Community Trademark Rules, 2003

L.N. 233 of 2003

TRADEMARKS ACT, 2000

(ACT NO. XVI OF 2000)

Community Trademark Rules, 2003

IN exercise of the powers conferred by article 48 of the Trademarks

Act 2000, the Minister of Finance and Economic Affairs has made the

following Rules>–

(1) The title of these Rules is the Community Trademark

Rules, 2003.

(2)

These Rules shall come into force on the 1st May,

2004. In these Rules -

“the Act” means the Trademarks Act, 2000, and the words

and expressions used shall have the same meaning as is given to

them in the Act<

“the Community Trademark Regulation” means Council

Regulation (EC) No. 40#94 of 20th December, 1993 on the

Community Trademark, and Community Trademark shall have

the same meaning stipulated therein.

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

or any other matter under these Rules shall be those prescribed in the

Schedule of Fees to these Rules.

(1) Where the proprietor of a Community Trademark claims

the seniority of a registered trademark which has been removed from

the register under article 39 or has been surrendered under article 41,

application may be made to the registrar or to the court by any person

for a declaration that, if the registered trademark had not been so removed

or surrendered, it would have been liable to be revoked under article 42

or declared invalid under article 43.

(2) Where a registered trademark has been surrendered in

respect of some only of the goods or services for which it is registered,

sub-rule (1) above shall apply in relation to those goods or services.

(3) The provisions of articles 42 or 43, as the case may be,

articles 61, 63 and 64, with necessary modifications, apply in relation

to an application under sub-rule (1) above.

The provisions of article 20 shall apply in relation to a Groundless threats

of infringement

Community Trademark as in relation to a registered trademark.

proceedings.

The provisions of article 70 (privilege for communications Privilege for

communications

between a person and his registered trademark agent) apply in relation with professional

to persons on the list of professional representatives maintained in representatives.

pursuance of article 89 of the Community Trademark Regulation

(“professional representatives”) and for this purpose the definition of

“trademark agent” in article 69 of the Trademark Act includes

professional representatives.

The provisions of articles 72 to 86 regarding criminal offences Offences.

committed in respect of locally registered marks shall apply in relation

to a Community Trademark and for the purposes of those provisions-

(a) references to a registered trademark shall include a

Community Trademark<

(b) references to goods or services in respect of which a

trademark is registered shall include goods or services in respect

of which a Community Trademark is registered.

For the purposes of Article 91 of the Community Trademark Designation of

Community

Regulation, the following courts are designated as Community Trademark courts.

Trademark courts -

(a)

First Hall of the Civil Court<

(b) The Court of Appeal.

(1) The provisions of this Regulation apply where the Conversion.

applicant for or the proprietor of a Community Trademark requests the

conversion of his Community Trademark application or Community

Trademark into an application for registration of a trademark under the

Act (“conversion application”) pursuant to Article 108 of the Community

Trademark Regulation.

(2) Where the Comptroller decides that a request for a

conversion application is admissible pursuant to Article 108, it shall be

treated as an application for registration of a trademark under the Act.

(3) A decision of the Comptroller in relation to a conversion

application shall be treated as a decision of the Comptroller under the

Act.

Except as otherwise provided, or where their application

would be inconsistent with the provisions of these Rules, the provisions

of the Trademarks (Provisions and Fees) Rules, 2000 shall continue to

apply.

Schedule of Fees

Receipt and forwarding of Community Trademark application

pursuant to Article 25 of the Community Trademark Regulation

Where, pursuant to Article 25 of the Community Trademark Regulation, an

application for a Community Trademark is filed at the Office in Malta responsible for

registering trademarks, there shall be paid a fee of twenty liri (Lm20).

Mitbug[ fl-Istamperija tal-Gvern — Printed at the Government Printing Press