Trademark Search and Opposition Rules, 2018

L.N 343 of 2018

TRADEMARKS ACT

(CAP. 416)

Trademark Search and Opposition Rules, 2018

IN EXERCISE of the powers conferred by articles 8 and 65 of

the Trademarks Act, the Minister for the Economy, Investment and

Small Businesses has made the following rules:-

The title of these rules is the Trademark Search and

Opposition Rules, 2018.

These rules specify

(a) the details of the procedure governing a relative

search examination carried out by the Office.

(b) the details of the procedure for filing and examining

an opposition to the registration of a trademark at the Office.

In these rules -

"the Act" means the Trademarks Act, and the words and

expressions used shall have the same meaning as is given to

them in the Act;

"the Office" means the national Maltese entity officially

designated with the responsibility to register trademarks in

Malta .

(1) Pursuant to article 35(1) of the Act, the Office shall

carry out a search under the national trademark database for each

application received in order to identify identical or similar

registrations or applications.

(2)

The results of the search shall be notified to the applicant.

(3) If the applicant wishes to withdraw the application, a

request for withdrawal shall be submitted to the Office, together with

the prescribed withdrawal fee within twenty (20) working days from

receipt of the notification.

(4) If the applicant does not submit his request to withdraw the

application within the specified time period, the office shall notify the

earlier right holder of the results of the search and proceed with the

publication of the application accordingly.

(5) An opposition to such an application may be submitted in

terms of these rules.

(1) If it appears to the Comptroller that the requirements Publication.

for registration are met, the Comptroller shall publish the application

on the official online Intellectual Property journal or any other official

publication that the Comptroller shall prescribe.

(2) The publication shall be updated with new applications on

a monthly basis.

(3) In accordance with article 37(4) of the Act, the Comptroller

shall also publish the registration of a trademark on the official online

Intellectual Property journal or any other official publication that the

Comptroller shall prescribe.

(1) A notice of opposition may be entered on the basis of Notice of

one or more earlier marks or other rights within the meaning of article opposition.

6 of the Act, provided that the proprietors or authorised persons

entering the notice are entitled to do so for all the earlier marks or

rights referred to. Where an earlier mark has more than one proprietor

or where an earlier right may be exercised by more than one person, an

opposition may be filed by any or all of the proprietors or authorised

persons.

(2)

The notice of opposition shall contain

(a) the file number of the application against which

opposition is entered and the name of the applicant for the

trademark;

(b) a clear identification of the earlier mark or right on

which the opposition is based, namely

(i) where the opposition is based on the grounds

provided in article 6(1) and, or (2) and, or (3) of the Act,

the file number or registration number of the earlier mark,

an indication of whether the earlier mark is registered or an

application for registration of that mark;

(ii) where the opposition is based on the grounds

provided in article 6(4) of the Act, a representation of the

mark;

(iii) where the opposition is based on an earlier

designation of origin or geographical indication, an

indication of its nature, a representation of the earlier

designation of origin or geographical indication, and an

indication of whether it is protected under Union legislation

or the Laws of Malta;

(c) a statement outlining the grounds on which the

opposition is based under article 6 of the Act in respect of each

of the earlier marks or rights invoked by the opposing party;

(d) in the case of an earlier trademark application or

registration, the filing date and, where available, the registration

date and the priority date of the earlier mark;

(e) in the case of an earlier trademark application or

registration, a representation of the earlier mark as registered or

applied for; if the earlier mark is in colour, the representation

shall be in colour;

(f) an indication of the goods or services on which each

of the grounds of the opposition is based;

(g) as concerns the opposing party, the identification of

the opposing party as follows

(i) the name and address and the State in which the

opposing party is domiciled or has a seat or an

establishment. Names of natural persons shall be indicated

by the person's family name(s) and given name(s). Names

of legal entities, as well as bodies including institutions and

authorities as governed by public law, shall be indicated by

their official designation and include the legal form of the

entity, which may be abbreviated in a customary manner.

The company's national identification number may also be

specified if available. The Office may require the opposing

party to provide telephone numbers or other contact details

for communication by electronic means;

(ii) where the opposing party has appointed a

representative, the name and business address of the

representative;

(iii) where the opposition is entered by a licensee or

by a person who is entitled under the relevant Union

legislation or national law to exercise an earlier right, a

statement to that effect and indications concerning the

authorisation or the entitlement to file the opposition;

(iv) an indication of the goods or services against

which the opposition is directed; in the absence of such an

indication, the opposition shall be considered to be directed

against all of the goods or services of the opposed

trademark application.

(3) Where the opposition is based on more than one earlier

mark or earlier right, sub-rule (2) shall apply for each of those marks,

signs, designations of origin or geographical indications.

(4) The notice of opposition should also contain a reasoned

statement on the grounds, the facts and arguments on which the

opposition relies, and supporting evidence.

(5) The notice of opposition shall, unless otherwise demanded

by the Office, be submitted in duplicate and shall be accompanied by

the prescribed opposition fee.

(6) The notice of opposition and any document submitted by

the opposing party, shall be sent by the Office to the applicant for

purposes of informing of the introduction of an opposition.

Within a period of sixty (60) working days following the Opposition

publication of a trademark application, notice of opposition to period.

registration of the trademark may be given on the grounds that it may

not be registered under article 6 of the Act.

(1)

Where the opposition fee has not been paid within Admissibility of

the opposition period laid down in rule 7, the opposition shall be the opposition.

deemed not to have been entered. Where the opposition fee has been

paid after the expiry of the opposition period, it shall be refunded to

the opposing party.

(2) Where the notice of opposition has been filed after the

expiry of the opposition period, the Office shall reject the opposition.

(3) Where the notice of opposition does not comply with the

provisions of rule 6(2)(d) to (g), the Office shall inform the opposing

party accordingly and shall invite it to remedy the deficiencies noted

within a period of ten (10) working days from the date of notification

by the Office. If the deficiencies are not remedied before the time limit

expires, the Office shall reject the opposition.

(4) The Office shall notify the opposing party of any finding

pursuant to sub-rule (1) that the notice of opposition is deemed not to

have been entered and of any decision to reject the opposition on the

grounds of inadmissibility under sub-rule (2) or (3)

Provided that the Office shall also inform the opposing

party where following action taken pursuant to sub-rule (3), the

opposition is deemed admissible.

(1) Where the opposition is found admissible pursuant to

rule 8, the Office shall notify the applicant the applicant, that within a

period of sixty (60) working days from the date of notification, the

applicant may

(i)

withdraw the application; or

(ii) restrict the goods and services covered by the

application; or

(iii) submit a counterstatement outlining grounds

against the opposition.

(2) Where, within the period referred to in sub-rule (1), the

application is withdrawn, the opposition proceedings shall be closed.

(3) Where, within the period referred to in sub-rule (1), the

applicant restricts the application by deleting some of the goods or

services against which the opposition is directed, the Office shall

invite the opposing party to state, within ten (10) working days of the

date from said invitation, whether it maintains the opposition, and if

so, against which of the remaining goods or services the opposition is

being maintained. Where the opposing party withdraws the opposition

in light of the restriction, the opposition proceedings shall be closed.

(4) (i) Where a counterstatement is submitted, the Office

shall notify the opposing party of the counterstatement and also send a

copy of the counterstatement to the opposing party. Within twenty (20)

working days of the date of notification of the counterstatement, the

opposing party shall inform the Office in writing, whether it is

withdrawing or maintaining the opposition.

(ii) In the case where the opposing party informs the

Office that the opposition is being maintained, it shall, at the same

time, submit the prescribed fee and any additional documentation

outlining the grounds on which opposition is being maintained.

(iii) In the case where the opposing party does not inform

the Office, within the period stipulated in sub-rule (4) above, whether

it is withdrawing or maintaining the opposition, the Office shall

consider the opposition as withdrawn and proceed with the registration

of the trademark.

(5)

The Office shall reject the application if, within the period

referred to in sub-rule (1), the applicant does not

(i)

withdraw the application; or

(ii) restrict the goods and services covered by the

application; or

(iii) submit a counterstatement outlining grounds

against the opposition.

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

of up to ninety (90) working days from the date of the notification by

the Office of the opposition to the applicant in order to allow for the

possibility of a friendly settlement between the opposing party and the

applicant

Provided that such request shall not be made after the

expiry of the period of the sixty (60) working days from the date of

notification by the Office, of the opposition to the applicant as referred

to in sub-rule (1).

(7) Where, within the period referred to in sub-rule (1), the

Office is informed that the application is rejected in parallel

proceedings, the opposition proceedings shall be closed.

(1) Where the opposition is maintained, pursuant to rule Decision by the

9(4)(ii), the Office, shall proceed to take a decision based on the Office.

information and evidence provided by the opposing party and the

applicant.

(2) The decision shall be communicated to the applicant and to

the opposing party.

(3) A notice of appeal to the decision of the Office can be filed

according to the provisions of article 64 of the Act.

Schedule of Fees

Notice of opposition [rule 6(5)]

€50

Notice of maintaining opposition [rule 9(4)(ii)]

€150

€0.63