Trademarks (provisions and Fees) Rules, 2000 (provisionsandfees)

L.N. 283 of 2000

TRADEMARKS ACT, 2000

(ACT NO. XVI OF 2(00)

Trademarks (provisions and Fees) Rules, 2000

IN exercise of the powers vested in him by articles 65 and 66 of

the Trademarks Act, 2000, the Minister for Economic Services has made

the following rules:-

(l) The title of these rules is the Trademarks (Provisions Title and

and Fees) Rules, 2000.

commencement.

These rules shall come into force on the 1 st January,

(2)

2001.

(On Instruments for the Registration of Trademarks)

Rule 3.

1. On application to register a trademark, for one or more articles!

services included in one class of goods or services, on account of

which the registration of the mark is sought.. ,

.

2. On application to register an assignment of a registered trademark

or any right in it, or to register a merger, for the first mark

.

3. For every additional mark or right thereof being assigned or merged

at the same time

.

4. On application for continuance of right to the exclusive use of a

mark at expiration of 10 years

.

5. Additional fee where fee is paid within six months after expiration

of 10 years

.

6. Additional fee for restoration of trademark where removed for non-

payment of fee

..

7. Request for withdrawal of application

..

8. Request for amendment of application so as to correct

(a)

the name and address of the applicant..

..

(b)

errors of wording or copying

.

(c)

obvious mistakes

.

9. Request for alteration ofthe proprietor's name and address where

this forms part of the registered mark

.

10. Objection to the alteration of a registered trademark where the

alteration consists of the proprietors name and address when this

forms part of the registered trademark

.

11. Request for the recordal of surrender of a registered trademark ..

12. On application to register the grant of an exclusive or a limited

licence under a registered trademark

.

13. On application to register the transfer of a registered trademark or

any right in it, as ordered by a court or other competent authority;

or by testamentary disposition

14. Request in writing

(a) for a search of a mark for each class of goods or services

(b)

for the same mark to be searched in other classes of goods or

services (per class)

(c)

for a copy of a related record, extract from the register or

representation of the mark, when these are requested as part

of the request for a search in writing

uncertified

1. ii.

certified '"

'"

15. For search or for inspecting register by interested person, for every

quarter of an hour

-

for copy of a related record, extract from the register or

representation of the mark, when these are requested as part of

the request for a search in writing

uncertified

1. ii.

certified

'"

16. Request for information and inspection of documents

17. On a request to rectify or correct the register, including a change

of name or address of the proprietor or a licensee

18. Opposition to the removal by the Comptroller of any matter in the

register.....................................................................

19. Opposition to proposals for amendment to entries on the register

for the reclassifying of the specification of goods or services .....

20. Application to convert pending application to be detennined under

the new Act

(1) In these rules, "the Act" means the Trademarks Act, 2000, Interpretation.

and the words and expressions used shall have the same meaning as is

given to them in the Act, and "Office" shall be construed as the Office

of the Comptroller.

(2) References to any article in the marginal notes to these

rules shall be deemed as references to any article, or subarticle or

paragraph thereof, of the Act and include any power to make rules by

virtue also of the same article.

The fees to be paid in respect of any application, registration Provision relating to

or any other matter under the Act and these rules shall be those prescribed fees.

in the Schedule of Fees to these rules.

The Comptroller may request the submission of documentary Supporting

I

eVI ence b elore

·d

un d ert aki ng any act reqUIre

. d 0 f hi m b yaw.

documents.

l'

(1) The applicant or his attorney shall be informed of any Registration subject

t?

disclaimer or limitation by the Comptroller.

lmutation.

Art. 13 (2) and (3).

(2) If the applicant or his attorney is not in agreement with

the disclaimer or limitations, or part of the disclaimer or limitation, he

shall inform the Comptroller accordingly and state his reasons for his

disagreement. If the applicant or his attorney does not submit grounds

for disagreement within 60 working days from the date of the notification

of the disclaimer or limitation, the disclaimer or limitation will be

considered as accepted by the applicant, and the Comptroller shall

proceed to issue the registration of the mark with the disclaimer or

limitation.

(3) In the case of disagreement, the Comptroller shall

reconsider the limitation or disclaimer on the basis of the grounds of

disagreement laid down by the applicant or his attorney; and in this

regard he may -

(a)

waive the limitation or disclaimer; or

(b)

alter the disclaimer of limitation as he sees fit; or

(c)

insist on the disclaimer or limitation.

(4) The Comptroller shall communicate his decision in

writing to the applicant or his attorney.

(5) If within 20 working days from the date of the

communication of the Comptroller's decision, the Comptroller does

not receive an indication in writing from the applicant or his attorney

showing his disagreement with the Comptroller's decision, the

disclaimer or limitation shall be taken as accepted and shall be entered

into the register against the mark to which the disclaimer or limitation

refers.

(6) If within 20 working days from the date of the

communication of the Comptroller's decision, the applicant or his

attorney submits in writing his disagreement with the disclaimer or

limitation, the Comptroller may refuse the application. The

Comptroller's decision shall be final and may only be appealed as

provided in article 64 of the Act.

(1) An application to register particulars of a transaction to

which article 24 of the Act applies shall be made -

(a) relating to an assignment or a transfer by testamentary

disposition, on the prescribed fonn;

(b)

relating to a grant of a licence, on the prescribed fonn;

(c) relating to an amendment to, or termination of a licence,

on the prescribed fonn.

(2)

An application under subrule (1) above shall-

(a) where the transaction is an assignment, be signed by or

on behalf of the parties to the assignment;

(b) where the transaction falls within sub-paragraphs (b) or

(c) of subrule ( 1) above, be signed by or on behalf of the grantor of

the licence,

or be accompanied by such documentary evidence as suffices to establish

the transaction.

An application for the registration of a trademark shall be filed Application for

in the Maltese or English language on the prescribed form and shall ~s:rion.

contain the following

(a)

a request for registration of a trademark;

the name and address of the applicant;

(b)

(c) a statement of the goods or services in relation to which

it is sought to register the trademark;

(d)

a representation of the mark;

(e) the name and address of the representative or attorney,

in cases where one has been appointed;

(f) a declaration claiming priority in cases where the

applicant wishes to take advantage of an earlier application;

(g) an indication that the trademark is being used by the

applicant or with his consent, in relation to those goods or services,

or that he has a bona fide intention that it should be used;

(h) a statement containing the name or names of the colour

or colours being claimed in cases where the applicant wishes to

claim colour as a distinctive feature of the mark; and

(i)

the prescribed fee.

(1) The date of filing of the application for the registration Date of filing.

of a trademark shall be the date when all of the following elements are Art. 31.

submitted

(a)

a request for registration of a trademark;

(b)

the name and address of the applicant;

(c) a statement of the goods or services in relation to which

it is sought to register the trademark;

(d)

a clear representation of the mark; and

(e) the name and address of the representative or attorney,

in cases where one has been appointed.

(2) If any of the above elements are omitted the application

will not be accepted by the Comptroller and shall be returned to the

applicant or his attorney.

(3) The other elements necessary for application included

in rule 7 must be submitted within 90 working days from the date of

filing. If any of these elements are not submitted within the stipulated

time, the application shall be considered as withdrawn by the applicant

or his attorney.

The classification of goods and services is according to the

International Classification of Goods and Services for the purpose of

the registration of marks under the Nice Agreement administered by

the World Intellectual Property Organization (WIPO).

Where a right to priority is claimed by reason of an application

for the protection of a trademark duly filed in a World Trade Organization

(WTO) or Convention country, other than Malta, under article 33 of the

Act, particulars should include the country and the date of filing of the

first application made in the WTO or Convention country.

The representations or the amendments to the application as

Representations and

requested by the Comptroller are to be submitted to the Office of the

Comptroller within 90 working days from the Comptroller's request.

If the representations or the amendments are not received by the

Comptroller's Office within the specified time, the application would

be refused.

A request for a withdrawal or an amendment of an application

as specified in subarticles (I) and (2) of article 36 of the Act shall be

made on the prescribed form.

Once the application has been accepted for registration, the

certificate of registration shall be issued and such registration shall be

published in the Gazette or any other official publication that the

Comptroller shall prescribe.

Renewal of registration shall be effected by filing a request

for renewal on the prescribed form at any time within the period of six

months ending on the date of the expiration of the registration.

At any time not earlier than six months nor later than one

month before the expiration of the last registration of a trademark, the

Comptroller shall, except where renewal has already been effected under

rule 14 above, send to the registered proprietor notice of the approaching

expiration and inform him at the same time that the registration may be

renewed in the manner prescribed in rule 14 above.

(1) If on the expiration of the last registration of a trademark, Delayed renewal

.

and removal of

the renewal fee has not been paId and the request for renewal has not registration.

been made, the proprietor may renew the mark within six months from Art. 39(3).

the date of expiration of the last registration provided that the request

for renewal is filed on the prescribed form and is accompanied by the

renewal fee and the additional renewal fee.

(2) If on the expiration of the last registration of a trademark,

the renewal fee has not been paid and the request for renewal has not

been made and no action, as prescribed in subrule (1) above, has been

taken by the proprietor, the Comptroller shall record the trademark as

removed from the register.

Where the Comptroller has removed the mark from the Restorationof

register for failure to renew its registration in accordance with rule 16 ~s:;~~)~.

above, he may, upon a request filed on the prescribed form within six

months of the date of the removal of the mark and accompanied by the

appropriate renewal fee and appropriate restoration fee, restore the mark

to the register and renew its registration if, having regard to the

circumstances of the failure to renew, he is satisfied that it is just to

restore such mark.

The renewal and restoration of the registration shall be Publication of

published in the Gazette or in any official publication the Comptroller ::~~

may prescribe. The publication shall show the date of renewal or Art. 39 (7).

restoration.

The proprietor of a mark may submit a request for the Al~rationofa

alteration of his registered trademark on the prescribed form where the ::~=.

mark includes the proprietor's name and address. If the request is Art. 40 (2) and (3).

accepted by the Comptroller, the mark shall be altered accordingly and

such alteration shall be published in the Gazette in any other official

publication as prescribed by the Comptroller.

(1) An objection to the alteration may be entered at the Objection to the

alteration of a

Office of the Comptroller on the prescribed form, within 90 days from registered

the date of publication of the alteration. The form shall be accompanied trademark.

Art. 40 (3).

by a statement containing the grounds for objection. The Comptroller

shall send a copy of the notice and the statement to the applicant

(2) Within 90 days from the date on which a copy of the

statement is sent by the Comptroller to the trademark owner, the owner

may file, in conjunction with notice ofthe same on the prescribed form,

a counter-statement. If no counter-statement is filed within the stipulated

time period, the objection to the alteration ofthe mark shall be considered

as valid and the alteration shall not be allowed.

(3) If a counter-statement is filed in accordance with subrule

(2) above, the Comptroller shall decide whether there are grounds for

objection or otherwise. The Comptroller shall communicate his decision

to the parties concerned and the party against whom the decision is

taken may enter an appeal to the Court of Appeal in accordance with

article 64 of the Act within 90 days from the receipt ofthe Comptroller's

decision.

(1) The proprietor may surrender a registered trademark,

by sending notice to the Comptroller on the prescribed form

(a) in respect of all the goods or services for which it is

registered; or

(b) in respect only of those goods or services specified by

him in the notice.

(2) A notice under subrule (1) above shall be of no effect

unless the proprietor in that notice

(a) gives the name and address of any person having a

contractual interest in the mark, or any other interest under the

Act; and

(b)

certifies that any such person -

(i) has been sent not less than 90 days' notice of the

proprietor's intention to surrender the mark, or

(ii)

is not affected, or if affected consents thereto.

(3) The Comptroller shall, upon the surrender taking effect,

make the appropriate entry in the register and publish the same.

(4) Any person having a right in the registered mark, may

appeal from the decision of the Comptroller's acceptance of the surrender

before the Court of Appeal, composed in the manner provided in 4 (6)

of the Code of Organization and Civil Procedure, within three years

from the publication of the surrender.

The register containing a list of the state emblems and official

Public inspection of

signs or hallmarks, and the emblems, abbreviations and names of

international organisations, protected under article 6ter of the Paris

Convention shall be available for public inspection at the prescribed

fee. Copies of any part or parts of the register may be ordered, at an

additional prescribed fee.

The register required to be maintained by the Comptroller Form of register.

Art. 55 (a).

under article 55 (a) of the Act may be kept in any form, including any

digitized format, as deemed fit by the Comptroller.

There shall be entered into the register in respect of each Entry into the

=~~uIar.l

trademark registered therein the following particulars _

trademarks.

.

. as d etermme

. d m

. accor d ance WIt

. h Art. 55(2).

()

h d a t eo f regIstratIOn

ate

articles 31(1) and 37(3), (that is to say, the date when all prescribed

elements, necessary to obtain a filing date, are furnished to the

Comptroller);

(b) the priority date (if any) to be accorded pursuant to a

claim to a right to priority made under article 33 or 34;

(c)

the name and address of the proprietor;

(d) any disclaimer or limitation of rights under article

13(1)(a) or (b) and 13(2) of the Act;

(e) the goods or services in respect of which the mark is

registered;

where the mark is a collective or certification mark, that

(f)

fact; and

(g) where the mark is registered pursuant to article 6(5) of

the Act with the consent of the proprietor of an earlier trademark

or other earlier right, that fact.

Upon application made to the Comptroller by the persons Entry in register of

particulars of

specified in article 24 (1) of the Act, there shall be entered in the register registrable

the following particulars of registrable transactions, that is to say

transactions .

Art. 55 (2Xa).

(a) in the case of an assignment of a registered trademark or

any right in it -

(i)

the name and address of the assignee,

the date of the assignment, and

(ii)

(iii) where the assignment is in respect of any right in

the mark, a description of the right assigned;

(b) in the case of the grant of a licence under a registered

trademark -

(i)

the name and address of the licensee,

(ii)

where the licence is an exclusive licence, that fact,

(iii) where the licence is limited, a description of the

limitation, and

(iv) the duration of the licence if the same is or is

ascertainable as a definite period;

(c) in the case of a court or other competent authority

transferring a registered trademark or any right in or under it 6

(i)

the name and address of the transferee,

the date of the order, and

(ii)

(iii) where the transfer is in respect of a right in the

mark, a description of the right transferred;

and, in each case, there shall be entered the date on which the

entry is made;

(d) in the case of a transfer of a registered trademark by

testamentary disposition -

(i) the name and address of the person or persons in

whose favour the testamentary disposition in made;

(ii)

the date of the testamentary disposition; and

(e) in the case of a merger, the requirements specified for

the registration of an assignment shall also apply.

(1) The register shall be open for public inspection at the

Office during the hours as may be determined by the Office.

(2) A search in the register may be conducted in respect of

a mark or marks, in one of the following manners

(i) an interested person may call at the Office and conduct

a search for a mark or marks at the prescribed fee. If the person or

persons conducting the search request copies of any related record,

extracts from the register or copies of the representation of the

mark, whether certified or uncertified, these shall be provided at

the prescribed fee;

(ii) an interested person may submit a request in writing to

the Office for a search to be conducted in respect of a mark or

marks in one or more classes ofgoods and services, at the prescribed

fee. If the person or persons requesting the search require copies of

any related record, extracts from the register or copies of the

representation of the mark, whether certified or uncertified, these

shall be provided at the prescribed fee.

The Comptroller shall, on a request made on the prescribed Rectifi~ation or

0 f a reglstere

.

b y t h e propnetor

.

d tra d emar k or a l' lcensee or any correction

l'

10rm

register.

other interested person having an interest in a registered trademark, enter Art. 56(1).

a rectification of the registered mark, provided that this does not affect

the validity of the registration of the trademark.

When the proprietor of a registered trademark or a licensee Request for change

wishes to enter a change in his respective name or address as recorded =s~and

in the register, he shall do so by submitting a request to the Comptroller Art. 56(4).

on the prescribed form.

(1) Where it appears to the Comptroller that any matter in Removal of matter

the register has ceased to have effect, before removing it from the Z;~5~~~~t.er.

register

(a) he may, where he considers it appropriate, publish his

intention to remove that matter, and

(b) where any person appears to him to be affected by the

removal, he shall send notice of his intention to that person.

(2) Within 90 days from the date on which his intention to

remove the matter is published, or notice of his intention is sent, as the

case may be-

(a) any person may file notice of opposition to the removal

on the prescribed form; and

(b) the person to whom a notice is sent under paragraph (l)(b)

above may file in writing his objections, if any, to the removal.

(3) If the Comptroller is satisfied after considering any

objections or opposition to the removal that the matter has not ceased to

have effect, he shall not remove it.

(4) Where there has been no response to the Comptroller's

notice he may remove the matter.

(5) Where representations objecting to the removal of the

entry have been made the Comptroller may, if he is of the view after

considering the objections that the entry or any part thereof has ceased

to have effect, remove it or, as appropriate, the part thereof.

(1) Subject to article 32( 1) of the Act, the Comptroller may

consequent upon an amendment of the International Classification of

Goods and Services referred to in rule 9 above, make such amendments

to entries on the register as he considers necessary for the purposes of

reclassifying the specification of the registered trademark.

(2) Before making any amendment to the register under

paragraph (1) above the Comptroller shall require the proprietor of the

mark to submit his proposals for amendment of the register.

(3) The proprietor shall submit such proposals in writing

within 90 working days from the date of the requirement issued by the

Comptroller.

(4) If no proposals are received within the prescribed period

specified, the Comptroller shall decide whether to cancel or refuse to

renew the registration of the trademark as specified in article 57(3)(b)

of the Act.

(1) The Comptroller shall, as soon as practicable, publish

the proposals in the Gazette or in any other official publication.

(2) Notice of any opposition shall be filed on the prescribed

form within 90 days from the date of publication of the proposals

under paragraph (1) above and there shall be stated in the notice the

grounds of opposition and, in particular, how the proposed amendments

would be contrary to article 57(2) of the Act.

(3) If a notice of opposition under paragraph (2) above is

filed within the prescribed period and the Comptroller accepts the

opposition, the proposed amendments shall not be entered into the

register.

(4) If no notice of opposition under paragraph (2) above is

filed within the prescribed period, or where any opposition has been

rejected, the Comptroller shall make the amendments as proposed and

shall enter in the register the date when they were made.

(5) The Comptroller's decision shall be final and is not

subject to appeal before the Court of Appeal.

Forms and

(1) The Comptroller may require particular forms to be used directions

for the purpose of registration of a trademark or any other proceedings Comptroller.

before him under the Act pursuant to article 58 and he may specify any Art. 58.

directions with respect to their use.

(2) A requirement under this rule to use a form is satisfied

by the use either of a replica of that form or of a form which is acceptable

to the Comptroller and contains the information required by the form

and complies with any directions as to the use of such a form.

(3) The Comptroller may, at his discretion, permit as an

alternative to the sending by post or delivery of the application, notice

or other document in legible form the filing of the application, notice or

other document by electronic means subject to such terms or conditions

as he may specify whether generally by published notice or in any

particular case by written notice to the person being requested to file

any such documents by such means.

A request for information relating to a registered trademark Request for

· . I' lor a tra d emar k s hall be rna d e on t h e prescn 'bed I' lorm and

information before

or an app 1 lcahon

and is subject or rule 34 below.

publication.

Art. 59.

(1) Subject to paragraphs (2) and (3) below, the Comptroller Inspection of

shall permit all documents filed or kept at the Office in relation to a C;:~::: 64.

registered mark to be inspected.

(2) The Comptroller shall not be obliged to permit the

inspection of any such document as is mentioned in paragraph (1) above

until he has completed any procedure, or the stage in the procedure

which is relevant to the document in question, which he is required or

permitted to carry out under the Act or these rules.

(3) The right of inspection under paragraph (1) above does

not apply to -

(a) any document until fourteen days after it has been filed

at the Office;

(b)

any document prepared in the Office solely for use

therein;

(c) any document sent to the Office, whether at its request

or otherwise, for inspection and subsequent return to the sender;

(d)

any request for information under rule 33 above;

(e) any document issued or received by the Office which

the Comptroller considers should be treated as confidential;

(f) any document in respect of which the Comptroller issues

directions under rule 35 below that it be treated as confidential.

(4) Nothing in paragraph (1) shall be construed as imposing

on the Comptroller any duty of making available for public

inspection -

(a) any document or part of a document which in his opinion

disparages any person in a way likely to damage him; or

(b) any document filed with or sent to the Office before the

enactment of the Act.

(5) No appeal shall lie from a decision of the Comptroller

under paragraph (4) above not to make any document or part of a

document available for public inspection.

( 1) Where a document other than a fonn required by the

Comptroller in accordance with rule 33 above is filed at the Office and

the person filing it requests, at the time of filing or within fourteen days

of the filing, that it or a specified part of it be treated as confidential,

giving his reasons, the Comptroller may direct that it or part of it, as the

case may be, be treated as confidential, and the document shall not be

open to public inspection while the matter is being determined by the

Comptroller.

(2) Where such direction has been given and not withdrawn,

nothing in this rule shall be taken to authorise or require any person to

be allowed to inspect the document or part of it to which the direction

relates except by leave of the Comptroller.

(3) The Comptroller shall not withdraw any direction given

under this rule without prior consultation with the person at whose

request the direction was given, unless the Comptroller is satisfied that

such prior consultation is not reasonably practical.

(4) The Comptroller may, where he considers that any

document issued by the Office should be treated as confidential, so

direct, and upon such direction that document shall not be open to public

inspection except by leave of the Comptroller.

(5) Where a direction is given under this rule for a document

to be treated as confidential, a record of the fact shall be filed with the

document.

The fees to be paid in respect of any application, registration Requirement as

to fees.

or any other matter under the Act and these rules shall be those (if any) Art. 66.

prescribed in the Schedule of Fees. The Comptroller shall decide the

circumstances in which a fee may be repaid or remitted on a case by

case basis.

The hours and days of business shall be those as determined Hours of business

and business days.

by the Office.

Art. 67.

(1) Where an agent has been authorised under article 68, Proofof

. any particu

. 1 ar case requlfe

. t h

al'

SIgnature authorisation

t h e C omptro 11 er may III

e person

agent may be

or presence of the agent or the person authorising him to act as agent. required.

Art. 68.

(2) The Comptroller may by notice in writing sent to an

agent require him to produce evidence of his authority.

A claim to have the registrability of a mark applied for under Conversion of

pending

the Industrial Property (Protection) Ordinance determined under the applications

Act must be made on the prescribed form. The new filing date of the Art. 99.

converted application will be the commencement date of the new Act.

Collective and Certification marks

All the above rules shall apply to collective and certification General.

marks in so far as these are applicable.

Where the collective or certification mark is used to indicate Indication of

a geographical origin there must be submitted before the Comptroller ~=:~~rigin.

evidence that this mark is in fact being used to identify the good or Schedule 2 pararaph

goods as originating in the territory or in a region or locality in that 3.

territory and that a given quality, reputation or other characteristic of

the good or goods is essentially attributable to its geographical origin.

Within nine months of the date of the application for the Filing of regulations

registration of a collective or certification mark, the applicant shall file :~~~::~e.=s.

the prescribed form accompanied by a copy of the regulations governing Schedule 1

the use of the mark and the prescribed fee where applicable.

:m=h26 (2) and

paragraph 7 (2).