Trademark (Amendment) Rules, 2023

L.N. 69 of 2023

TRADEMARKS ACT

(CAP. 597)

Trademark (Amendment) Rules, 2023

IN EXERCISE of the powers conferred by article 101 of the

Trademarks Act, the Minister responsible for the protection of

Industrial Property, has made the following rules:-

(1) The title of these rules is the Trademark Citation and

(Amendment) Rules, 2023 and these rules shall be read and construed scope.

as one with the Trademark Rules, hereinafter referred to as the S.L. 597.04.

"principal rules."

(2) The scope of these rules is to establish procedures for the

better application of the procedure for the revocation or declaration of

invalidity of a registered trademark in terms of article 52 of the

Trademarks Act and in accordance with Article 45 of Directive (EU) Cap. 597.

2015/2436 of the European Parliament and of the Council of 16

December 2015 to approximate the laws of the Member States relating

to trade marks and to carry out other necessary amendments.

Rule 8 of the principal rules shall be substituted by the Substitutes rule

8 of the

following new rule

principal rules.

"8. (1) The amendments to the application as

requested by the Comptroller or any representations

made by the applicant in accordance to article 48(2) of

the Act are to be submitted to the Office of the

Comptroller within ninety (90) days from the date of his

request

Provided that if the representations or the

amendments are not received by the Comptroller’s

Office within the specified time, the application shall be

refused.

(2) Once the representations or amendments

have been submitted, the Comptroller shall decide

whether to accept or refuse the application or whether to

seek further clarifications from the applicant or his

representatives or from other sources as may be

necessary, and if so, such clarifications are to be

provided to the Office within thirty (30) days from the

date of notification sent by the Office of the Comptroller.

(3) Once a decision by the Comptroller to accept

or refuse an application is notified to the applicant or his

representative such decision shall be final.".

Rule 31 of the principal rules shall be substituted by the

following new rule

(1) When a representative is appointed in

respect of a trademark, the representative or the owner of

the trademark in question shall provide the Office with a

power of attorney document, which confirms the

appointment of the representative and stipulates the

actions which may be carried out by such representative.

(2) When the owner wishes to change or add a

representative in respect of a trademark, a request shall

be made to the Comptroller.

(3) The request accompanied by a power of

attorney document, confirming the appointment of the

new representative should contain

(a) the application or the registration

number of the trademark, as applicable;

(b) the name, address and contact details of

the representative being appointed

Provided that in the case where a

representative is being replaced, the request should also

include

(i) the details of the representative to

be replaced;

(ii) a statement indicating that said

representative shall no longer act on behalf of

the owner of the trademark in question.".

4. In sub-rule (3) of rule 39 of the principal rules, the words

"remedy the deficiencies noted within a period of twenty (20) days"

shall be substituted by the words "remedy the deficiencies noted within

a period of thirty (30) days".

5. Rule 40 of the principal rules shall be substituted by the

following new rule

"40. (1) Where the opposition is found

admissible pursuant to rule 39, the Office shall notify the

applicant that within a period of ninety (90) days from

the date of notification sent by the Office, he may

(a) withdraw his application; or

(b) restrict the goods or services by

deleting from his application some or all of the

goods or services against which the opposition is

directed; or

(c) submit a counterstatement against the

opposition as well as any supporting evidence, and

a reasoned statement on the grounds, the facts and

arguments with respect thereto

Provided that where the applicant is

withdrawing or restricting the application by deleting

some or all of the goods or services against which the

opposition is directed, he shall notify the Office of this

withdrawal or restriction on the relevant form which is to

be accompanied by the prescribed fee.

(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 informs the Office that the

application is being restricted by deleting some or all of

the goods or services against which the opposition is

directed, the applicant is to specify

(a) which of those goods or services are

being deleted;

(b) when not all said goods or services are

being deleted, which of these goods or services are

being kept in the application;

(c) which of the goods or services

contained in the original application and against

which the opposition was not directed will be kept.

(4) If within the period stipulated in sub-rule (1),

the Office receives representations in accordance with

sub-rule (3), it shall notify the opposing party of said

representations and invite it to state, within thirty (30)

days from the date of the said notification sent by the

Office whether it would like to proceed with the

opposition. If this is the case, the opposing party shall

specify against which of the remaining goods and

services originally opposed, it is sustaining its

opposition. Such a statement is to be accompanied by the

prescribed fee

Provided that the opposition may only be

sustained in respect of goods or services which were

originally opposed, and which have not been deleted by

the applicant

Provided further that the opposition

proceedings shall be considered closed where the

opposing party

(a) withdraws the opposition in light of the

restriction;

(b) does not, within thirty (30) days from

the date of the notification sent by the Office

referred to in this sub-rule, submit a statement

indicating that it will sustain the opposition on

goods or services which have not been deleted by

the applicant notwithstanding that they were

originally opposed;

(c) indicates that it is continuing with its

opposition on the basis of goods or services which

were not originally opposed.

(5) (a) When the opposing party informs the

Office that the opposition is being sustained as stipulated

in sub-rule (4), the Office shall notify the applicant

accordingly.

(b) Within a period of thirty (30) days from

the date of notification sent by the Office, the

applicant may

(i) withdraw the application as

prescribed in rule 9; or

(ii) submit a counterstatement against

the opposition and any supporting evidence,

and a reasoned statement on the grounds, the

facts and arguments with respect thereto.

(6) (a) Where a counterstatement is submitted,

the Office shall notify and send a copy of the

counterstatement to the opposing party.

(b) Within ninety (90) days from the date

of notification of the applicant’s counterstatement

sent by the Office, the opposing party shall inform

the Office in writing, whether it is withdrawing or

maintaining its opposition.

(c) In the case where the opposing party

informs the Office that the opposition is being

maintained, it shall, at the same time, pay the

prescribed fee and submit any additional

supporting evidence, and a reasoned statement on

the grounds, the facts and arguments on which the

opposition is being maintained

Provided that pursuant to sub-rule 5(b)(ii)

and where the applicant did not delete from his

application goods or services which were opposed to in

the initial opposition, the opposing party shall also

specify that it is maintaining its opposition against said

goods or services.

(d) In the case where the opposing party

does not inform the Office, within the period

stipulated in paragraph (b), whether it is

withdrawing or maintaining the opposition, the

Office shall consider the opposition as withdrawn

and proceed with the registration of the

trademark.

(7) (a) For the purposes of article 50(2) of the

Act, such joint request shall not be made after the

expiry of the ninety (90) day period referred to in sub-

rule (1).

(b) When a friendly settlement is reached

within the ninety (90) working day period

provided for in article 50(2) of the Act, the

applicant and the opposing party are to provide a

joint statement indicating that such a solution has

been reached within twenty (20) days from the

expiry of the said period.

(c) The joint statement shall clearly and

unequivocally indicate the nature of the friendly

settlement stating the outcome of the application

and the opposition

Provided that any amendments to the goods

or services are to be made as prescribed in rule 9.

(d) When a joint statement is not received

within the twenty (20) day period referred to in

paragraph (b) or when, during the period

contained in article 50(2) of the Act, one of the

parties notifies the Office that no agreement has

been reached, it shall be deemed that the

opposition is being maintained

Provided that in such a case

(i) the applicant may file a

counterstatement within ninety (90) days

from the end of the twenty (20) day period

referred to in paragraph (b);

(ii) following the filing of the

counterstatement the procedure shall be that

established in sub-rule (6).

(8)

The application shall be deemed to be

abandoned, if within the time periods provided for in

sub-rules (1) and (5), the Office is not informed that any

of the actions stipulated in these sub-rules have been

undertaken.

(9) 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.".

6. In sub-rule (1) of rule 41 of the principal rules the words

"pursuant to rule 40(5)(b)" shall be substituted by the words "pursuant to

rule 40(6)(b)".

7. Immediately after PART V of the principal rules, there

shall be added the following new part

"PART VI

Revocation and Invalidation

83. (1) A notice for revocation of a trademark

Filing of notice for

based on article 29 of the Act may be filed by any natural

on article 29 of the

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

purpose of representing the interests of manufacturers,

producers, suppliers of services, traders or consumers,

and which, according to the law governing them, have

the capacity to sue and be sued in their own name.

(2) When filing a notice for revocation of a

trademark based on article 29 of the Act, such notice

shall be accompanied by the prescribed fee and shall

contain

(a) the registration number of the

trademark against which the notice is being

entered and the name of the owner of the

trademark;

(b) the name and address of the applicant

filing the notice of revocation and of his

representative, when a representative is

appointed;

(c) a declaration by the applicant that the

mark in question has not been put to genuine use

in Malta for a continuous period of five (5) years;

(d) the specific dates during which the

mark has not been put to genuine use;

(e) the goods or services against which the

notice for revocation is being directed;

(f) a reasoned statement on the grounds,

the facts and arguments on which the notice for

revocation relies, and any supporting evidence

which may be available.

84. (1) A notice for revocation of a trademark

Filing of notice for

based on article 30 of the Act may be filed by any natural

on article 30 of the

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

purpose of representing the interests of manufacturers,

producers, suppliers of services, traders or consumers,

and which, under the terms of the law governing them,

have the capacity to sue and be sued in their own name.

(2) When filing a notice for revocation of a

trademark based on article 30 of the Act, such notice

shall be accompanied by the prescribed fee and shall

contain

(a) the registration number of the

trademark against which the notice is being

entered and the name of the owner of the

trademark;

(b) the name and address of the applicant

filing the notice for revocation and of his

representative, when a representative is

appointed;

(c) a declaration that the notice for

revocation is being filed as a result of

(i) acts or inactivity of the

proprietor where the trademark has become

a common name in the trade for a product or

service in respect of which the trademark is

registered; or

(ii) the use made of the mark by the

proprietor or with the proprietor’s consent,

is liable to mislead the public, particularly as

to the nature, quality or geographical origin

of those goods or services;

(d) the goods or services against which the

notice for revocation is being directed;

(e) a reasoned statement on the grounds,

the facts and arguments on which the notice for

revocation relies, and any supporting evidence

which may be available.

85. The notice for revocation referred to in rules

83 and 84 may be submitted to the Office either through

a soft or hard copy

Provided that if the related documentation is

to be submitted in hard copy, this should be submitted

in duplicate.

86. (1) A notice for declaration of invalidity of

a trademark based on article 5 of the Act may be filed by

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

for the purpose of representing the interests of

manufacturers, producers, suppliers of services, traders

or consumers, and which, under the terms of the law

governing them, have the capacity to sue or be sued in

their own name.

( 2) When filing a notice for declaration of

invalidity of a trademark based on article 5 of the Act,

such declaration shall be accompanied by the prescribed

fee and shall contain

(a) a clear indication of the absolute

grounds under article 5 of the Act on the basis of

which the notice for declaration of invalidity is

being filed;

(b) the registration number of the

trademark against which the notice for declaration

of invalidity is being entered and the name of the

owner of the trademark;

(c) the name and address of the applicant

filing the notice for declaration of invalidity and

of his representative, when a representative is

appointed;

(d) a reasoned statement on the grounds,

the facts and arguments on which the notice for

declaration of invalidity relies, and any

supporting evidence which may be available.

87. (1) A notice for declaration of invalidity of a

trademark based on articles 6(1) to (3)(a) and (b) of the

Act, may be filed by the proprietor of the trademark.

(2) When filing a notice for declaration of

invalidity of a trademark based on articles 6(1) to (3)(a)

and (b) of the Act, such notice for declaration shall be

accompanied by the prescribed fee and shall contain

(a) a clear indication of the relative

grounds under article 6 of the Act on the basis of

which the notice for declaration of invalidity is

being filed;

(b) the registration number of the

trademark against which the notice for declaration

of invalidity is being entered and the name of the

owner of the trademark;

(c) the name and address of the applicant

filing the notice for declaration of invalidity and

of his representative, when a representative is

appointed;

(d) a reasoned statement on the grounds,

the facts and arguments on which the notice for

declaration of invalidity relies, and any

supporting evidence which may be available.

(3) A notice for declaration of invalidity of a

trademark based on article 6(3)(c) of the Act, may be

filed by the person authorised under the relevant law to

exercise the rights arising from a protected designation of

origin or geographical indication.

(4) When filing a notice for declaration of

invalidity of a trademark based on article 6(3)(c) of the

Act, such notice for declaration shall be accompanied

by the prescribed fee and shall contain

(a) a clear indication that the notice for

declaration of invalidity is being filed under

article 6(3)(c);

(b) the application number for the

designation of origin or the geographical

indication;

(c) the name and address of the applicant

filing the notice for declaration of invalidity and

of his representative, when a representative is

appointed;

(d) a reasoned statement on the grounds,

the facts and arguments on which the notice for

the declaration of invalidity relies, and any

supporting evidence which may be available.

88. The notice for declaration of invalidity

referred to in rules 86 and 87 may be submitted to the

Office either through a soft or hard copy

Provided

that

if

the

related

documentation is to be submitted in hard copy,

this should be submitted in duplicate.

89. (1) Where the notice for revocation or the

notice for declaration of invalidity does not comply

with the provisions of rules 83 to 88, as the case may

be, the Office shall inform the applicant of the notice

for revocation or the notice for declaration of invalidity

accordingly and shall invite him to remedy the

deficiencies noted within a period of twenty (20) days

from the date of notification sent by the Office. If the

deficiencies are not remedied by the date of expiry of

the time limit, the Office shall reject the notice for

revocation or the notice for declaration of invalidity.

(2) (a) Where the prescribed fee has not been

paid, the notice for revocation or the notice for

declaration of invalidity, as the case may be, shall be

deemed not to have been filed.

(b) In any of the cases mentioned in sub-

rule (1) or in paragraph (a), the Office shall notify

the applicant of the notice for revocation or the

notice for declaration of invalidity with the

outcome, as the case may be

Provided that the Office shall also inform

the applicant of the notice for revocation or the notice

for declaration of invalidity where following action

taken pursuant to sub-rule (1), the notice for revocation

or the notice for declaration of invalidity is deemed

admissible.

90. (1) Where the notice for revocation or the

Office procedures.

notice for declaration of invalidity is found admissible

pursuant to rule 89, the notice for revocation or the

notice for declaration of invalidity, as the case may be

and any document related thereto, shall be sent by the

Office to the trademark owner for the purpose of

notifying him of the introduction of a revocation or

invalidity procedure.

(2) The Office shall notify the owner of the

trademark against which the notice for revocation or

notice for declaration of invalidity is being entered that

within a period of ninety (90) days from the date of the

notification sent by the Office, pursuant to sub-rule (1),

the owner of the trademark may

(a) surrender the trademark; or

(b) restrict the goods or services covered

by the trademark; or

(c) submit a statement against the notice

of revocation or notice for declaration of

invalidity and any supporting evidence and

reasoned statement on the grounds, the facts and

arguments with respect thereto.

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

rule (2) the registration is surrendered in accordance

with rule 22, the proceedings shall be closed.

(4) Where, within the period referred to in sub-

rule (2), the trademark owner surrenders some of the

goods or services, the Office shall notify the applicant

who filed the notice for revocation or the notice for

declaration of invalidity and invite him to state, within

twenty (20) days from the date of such notification,

whether he is sustaining his notice for revocation or his

notice for declaration of invalidity, and if that is the

case, against which of the remaining goods or services

the notice for revocation or the notice for declaration of

invalidity is being sustained

Provided that when the applicant informs the

Office that he shall be sustaining his notice for

revocation or his notice for declaration of invalidity he

shall concurrently pay the prescribed fee

Provided further that where the said

applicant withdraws the notice for revocation or the

notice for declaration of invalidity in light of the partial

surrender, the proceedings shall be closed.

(5) When the applicant informs the Office that

the notice for revocation or the notice for declaration of

invalidity is being sustained as stipulated in sub-rule

(4), the Office shall notify the trademark owner that the

notice for revocation or the notice for declaration of

invalidity is being sustained against the remaining

goods and services. Within a period of thirty (30) days

from the date of notification sent by the Office, the

trademark owner may

(a) surrender the trademark as prescribed

in rule 22; or

(b) submit a statement against the notice

for revocation or the notice for declaration of

invalidity and any supporting evidence and

reasoned statement on the grounds, the facts and

arguments with respect thereto

Provided that when the proprietor surrenders

the trademark, the proceedings shall be closed.

(6) (a) When a statement is submitted by the

proprietor of the trademark pursuant to sub-rules (2)(c)

or (5), the Office shall notify the applicant of this

statement and also send a copy of the statement to the

applicant. Within ninety (90) days from the date of the

notification of the statement sent by the Office to the

applicant, the applicant shall inform the Office in

writing whether he is withdrawing or maintaining the

notice for revocation or the notice for declaration of

invalidity;

(b) in the case where the applicant informs

the Office that the notice for revocation or the

notice for declaration of invalidity is being

maintained, he shall concurrently pay the

prescribed fee and submit any additional

supporting evidence and reasoned statement on

the grounds, the facts and arguments on which the

notice for revocation or the notice for declaration

of invalidity is being maintained.

(c) in the case where the applicant does

not inform the Office within the period stipulated

in paragraph (a) whether it is withdrawing or

maintaining the notice for revocation or the notice

for declaration of invalidity, the Office shall

consider the notice for revocation or the notice for

declaration of invalidity as withdrawn and

proceedings shall be closed.

(7) The Office shall proceed to take a decision

based on the evidence provided by both the applicant

and the trademark owner against whom the notice for

revocation or the notice for declaration of invalidity is

directed.

(8) When the owner of the trademark against

which the notice for revocation or the notice of

declaration for invalidity is directed does not submit a

statement within the stipulated time period, the Office

shall close the proceedings and base its ruling of the

revocation or declaration for invalidity on the evidence

before it.".

8. The Schedule of Fees of the principal rules shall be

amended as follows

(a) in the second column of item 3 thereof, the word

"maintaining" shall be substituted by the word "sustaining" and

the words "rule 40(3)" shall be substituted by the words "rule

40(4)";

(b) in the second column of item 4 thereof, the words

"rule 40(5)(b)" shall be substituted by the words "rule 40(6)(b)";

(c) in the second column of item 7 thereof, immediately

after the words "Request to be recorded as address for service,

request for withdrawal, restriction or amendment of an

application or registration", there shall be added the words "or

request to add or replace a representative" and the words "rules

4, 9 and 15" shall be substituted by the words "rules 4, 9, 15 and

31".

(d) in the second column of item 10 thereof, immediately

after the words "Fee to register" there shall be added the words ",

cancel or modify" and immediately after the words "For each

additional request for the registration", there shall be added the

words ", cancellation or modification";

(e) the second column of item 11 thereof shall be

amended as follows

(i) immediately after the words "Fee to register"

there shall be added the words ", cancel or modify";

(ii) immediately after the words "For each

additional request for the registration" there shall be added

the words ", cancellation or modification".

9. Immediately after item 22 in the Schedules of Fees of the Adds new items

to the Schedule

principal rules, there shall be added the following new items

of Fees of the

principal rules.

"22a

Notice for the revocation of a trademark

[Rules 83 and 84]

22b

Notice for declaration of invalidity of a

trademark [Rules 86 and 87]

22c

Notice for sustaining the revocation or

declaration of invalidity against the restricted

goods or services [Rule 90(4)]

22d

Notice for maintaining the revocation or

100".

declaration of invalidity [Rule 90(6)(b)]

B

€1.26