulate Trademarks

1st January, 2001

ACT XVI of 2000 , as amended by Act IX of 2003 ; and Legal Notices

181 and 186 of 2006, and 426 of 2007 .

PART I

PRELIMINARY

The short title of this Act is the Trademarks Act.

COLLECTIVE MARKS

General

1. The provisions of this Act apply to collective marks

subject to the following provisions which may, by regulations, be

amended by the Minister.

Signs of which a collective mark may consist

2. In relation to a collective mark the reference in the

definition of "trademark" in article 2 to distinguishing goods or

services of 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.

Indication of geographical origin

3. Notwithstanding article 4(1)(c), a collective mark which

consists of signs or indications which may serve, in trade, to

designate the geographical origin of the goods or services may be

registered

Provided that the proprietor of such a mark shall not be

entitled to prohibit the use of the signs or indications in accordance

with honest practices in industrial or commercial matters

particularly by a person who is entitled to use a geographical name.

Mark not to be misleading as to character or significance

4. (1) A collective 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 construed as something other

TRADEMARKS

than a 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 36(2), an application may be amended so as to

comply with any such requirement.

Regulations governing use of collective mark

5. An applicant for registration of a collective mark must file

with the Comptroller regulations governing the use of the mark

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

membership of the association and, where they exist, the conditions

for the use of the mark, as well as any sanctions against misuse and

any further requirements with which the regulations have to comply

as may be established by any rule made by the Minister.

Approval of regulations by Comptroller

6. (1) A collective mark shall not be registered unless the

regulations governing the use of the mark -

(a) comply with paragraph 5(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.

7. (1) The Comptroller shall consider

whether

the

requirements mentioned in paragraph 6(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 37.

Regulations to be open to inspection

8. The regulations governing the use of a registered collective

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

register.

Amendment of regulations

9. An amendment of the regulations governing the use of a

TRADEMARKS

registered collective mark is not effective unless and until the

amended regulations are filed with the Comptroller and accepted by

him.

Infringement: rights of authorised users

10. The provisions of sub-article (6) of article 10 and of sub-

article (2) of article 19 apply in relation to an authorised user of a

registered collective mark as in relation to a licensee of a

trademark.

11. (1) The following provisions have effect as regards the

rights of an authorised user in relation to infringement of a

registered collective mark.

(2) An authorised user is entitled, subject to any agreement to

the contrary between him and the proprietor, to call on the

proprietor to take infringement proceedings in respect of any matter

which affects his interests.

(3) If the proprietor refuses to do so, or fails to do so within

two months after being called upon, the authorised user may bring

the proceedings in his own name as if he were the proprietor.

(4) Where infringement proceedings are brought by virtue of

this paragraph, the authorised user may not, without the leave of

the Court, proceed with the action unless the proprietor is joined in

the suit.

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

registered collective 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.

Grounds for revocation of registration

12. Apart from the grounds of revocation provided for in

article 42, the registration of a collective mark may be revoked on

the ground -

(a) 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 paragraph 4(1),

or

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

the observance of, the regulations governing the use of

the mark, or

(c) that an amendment of the regulations has been made so

that the regulations -

(i) no longer comply with paragraph 5, or

(ii) are contrary to public policy or to accepted

principles of morality.

Grounds for invalidity of registration

13. Apart from the grounds of invalidity provided for in article

43, the registration of a collective mark may be declared invalid on

the ground that the mark was registered in breach of the provisions

TRADEMARKS

of paragraph 4(1) or 6(1) of this Schedule.

In this Act, unless the context otherwise requires -

"business" includes a trade or profession;

"Comptroller" means the Comptroller of Industrial Property 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" means the European Union referred to in the

Treaty;

"infringement proceedings" in relation to a registered trademark,

includes proceedings under article 16;

"Member State" means a state which i s a member of the

European Union;

"Minister" means the Minister responsible for the protection of

Industrial Property;

"Paris Convention" means the convention referred to in article 49

of this Act;

"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 37(4);

"register" means the register of trademarks kept under this Act

and includes the register of trademarks kept under the Industrial

Property (Protection) Ordinance, partly repealed by this Act;

"trade" includes any business or profession;

"trademark" means any sign capable of being represented

graphically which is capable of distinguishing goods or services of

one undertaking from those of other undertakings. A trademark

may, in particular, consist of words (including personal names),

figurative element, letters, numerals or the shape of goods or their

packaging

Provided that for the purpose of this Act "any sign capable

of being represented graphically" includes any sign capable of

*Repealed by Act XII of 2019

TRADEMARKS

being put down in words;

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

Union Act.

(2)

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

the context otherwise requires, reference to a collective

mark or certification mark referred to respectively in

articles 45 and 46.

(b) References in this Act to use (or any particular

description of use) of a trademark or of a sign identical

with, similar to or likely to be mistaken for a

trademark, include use (or that description of use)

otherwise than by means of a graphic representation.

PART II

REGISTERED TRADEMARKS

Introductory

CERTIFICATION MARKS

General

1. The provisions of this Act apply to certification marks

subject to the following provisions which may, by regulations, be

amended by the Minister.

Signs of which a certification mark may consist

2. In relation to a certification mark the reference in the

definition of "trademark" in article 2 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.

Indication of geographical origin

3. Notwithstanding article 4(1)(c), a certification mark which

consists of signs or indications which may serve, in trade, to

designate the geographical origin of the goods or services may be

registered

Provided that the proprietor of such a mark is not entitled

to prohibit the use of the signs or indications in accordance with

honest practices in industrial or commercial matters (in particular,

by a person who is entitled to use a geographical name).

Nature of proprietor’s business

4. 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.

Mark not to be misleading as to character or significance

5. (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 36(2), an application may be amended so as to

comply with any such requirement.

Regulations governing use of certification mark

6. 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

TRADEMARKS

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.

Approval of regulations, etc.

7. (1) A certification mark shall not be registered unless -

(a) the regulations governing the use of the mark -

(i) comply with paragraph 6(2) 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.

8. (1) The Comptroller shall consider

whether

the

requirements mentioned in paragraph 7(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 need

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 37.

Regulations to be open to inspection

9. The regulations governing the use of a registered

certification mark shall be open to public inspection in the same

way as the register.

Amendment of regulations

10. An amendment of the regulations governing the use of a

registered certification mark is not effective unless and until the

amended regulations are filed with the Comptroller and accepted by

him.

Consent to assignment of registered certification mark

11. The assignment or other transmission of a registered

certification mark is not effective without the consent of the

Comptroller.

TRADEMARKS

Infringement: right of authorised users

12. The provisions of sub-article (6) of article 10 and of sub-

article (2) of article 19 apply in relation to an authorized user of a

registered certificate mark as in relation to a licensee of a

trademark.

13. 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.

Grounds for revocation of registration

14. Apart from the grounds of revocation provided for in

article 42, the registration of a certification mark may be revoked

on the ground -

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

business in contravention of paragraph 4,

(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 paragraph 5(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 paragraph 6, 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.

Grounds for invalidity of registration

15. Apart from the grounds of invalidity provided for in article

43, the registration of a certification mark may be declared invalid

on the ground that the mark was registered in breach of the

provisions of paragraph 4, 5(1) or 7(1) of this Schedule.

A registered trademark is a property right obtained by the

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

registered trademark has the rights and remedies provided by this

Grounds for refusal of registration

(1)

The following shall not be registered as trademarks -

(a) signs which do not fall within the definition of

trademarks in article 2;

(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 services, or other characteristics of 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

Provided that a trademark shall not be refused registration

by virtue of paragraph (b), (c) or (d) above if, before the date of

application for registration, it has in fact acquired a distinctive

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

(2) A sign shall not be registered as a trademark if it consists

exclusively of -

(a) the shape which results from the nature of the goods

themselves,

(b) the shape of goods which is necessary to obtain a

technical result, or

(c) the shape which gives substantial value to the goods.

TRADEMARKS

(3)

A trademark shall not be registered if it is -

(a) contrary to public policy or to accepted principles of

morality, or

(b) of such a nature as to deceive the public or likely to

deceive the public as to the nature, quality or

geographical origin of the goods or service or in any

other manner.

(4) A trademark shall not be registered if or to the extent that

its use is prohibited in Malta by any enactment or rule of law.

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

or referred to, in article 5.

(6) A trademark shall not be registered if, or to the extent that,

the application is made in bad faith.

(1)

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.

(2) A trademark which consists of a representation of the

national flag of Malta shall not be registered.

(3) 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.

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

article 51 or article 52

Provided that the Minister may by regulation 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.

(1) A trademark shall not be registered if it is identical

with an earlier trademark and the goods or services for which the

trademark is applied for are identical with the goods or services for

which the earlier trademark is protected.

(2)

A trademark shall not be registered if because it is either

TRADEMARKS

identical with an earlier trademark and is to be registered for goods

or services similar to those for which the earlier trademark is

protected, or it is similar to an earlier trademark and is to be

registered for goods or services identical with or similar to those

for which the earlier trademark is protected, there exists a

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

likelihood of association by the public with the earlier trademark

Provided that the mere association without the likelihood

of confusion shall not prevent a mark from being registered.

(3)

A trademark which -

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

(b) is to be registered for goods or services which are not

similar to those for which the earlier trademark is

protected,

shall not be registered if, or to the extent that, the earlier trademark

has reputation in Malta and the use of the later mark without due

cause would take unfair advantage of, or be detrimental to, the

distinctive character or the repute of the earlier trademark.

(4) A trademark shall not be registered if, or to the extent that,

its use in Malta is liable to be prevented -

(a) by virtue of any rule of law protecting an unregistered

trademark or other sign used in the course of trade, or

(b) by virtue of an earlier right other than those referred to

in paragraph (a) hereof or in sub-articles (1) to (3) in

particular by virtue of the law of copyright, or

registered designs.

A person thus entitled to prevent the use of a trademark is

referred to in this Act as "the proprietor of an earlier right" in

relation to the trademark.

(5) Nothing in this article prevents the registration of a

trademark where the proprietor of the earlier trademark or the

proprietor of an earlier right consents to the registration.

(1)

In this Act an "earlier trademark" means -

(a) a registered trademark, which has a date of application

for registration earlier than that of the trademark in

question, taking account, where appropriate, of the

priorities claimed in respect of the trademarks,

(b) a trademark which, at the date of application for

registration of the trademark in question or (where

appropriate) of the priority claimed in respect of the

application, was entitled to protection under the Paris

Convention as a well-known trademark.

(2) Subject to its being so registered, references in this Act to

an earlier trademark includes a trademark in respect of which an

application for registration has been made and which, if registered,

would be an earlier trademark by virtue of sub-article 1(a).

(3)

A trademark as is referred to in sub-article (1)(a) whose

TRADEMARKS

registration expires shall continue to be taken into account in

determining the registrability of a later mark for a period of one

year after the expiry thereof. However, if the Comptroller is

satisfied that there was no bona fide use of the mark during the two

years immediately preceding the expiry no account shall be taken

of the expired mark.

(1) The Minister may make regulations providing that a

trademark shall not be refused registration on a ground mentioned

in article 6.

(2) Such regulations may make such consequential provision

as appears to the Minister appropriate with respect to -

(a) the carrying out by the Comptroller of searches of

earlier trademarks, and

(b) the persons by whom an application for declaration of

invalidity may be made on the grounds specified in

article 43(2).

(3) Regulations making such provision as is mentioned in sub-

article (2)(a) may direct that the provisions of article 35 in so far as

they require a search to be carried out shall not have effect.

(4) Regulations making such provision as is mentioned in sub-

article (2)(b) may provide that article 43(3) in so far as it provides

that any person may make an application for a declaration of

invalidity shall have effect subject to the provisions of the order.

(5) Regulations under this article may contain such transitory

provisions as appear to the Minister to be appropriate.

Effects of a registered trademark

(1) The proprietor of a registered trademark has exclusive

rights in the trademark. Such rights are infringed by such use of the

trademark in Malta as is specified in article 10 without the consent

of the proprietor.

(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 37(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 72 shall be committed by

anything done before the date of publication of the

registration.

(1) A person infringes a registered trademark if he uses in

the course of trade a sign which is identical with the trademark in

relation to goods or services which are identical with those for

which it is registered.

(2)

A person infringes a registered trademark if he uses in the

TRADEMARKS

course of trade a sign where because -

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

relation to goods or services similar to those for which

the trademark is registered, or

(b) the sign is similar to the trademark and is used in

relation to goods or services identical with or similar

to those for which the trademark is registered,

there exists a likelihood of confusion on the part of the public,

including the likelihood of association with the trademark

Provided that the mere association without the likelihood

of confusion shall not be considered as constituting an

infringement.

(3) A person infringes a registered trademark if he uses in the

course of trade a sign which -

(a) is identical with or similar to the trademark, and

(b) is used in relation to goods or services which are not

similar to those for which the trademark is registered,

where the trademark has a reputation in Malta and the use of the

sign, being without due cause, takes unfair advantage of, or is

detrimental to, the distinctive character or the repute of the

trademark.

(4) For the purposes of this article a person uses a sign if, in

particular, he -

(a) affixes it to the goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the

market or stocks them for those purposes under the

sign, or offers or supplies services under the sign;

(c) imports or exports goods under the sign; or

(d) uses the sign on business papers or in advertising.

(5) 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.

(6) Nothing in the preceding provisions of this article shall be

construed as preventing the use of a registered trademark by any

person for the purpose of identifying goods or services as those of

the proprietor or a licensee.

However, any such use otherwise than in accordance with honest

practices in industrial or commercial matters shall be treated as

infringing the registered trademark if the use without due cause

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

character or repute of the trademark.

TRADEMARKS

(1) A registered trademark is not infringed by the use of

another registered trademark in relation to goods or services for

which the latter is registered.

(2)

A registered trademark is not infringed by -

(a) the use by a person of his own name or address,

(b) the use of indications concerning the kind, quality,

quantity, intended purpose, value, geographical origin,

the time of production of goods or of rendering of

services, or other characteristics of goods or services,

or

(c) the use of the trademark where it is necessary to

indicate the intended purpose of a product or service,

in particular as accessories or spare parts

Provided the use is in accordance with honest practices in

industrial or commercial matters.

(3)

(a) A registered trademark is not infringed by the use in

the course of trade in Malta of an earlier right.

(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; and

(iii) an earlier right shall be regarded as applying if,

or to the extent that, its use is protected by virtue

of any rule of law.

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

its use in relation to goods bearing that trademark which have been

put on the market by the proprietor or with his consent.

(2) The provisions of sub-article (1) shall not apply where there

is legitimate reasons for the proprietor to oppose further

commercialisation of the goods particularly where the condition fo

the goods is changed or impaired after they have been put on the

market.

(3) For the purposes of this article "market" means the market

in Malta and as from the 1st May 2004, the market in any Member

State.

(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

TRADEMARKS

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 9 shall be

restricted accordingly.

Infringement proceedings

(1) Subject to the provisions of articles 28 and 29, 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 apply to

the Court for an order for the delivery up to him, or such other

person as the Court may direct, of 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 18; 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 19.

(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

(1) F’dan l-Att, il-frażijiet ''oġġetti kontravvenjenti'',

''materjal kontravvenjenti'' u ''ħwejjeġ kontravvenjenti'' għandhom

jiftiehmu skont dawn is-subartikoli li ġejjin ta’ dan l-artikolu.

(2) Oġġetti jkunu "oġġetti kontravvenjenti'', għar-rigward ta’

trademark reġistrata, jekk l-oġġetti jew l-ippakkettjar tagħhom

jġibu fuqhom sinjal identiku jew jixbah lil dik it-trademark u -

(a) l-applikazzjoni tas-sinjal għall-oġġetti jew l-

ippakkettjar tagħhom jkun kontravvenzjoni tat-

trademark reġistrata, jew

(b) l-oġġetti jkunu qed jiġu proposti li jiġu importati

f’Malta u l-applikazzjoni f’Malta tas-sinjal dwarhom

jew l-ippakkettjar tagħhom jkun kontravvenzjoni tat-

trademark reġistrata, jew

(ċ) is-sinjal jkun xort’oħra intuża għar-rigward tal-oġġetti

b’mod li jikkontravvjeni t-trademark reġistrata.

(3) Materjal jkun "materja kontravvenjenti'', għar-rigward ta’

trademark reġistrata, jekk iġibu fuqhom sinjal identiku jew jixbah

lil dik it-trademark u -

(a) ikun użat għat-tikkettjar jew l-ippakkettjar ta’ oġġetti,

bħala kartolerija kummerċjali, jew għar-reklamar ta’

oġġetti jew servizzi, b’mod li jikkontravvjeni t-

trademark reġistrata, jew

(b) ikun intiż li hekk jintuża u dak l-użu jkun

jikkontravvjeni t-trademark reġistrata.

(4)

"Ħwejjeġ kontravvenjenti'', għar-rigward ta’ trademark

TRADEMARKS

reġistrata, tfisser ħwejjeġ -

(a) li jkunu speċifikament disinjati jew adattati għall-

għemil ta’ kopji ta’ sinjal identiku jew jixbah lil dik it-

trademark, u

(b) li persuna jkollha fil-pussess, kustodja jew kontroll

tagħha, filwaqt li tkun taf, jew ikollha għaliex taħseb,

li jkunu ġew użati jew ikunu se jintużaw biex

jipproduċu oġġetti jew materjal kontravvenjenti.

(1) Applikazzjoni għal ordni taħt l-artikolu 16 ma tistax

issir wara tmiem il-perjodu ta’ sitt snin -

(a) fil-każ ta’ oġġetti kontravvenjenti, mid-data meta t-

trademark kienet applikata għall-oġġetti jew l-

ippakkettjar tagħhom,

(b) fil-każ ta’ materjal kontravvenjenti, mid-data meta t-

trademark ġiet applikata għall-oġġetti, jew

(ċ) fil-każ ta’ ħwejjeġ kontravvenjenti, mid-data meta

dawk ikunu saru,

ħlief kif provdut fis-subartikolu li ġej.

(2) Jekk matul il-perjodu kollu jew parti minnu l-proprjetarju

tat-trademark reġistrata ma jitħalliex, bi frodi jew ħabi, milli jikxef

il-fatti li jagħtuh jedd japplika għal ordni, tista’ ssir applikazzjoni

f ’kull żmien qabel tmiem il-perjodu ta’ sitt snin mid-data meta

huwa seta’, b’diliġenza raġonevoli, skopra dawk il-fatti.

(4)

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

TRADEMARKS

17. (1) In this Act the expressions "infringing goods",

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

accordance with the following sub-articles of this article.

(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 mark, 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.

18. (1) An application for an order under article 16 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.

TRADEMARKS

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

delivered up in pursuance of an order under article 16, 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 to 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 writ 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 be made under this

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

goods, material or articles were before being delivered up is

entitled to their return.

(1) Where a person threatens another with proceedings for

infringement of a registered trademark other than -

(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

TRADEMARKS

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.

Registered trademark as object 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,

testamentary disposition or operation of law in the same way as

other personal or moveable property.

It is so transmissible either in connection with the goodwill of a

business or independently.

(2)

An assignment or other transmission of a registered

TRADEMARKS

trademark may be partial and limited so as to apply -

(a) in relation to some but not all of the goods or services

for which the trademark is registered, or

(b) in relation to the use of the trademark in a particular

manner or a particular locality.

(3) 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 a personal representative.

(4) 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.

(1) On application being made to the Comptroller by -

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

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 28

or 29.

(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

TRADEMARKS

(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, and

(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 21 to 24 apply mutatis mutandis

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

the same manner in relation to a registered trademark.

(1) A licence to use a registered trademark may be general

or limited. A limited licence may in particular, apply -

(a) in relation to some but not all the goods or services for

which the trademark is registered, or

(b) in relation to use of the trademark in a particular

manner or a particular locality.

(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.

(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

TRADEMARKS

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 29(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 have, to such extent as may be provided by the licence, the

same rights and remedies in respect of matters occurring after the

grant of the 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

f o l l o w i n g p r o v i s i o n s of t h i s a r t i c l e , t o b r i n g i n f r i n g e m e n t

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 are not the plaintiff shall be joined in the

suit.

(5)

(a) Where an action for infringement of a registered

TRADEMARKS

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 16; 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.

Application for a registered trademark

An application for registration of a trademark shall be

made to the Comptroller in such manner as may be prescribed.

(1) The date of filing of an application for registration of a

trademark is the date on which the prescribed elements are

furnished to the Comptroller by the applicant

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.

(2) 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) Goods and services shall be classified for the purposes

of the registration of trademarks according to such system of

classification as may be prescribed.

TRADEMARKS

(2) 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.

Priority

(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 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.

TRADEMARKS

(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

person who has duly filed an application for protection of a

trademark in a country or territory in relation to which the Maltese

Government is 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 a such

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 33 in relation to Convention applications or

such other provision as appears to the Minister to be appropriate.

Registration procedure

(1) The Comptroller shall examine whether an application

for registration of a trademark satisfies the requirements of this Act

and for that purpose he shall carry out a search, to such extent as he

considers necessary, of earlier trademarks.

(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 or restrict the goods or services covered by the

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) Where an application has been accepted as eligible for

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

TRADEMARKS

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.

Duration, renewal and alteration of registered trademark

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

years from the date of registration.

(2) Registration may be renewed in accordance with article 39

for further periods of ten years.

(1) The registration of a trademark may be renewed at the

request of the proprietor, subject to the payment of the prescribed

renewal fee not more than 6 months before the date of expiry.

(2) The Minister may by regulation make rules providing that

the Comptroller informs the proprietor of a registered trademark,

before the expiry of the registration, of the date of expiry and the

manner in which the registration may be renewed.

(3) Without prejudice to sub-article (1) a request for renewal

must be made, before the expiry of the registration

Provided that, the request may be made and the fee paid

within such further period as may be prescribed, in which case a

prescribed additional renewal fee must also be paid within that

period.

(4) Renewal shall take effect from the expiry of the previous

registration.

(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

register, during the period of registration or on renewal.

(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

TRADEMARKS

such alteration and the making of objections by any person

claiming to be affected by it.

Surrender, revocation and invalidity

(1) A registered trademark may be surrendered by the

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

it 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.

(1) The registration of a trademark may be revoked on any

of the following grounds -

(a) that within the period of five years following the date

of completion of the registration procedure it has not

been put to genuine use in Malta, by the proprietor or

with his consent, in relation to the goods or services

for which it is registered, and there are no proper

reasons for such non-use;

(b) that such use has been suspended for an uninterrupted

period of five years, and there are no proper reasons

for such non-use;

(c) that, in consequence of acts or inactivity of the

proprietor, it has become the common name in the

trade for a product or service for which it is registered;

(d) that in consequence of the use made of it by the

proprietor or with his consent, it is liable to mislead

the public in relation to the goods or services for

which it is registered, particularly as to the nature,

quality or geographical origin of those goods or

services.

(2) For the purposes of sub-article (1) use of a trademark

includes the use in a form differing in such elements which do not

alter the distinctive character of the mark in the form in which it

was registered, and use in Malta includes affixing the trademark to

goods or to the packaging of goods in Malta solely for export

purposes.

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

ground mentioned in paragraphs (a) or (b) of sub-article (1) if such

use as is referred to in those paragraphs is commenced or resumed

after the expiry of the five-year period and before the application

for revocation is made

Provided that, any such commencement or resumption of

use after the expire of the five-year period but within the period of

three months before the making of the application shall be

disregarded unless preparations for the commencement or

resumption began before the proprietor became aware that the

TRADEMARKS

application is likely to be made.

(4) An application for revocation may be made by sworn

application before the First Hall, Civil Court by any person.

(5) Where grounds for revocation exist in respect of only some

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

revocation shall be limited to those goods or services.

(6) Where the registration of a trademark is revoked to any

extent, the rights of the proprietor shall be deemed to have ceased

to that extent as from -

(a) the date of the application for revocation, or

(b) if grounds for revocation existed at an earlier date,

such earlier date.

(1) The registration of a trademark may be declared

invalid on the ground that the trademark was registered in breach of

article 4 or any of the provisions referred to in that article.

Where the trademark was registered in breach of sub-article

(1)(b), (c) or (d) of that article, it shall not be declared invalid if, in

consequence of the use which has been made of it, it has after

registration acquired a distinctive character in relation to the goods

or services for which it is registered.

(2) The registration of a trademark may, unless the proprietor

of that earlier trademark or other earlier right has consented to the

registration, be declared invalid on the ground -

(a) that there is an earlier trademark in relation to which

the conditions set out in article 6 (1), (2) or (3) obtain,

or

(b) that there is an earlier right in relation to which the

condition set out in article 6(4) is satisfied.

(3) An application for a declaration of invalidity may be made

by any person, by sworn application before the First Hall of the

Civil Court.

(4) In the case of bad faith in the registration of a trademark,

the Comptroller himself may apply to the Court for a declaration of

the invalidity of the registration.

(5) Where the grounds of invalidity exist in respect of only

some of the goods or services for which the trademark is registered,

the trademark shall be declared invalid with regard to those goods

or services only.

(6) Where the registration of a trademark is declared invalid to

any extent, the registration shall to that extent be deemed never to

have been made

Provided that this shall not affect transactions past and

closed.

(1) Where the proprietor of an earlier trademark or other

earlier right being aware of the use of a registered trademark in

Malta, has acquiesced to such use for a continuous period of five

TRADEMARKS

years, he shall cease to be entitled to any right on the basis of that

earlier trademark or other right -

(a) to apply for a declaration that the registration of the

later trademark is invalid, or

(b) to oppose the use of the later trademark in relation to

the goods or services in relation to which it has been

so used,

unless the registration of the later trademark was applied for in bad

faith.

(2) In the cases referred to in sub-article (1), the proprietor of

the later trademark is not entitled to oppose the use of the earlier

trademark or, as the case may be, the exploitation of the earlier

right, notwithstanding that the earlier trademark or right may no

longer be invoked against his later trademark.

Collective marks

(1) A collective mark is a mark distinguishing the goods

or services of members of an association which is the proprietor of

the mark from those of other undertakings.

(2) The provisions of this Act apply to collective marks

subject to the provisions of the First Schedule to this Act.

Certification marks

(1) A certification mark is a mark indicating that the

goods or services in connection with which it is used are certified

by the proprietor of the mark in respect of origin, material, mode of

manufacture of goods or performance of services, quality, accuracy

or other characteristics.

(2) the provisions of this Act apply to certification marks

subject to the provisions of the Second Schedule.

PART III

INTERNATIONAL MATTERS

International registration

In this Part -

"the Madrid Protocol" means the Protocol relating to the Madrid

Agreement concerning the International Registration of Marks

adopted at Madrid on 27 June, 1989;

"the International Bureau" has the meaning given by Article 2(1)

of that Protocol; and

"international trademark (Malta)" means a trademark which is

entitled to protection in Malta under that Protocol.

(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.

The Order may, in particular, be made with respect to -

TRADEMARKS

(a) the making of applications for international

registrations by way of the Industrial Property Office

as 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.

(2) 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 20 and of articles 72 to 86 of this Act.

The Paris Convention

(1) In this Part -

(a) "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, and

(b) "Convention country" means a country, other than

Malta, which is a party to that Convention.

(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 44, the proprietor of a

trademark which is entitled to protection under the Paris

TRADEMARKS

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 this article.

(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

other emblems, and the names and their abbreviations, of

international intergovernmental organisations of which one or more

Convention 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 -

TRADEMARKS

(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

i n t e r n a t i o n a l o rg a n i s a t i o n i s o r w o u l d b e r e q u i r e d f o r t h e

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 1 January

2000.

(1) For the purposes of article 51 State emblems of a

Convention country (other than the national flag), and official signs

or hallmarks, shall be regarded as protected under the Paris

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 52 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).

TRADEMARKS

(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) Subarticles (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.

PART IV

ADMINISTRATIVE AND OTHER SUPPLEMENTARY

PROVISIONS

The register

(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

TRADEMARKS

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.

(1) The Minister may by regulations make rules

empowering the Comptroller to do such things as may be necessary

to implement 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.

Powers and duties of the Comptroller

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.

TRADEMARKS

(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

t h i s A c t , o r a n y s u c h t r e a t y, c o n v e n t i o n , a r r a n g e m e n t o r

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.

Legal proceedings and appeals

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, he shall be entitled to his costs unless the Court

directs otherwise.

(1) In proceedings before the Court involving a demand

for -

(a) the revocation of the registration of a trademark,

(b) a declaration of the invalidity of the registration of a

TRADEMARKS

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 Industrial Property 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 appealed from, before the Court of Appeal composed in the

manner provided in sub-article (9) of article 41 of the Code of

Organization and Civil Procedure by application within fifteen

days of service of the Comptroller’s decision.

(2) For the purposes of sub-article (1) of this article "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.

Rules, fees, hours of business, etc.

(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) requiring and regulating the translation 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;

TRADEMARKS

(f)

providing for the extension of any time limit so

prescribed, or specified by the Comptroller whether or

not such time limit has already expired.

(1) There shall be paid in respect of applications and other

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, and

(b) the circumstances, if any, in which a fee may be repaid

or remitted.

(1) The Comptroller may give directions specifying the

hours of business of the Industrial Property Office for the purpose

of 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 provision

for different classes of business and shall be published in the

prescribed manner.

Trademark agents

Except as may otherwise be prescribed, any act required or

authorised by this Act to be done by or in respect of a person in

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 register of persons who act as agent for the purpose of applying

for or obtaining the registration of trademarks; and in this Act a

"registered 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

TRADEMARKS

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 it applies 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 agent on the ground of misconduct;

(c) a person who is found to have been guilty of such

conduct as would, in the case of an individual

registered in the register of trademark agents, render

him liable to have his name erased from the register on

the ground of misconduct;

(d) a partnership or body corporate of which one of the

partners or directors is a person whom the registrar

could refuse to recognize under paragraph (a), (b) or

(c) above.

PART V

CRIMINAL OFFENCES

Offences

(1) Any person who with a view to gain for himself or

another, or with intent to cause loss to another, and without the

consent of the proprietor -

(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

TRADEMARKS

(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-three euro and seventy-three cents

(23,293.73) 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

hundred and forty-six euro and eighty-seven cents (11,646.87) or to

both such fine and imprisonment.

TRADEMARKS

(1) It shall be an offence against this article for a person -

(a) falsely to represent that a mark is 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 forty-six euro and eighty-seven cents

(11,646.87).

(1) A person shall not without the authority of the

President use in connection with any business any device, emblem

or title in such a manner as to be calculated to lead to the belief that

he is employed by, or supplies goods or services to, the President.

(2) Any person who contravenes the provisions of sub-article

(1) of this article 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 eighty-eight euro and twelve

cents (6,988.12).

The Court may, moreover, in the cases referred to in article

73, on the demand of the prosecution, order that the machinery or

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 to in this Part, any Magistrate, if he is satisfied by

information on oath 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

convicted of any of the offences referred to in this Part, would be

liable to forfeiture, is unknown or cannot be found, any Magistrate

TRADEMARKS

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 78, the Court shall

order the issue of banns which shall be published twice, with an

interval of at least eight days, in the Government 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 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.

TRADEMARKS

Any person who falsely claims to be a registered trademark

agent when he is not so registered in accordance with article 69 of

this Act, shall be guilty of an offence against this article and shall

in conviction be liable to a fine (multa) of not more than one

thousand and one hundred and sixty-four euro and sixty-nine cents

(1,164.69).

The provisions of this Part shall apply without prejudice to

the right of any person to claim damages in consequence of any Act

constituting an offence.

No proceedings shall be instituted against any person in the

service of another person, if, he shows that in good faith, he acted

in 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 VI

GENERAL PROVISIONS

In any civil proceedings under this Act if a question arises

as to the use to which a registered trademark has been put, the

burden of 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 years in all cases in which no other period within which such

actions may be brought is fixed in this Act

PART VII

TRANSITORY PROVISIONS

(1) In this Part -

"existing registered mark" means a trademark, registered under

the Industrial Property (Protection) Ordinance immediately before

the commencement of this Act;

"former register" means the register kept under the Old Law;

"new register" means the register kept under this Act;

"Old Law" means the Industrial Property (Protection) Ordinance

and any other enactment or rule of law applying to existing

registered marks immediately before the commencement of 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 Old Law.

(1) Existing registered marks shall, on the commencement

of this Act, be transferred to the new register and subject to the

provisions of this Part, shall have effect as if they were registered

under this Act.

(2)

Existing registered marks registered as a series under

TRADEMARKS

article 91(2) and 91(3) of the Ordinance shall be similarly

registered in the new register

(3) In any other case notes indicating that existing registered

marks are associated with other marks shall cease to have effect on

the commencement of this Act

(1) Proceedings under the Old Law which are pending on

the commencement of this Act shall be dealt with under the Old

Law 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

13 of this Act.

(1) Upon the coming into force of this Act articles 9 to 12

of this Act shall apply in relation to an existing registered mark and

subject to sub-article (2) hereof, article 14 of this Act 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 -

(a) an existing registered mark, or

(b) a registered trademark of which the distinctive

elements are the same or substantially the same as

those of an existing registered mark and which is

registered for the same goods or services,

to continue with any use which did not amount to infringement of

the existing registered mark under the Old Law.

Article 16 of this Act shall apply to infringing goods,

material or articles whether made before or after the

commencement of this Act.

(1) Article 28 of this Act shall apply to licences granted

before the commencement of this Act, but only in relation to

infringements committed after its commencement.

(2) Paragraph 12 of the Second Schedule of this Act shall apply

only in relation to infringements committed after the

commencement of this Act.

The provisions of article 22 of this Act shall apply as from

the commencement of this Act to an existing registered mark of

which two or more persons were immediately before the

commencement of this Act registered as joint proprietors.

(1) Article 23 of this Act shall apply to transactions and

events occurring after the commencement of this Act in relation to

an existing registered mark; and the Old Law shall continue to

apply in relation to transactions and events occurring before its

commencement.

(2)

Existing entries under articles 98 and 100 of the Industrial

TRADEMARKS

Property (Protection) Ordinance shall be transferred on the

commencement of this Act to the new register and have effect as if

made under article 24 of this Act.

(3) An application for registration of an assignment under

articles 98 and 100 of the Industrial Property (Protection)

Ordinance which is pending before the Comptroller on the

commencement of this Act shall be treated as an application for

registration of an assignment under article 24 of this Act and shall

be acted upon accordingly

Provided that the Comptroller may require the applicant to

amend his application so as to conform with the requirements of

this Act.

(4) An application for registration of an assignment under

articles 98 and 100 of the Industrial Property (Protection)

Ordinance which has been determined by the Comptroller but not

finalised before the commencement of this Act shall be dealt with

under the Old Law; and sub-paragraph (2) above shall apply in

relation to any resulting entry in the register.

(5) Where, before the commencement of this Act, a person has

become entitled by assignment or transmission to an existing

registered mark but has not registered his title, any application for

registration of an assignment after its commencement shall be made

under article 24 of this Act.

Articles 26 and 27(2) of this Act shall apply only in

relation to licences granted after the commencement of this Act.

(1) An application for registration of a mark under the Old

Law which is pending on the commencement of this Act shall be

dealt with under the Old Law, 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 65 of this Act 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

which has not been advertised under article 87 of the Industrial

Property (Protection) Ordinance 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.

TRADEMARKS

The Comptroller may exercise the powers conferred by

rules under article 57 of this Act to ensure that any existing

registered marks which do not conform to the system of

classification prescribed under article 32 of this Act are brought in

conformity with such system.

Article 33 of this Act shall apply to an application for

registration under this Act made after the commencement of this

Act notwithstanding that the Convention application was made

before commencement.

(1) Article 38(1) of this Act applies in relation to the

registration of a mark in pursuance of an application made after the

commencement of this Act; and the Old Law shall continue to

apply in any other case.

(2) Articles 38(2) and 39 of this Act shall apply where the

renewal falls due on or after 1st January, 2001; and the Old Law

shall continue to apply in any other case.

(3) In either case the date of payment of the fee shall be

immaterial.