TRADEMARK RULES

SUBSIDIARY LEGISLATION 597.04

TRADEMARK RULES

12th February 2021

LEGAL NOTICE 50 of 2021, as amended by Legal Notices 69 of

2023 and 152 of 2024.

PART I

General Provisions

(1)

The title of these rules is the Trademark Rules.

(2)

These rules shall be without prejudice to the validity or

effectiveness of anything done in terms of the provisions of the

Trademarks (Provisions and Fees) Rules, Community Trademark

Rules, and Trademark Search and Opposition Rules, prior to their

incorporation and replacement by these rules and, to the extent

necessary, the provisions of the above mentioned Rules shall continue

to apply until these rules shall come into force.

(3)

These rules shall apply to all applications filed on or after

the date of coming into force of these rules and to pending applications

for registration for which the applicant or his representative has not

received any communication from the Office relating to the

registrability of the application.

Euro (€)

Schedule of Fees

1. On application to register a trademark, for one

class of goods or services [rule 4]

2. Notice of opposition [rule 38(5)]

3. Notice of sustaining opposition against the

restricted goods and services [rule 40(4)]

4. Notice of maintaining opposition [rule

40(6)(b)]

5. Request for alteration of the proprietor’s name

and address where this forms part of the

registered mark [rule 13]

6. Objection to the alteration of a registered

trademark where the alteration consists of the

proprietor’s name and address when this forms

part of the registered trademark [rule 14]

7. Request to be recorded as address for service,

request for withdrawal, restriction or

amendment of an application or registration or

request to add or replace a representative

[rules 4, 9, 15 and 31]

8. On application to register an assignment of a

trademark or any right in it, or to register a

merger, for the first mark [rule 16]

9. For each additional request, for the registration

of an assignment or for the registration of a

merger involving the same parties [rule 16]

TRADEMARK RULES

10. Fee to register , cancel or modify a right in rem

For each additional request for the registration,

cancellation or modification of a right in rem

submitted in the same application [rule 17]

11. Fee to register , cancel or modify a levy of

execution

For each additional request for the registration ,

cancellation or modification of a levy of

execution submitted in the same application

[rule 18]

12. On application to register a license [rule 19]

and on declaration of division of an application

or a registration [rule 20]

13. On application for renewal of the registration

of a trademark [rule 21]

14. Additional fee where renewal fee is paid within

six months after expiration of 10 years [rule 21]

15. Additional fee for restoration of a trademark

where removed for non-payment of fee [rule

21]

16. Request for the recordal of surrender of a

registered trademark [rule 22]

17. On application to register a collective mark or a

certification mark for one class of goods or

services [rules 4 and 23]

18. Fee for submitting regulations governing the

use of a collective or a certification mark [rule

23(3)]

19. Request in writing [rule 26(2)]

(a)

For a search of a mark

10(per class)

for each class of goods or services

(b)

For a copy of related

record, extract from the register or

representation of the mark

(i)

Uncertified

(ii)

Certified

20. Opposition to the removal by the Comptroller

of any matter in the register [rule 27]

21. Opposition to proposals for amendment to

entries on the register for the reclassifying of

the specification of goods or services [rule 29]

22. Application to convert pending application to

be determined under the new Act [Article 142]

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)]

TRADEMARK RULES

22d

Notice for maintaining the revocation or

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

Fees relating to the Madrid Protocol

23. Handling fee (excluding the appropriate

WIPO fees) for the certification and

transmittal to the WIPO International Bureau

of an international application originating in

Malta [rule 47]

24. Designations made in the international

application or subsequent to the international

registration [rule 53]

25. Request to take note of the international

registration [rule 65]

26. Request for the extension of the international

registration in Malta. [rule 66]

27. Application resulting from transformation

[rule 67]

In these rules, unless the context otherwise requires

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

expressions used shall have the same meaning as is assigned to

them in the Act;

"days" shall mean calendar days. If the last day of any of

the time limits provided in these rules is a national holiday, a

public holiday or a day when the Office is not open to the

public, the period shall be extended until the first following

working day.

The purpose of these rules

is

to

enable

the

implementation of the provisions of the Act.

An application for the registration of a trademark shall be

filed in the Maltese or English language and shall contain the

following

(a)

a request for registration of a trademark;

(b)

the name and address of the applicant;

(c)

a list of the goods or services, in accordance with

article 45 of the Act, for which the trademark is to be

registered;

(d)

a representation of the mark in accordance with

rule 6;

(e)

the name and address of the representative or

attorney, in cases where one has been appointed

Provided that the applicant may, if he so wishes

(i)

indicate a postal and electronic address for

the service of correspondence and communications sent

from the Office; and

(ii)

indicate that in the case of renewals, the

representative or attorney appointed as in paragraph (e)

is also to be notified of the approaching expiration of the

trademark and must for this purpose provide an

electronic address where such notifications may be sent.

This electronic address could be the same as the

electronic address indicated in sub-paragraph (i)

Provided further that an address for service

to which notification of the approaching expiration of the

trademark as well as an address for service to which

communications issued by this office is to be sent, can be

submitted at a later date by the proprietor or his attorney

or representative and is subject to the prescribed fee.

(f)

if applicable, a declaration claiming priority

stating the date on which and the country in or for which the

previous application was filed; and

(g)

the prescribed fee.

(1)

The date of filing of the application for the

registration of a trademark shall be the date when all of the following

elements are 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 representation of the mark in accordance with

rule 6.

(2)

If any of the above elements is 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 4 must be submitted within thirty (30) days from the date of filing.

If any of these elements is not submitted within the stipulated time, the

application shall be considered as withdrawn by the applicant or his

attorney.

(1)

The trademark shall be represented in any

appropriate form using generally available technology, as long as it

can be reproduced on the Register in a clear, precise, self-contained,

easily accessible, intelligible, durable and objective manner so as to

enable the competent authorities and the public to determine with

clarity and precision the subject matter of the protection afforded to its

proprietor.

(2) The representation of the trademark shall define the subject

matter of the registration. Where the representation is accompanied by

a description pursuant to paragraphs (d), (e), (f)(ii), (h) of sub-rule (3)

or sub-rule (4), such description shall accord with the representation

and shall not extend its scope.

(3)

Where the application concerns any of the trademark

types listed in paragraphs (a) to (j), it shall contain an indication to that

effect. Without prejudice to sub-rules (1) or (2), the type of the

trademark and its representation shall accord with each other as

follows

(a)

in the case of a trademark consisting exclusively

of words or letters, numerals, other standard typographic

characters or a combination thereof (word mark), the mark shall

be represented by submitting a reproduction of the sign in

standard script and layout, without any graphic feature or

colour;

(b)

in the case of a trademark where non-standard

characters, stylisation or layout, or a graphic feature or a colour

are used (figurative mark), including marks that consist

exclusively of figurative elements or of a combination of verbal

and figurative elements, the mark shall be represented by

submitting a reproduction of the sign showing all its elements

and, where applicable, its colours;

(c)

in the case of a trademark consisting of, or

extending to, a three-dimensional shape, including containers,

packaging, the product itself or their appearance (shape mark),

the mark shall be represented by submitting either a graphic

reproduction of the shape, including computer-generated

imaging, or a photographic reproduction. The graphic or

photographic reproduction may contain different views. Where

the representation is not provided electronically, it may contain

up to six different views;

TRADEMARK RULES

(d)

in the case of a trademark consisting of the

specific way in which the mark is placed or affixed on the

goods (position mark), the mark shall be represented by

submitting a reproduction which appropriately identifies the

position of the mark and its size or proportion with respect to

the relevant goods. The elements which do not form part of the

subject matter of the registration shall be visually disclaimed

preferably by broken or dotted lines. The representation may be

accompanied by a description detailing how the sign is affixed

on the goods;

(e)

in the case of a trademark consisting exclusively

of a set of elements which are repeated regularly (pattern mark),

the mark shall be represented by submitting a reproduction

showing the pattern of repetition. The representation may be

accompanied by a description detailing how its elements are

repeated regularly;

(f)

in the case of a colour mark

(i)

where the trademark consists exclusively

of a single colour without contours, the mark shall be

represented by submitting a reproduction of the colour

and an indication of that colour by reference to a

generally recognised colour code;

(ii)

where the trademark consists exclusively

of a combination of colours without contours, the mark

shall be represented by submitting a reproduction that

shows the systematic arrangement of the colour

combination in a uniform and predetermined manner and

an indication of those colours by reference to a generally

recognised colour code. A description detailing the

systematic arrangement of the colours may also be

added;

(g)

in the case of a trademark consisting exclusively

of a sound or combination of sounds (sound mark), the mark

shall be represented by submitting an audio file reproducing the

sound or by an accurate representation of the sound in musical

notation;

(h)

in the case of a trademark consisting of, or

extending to, a movement or a change in the position of the

elements of the mark (motion mark), the mark shall be

represented by submitting a video file or by a series of

sequential still images showing the movement or change of

position. Where still images are used, they may be numbered or

accompanied by a description explaining the sequence;

(i)

in the case of a trademark consisting of, or

extending to, the combination of image and sound (multimedia

mark), the mark shall be represented by submitting an

audiovisual file containing the combination of the image and

the sound;

(j)

in the case of a trademark consisting of elements

with holographic characteristics (hologram mark), the mark shall

be represented by submitting a video file or a graphic or

photographic reproduction containing the views which are

necessary to sufficiently identify the holographic effect in its

entirety.

(4)

Where the trademark is not covered by any of the types

listed in sub-rule (3), its representation shall comply with the standards

set out in sub-rule (1) and may be accompanied by a description.

(5)

Where the representation is provided electronically, the

Comptroller shall determine the formats and size of the electronic file

as well as any other relevant technical specifications.

(6)

Where the representation is not provided electronically,

the trademark shall be reproduced on the relevant official form, or on a

single sheet of paper separate from the sheet on which the text of the

application appears. The single sheet on which the mark is reproduced

shall contain all the relevant views or images and shall not exceed DIN

A4 size (29.7 cm high, 21 cm wide). A margin of at least 2.5 cm shall

be left all around.

(7)

Where the correct orientation of the mark is not obvious,

it shall be indicated by adding the word "top" to each reproduction.

(8)

The reproduction of the mark shall

(a)

be of a maximum of 300 dots per inch (DPI);

(b)

use the RGB colour system, when the mark

contains colour;

(c)

be of such quality as to enable it to be

(i)

reduced to a size of not less than 5cm x

5cm (600 x 600 pixels); or

(ii)

enlarged to a size of not more than 8.5cm x

5cm (1000 x 1000 pixels)

Provided that these requirements shall not

apply to

(a)

multimedia marks;

(b)

sound marks when the mark is represented

by submitting an audio file reproducing the sound;

(c)

movement marks when the mark is

represented by submitting a video file; and

(d)

hologram marks when

the

mark

is

represented by submitting a video file.

7. (1)

Where the priority of one or more previous

applications is claimed together with the application pursuant to article

46 of the Act, the applicant shall indicate the file number, the country

and the date of filing of the previous application and file a copy of it

within thirty (30) days of the filing date.

(2)

Where the language of the previous application for which

priority is claimed is not one of the languages of the Office, the

applicant shall provide the Office with a translation of the previous

application into Maltese or English within thirty (30) days of the filing

date.

(3)

Sub-rules (1) and (2) shall apply mutatis mutandis where

the priority claim relates to one or more previous registrations.

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.

(1)

A request for a withdrawal, restriction or an

amendment of an application as specified in article 49 of the Act shall

be made on the relevant official form at the prescribed fee.

(2)

A request to restrict the goods or services covered by the

application should contain

(a)

the trademark number;

(b)

the goods or services to be removed;

(c)

the remaining list of goods or services.

(3) A request for the correction of errors of wording or

copying or obvious mistakes should contain

(a)

the trademark number;

(b)

the text or wording containing the error or

mistake;

(c)

the corrected version of the text or wording.

(1)

The applicant or his attorney shall be informed of

any disclaimer or limitation by the Comptroller.

(2)

If the applicant or his attorney is not in agreement with

the disclaimer or limitation, 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 sixty (60) 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 with publication of the trademark application in

accordance with article 36 of the Act, with the disclaimer or limitation.

(3)

In the case of disagreement by the applicants of his

attorney, the Comptroller shall reconsider the limitation or disclaimer

on the basis of said disagreement and in this regard he may

(a)

waive the limitation or disclaimer; or

(b)

alter the disclaimer or 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 sixty (60) 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 the Comptroller

shall proceed with publication of the trademark application in

accordance with article 36 of the Act, with the disclaimer or limitation.

(6)

If within sixty (60) 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

TRADEMARK RULES

provided in article 100 of the Act.

The publication of the application shall contain

(a)

the applicant's name and address;

(b)

the representation of the trademark, together with

the elements and descriptions referred to in rule 6. Where the

representation has been provided in the form of an electronic

file, it shall be made accessible by means of a link to that file;

(c)

the list of goods or services, according to the

classes of the Nice Classification indicated in the application as

accepted by the Office in terms of article 45 of the Act;

(d)

the date of filing and the file number;

(e)

where applicable, particulars of the claim of

priority filed by the applicant pursuant to article 46 of the Act,

and

(f)

any disclaimer or limitation.

(1)

The Comptroller shall, as soon as practicable,

publish the registration on the official online journal or any other

official publication as may be decided by the Comptroller.

(2)

The publication of the registration shall contain

(a)

the proprietor’s name and address;

(b)

the representation of the mark, together with the

elements and descriptions referred to in rule 6. Where the

representation has been provided in the form of an electronic

file, it shall be made accessible by means of a link to that file;

(c)

the list of goods or services, according to the

classes of the Nice Classification;

(d)

the date of filing and the file number;

(e)

where applicable, particulars of the claim of

priority filed by the applicant pursuant to article 46 of the Act,

and

(f)

any disclaimer or limitation

Provided that the date of such publication shall for

the purposes of article 26 of the Act be taken as the date of

completion of the registration procedure.

(1)

The proprietor of a mark may submit a request for

the alteration of his registered trademark, if the mark includes the

proprietor’s name and address.

(2)

A request for alteration of a registration pursuant to sub-

rule (1) shall contain

(a)

the registration number of the trademark;

(b)

the name and address of the proprietor of the

trademark;

(c)

a representation of the trademark as altered, in

accordance with rule 6.

(3)

If the request is accepted by the Comptroller, the mark

shall be altered accordingly and such alteration shall be published on

the official online journal or any other official publication that the

Comptroller shall prescribe.

(1)

An objection to the alteration may be entered at

the Office of the Comptroller within thirty (30) days from the date of

publication of the alteration. Such request shall be accompanied 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 thirty (30) days from the date on which a copy of

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

owner may file a counter-statement. If no counter-statement is filed

within the stipulated time-period, the objection to the alteration of the

mark shall be considered as valid and the alteration shall not be

allowed.

(3)

If a counter-statement is filed in accordance with sub-

rule (2), 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 100 of the Act.

(1)

A request for the change of the name or address of

the proprietor of a registered trademark or a licensee shall be made on

the relevant official form and shall contain

(a)

the trademark number;

(b)

the name and the address of the proprietor or the

licensee of the trademark as recorded in the Register;

(c)

the new name or address of the proprietor or the

licensee of the trademark.

(2)

A request to restrict the goods or services covered by the

registration should contain

TRADEMARK RULES

(a)

the trademark number;

(b)

the goods or services to be removed;

(c)

the remaining list of goods or services.

(3) A request for the rectification of an error or omission in

the register should contain

(a)

the trademark number

(b)

the text or wording containing the error or

omission

(c)

the corrected version of the text

(1)

An application for a registration of a transfer shall

contain

(a)

the trademark number;

(b)

the name and address of the new proprietor;

(c)

where not all the registered goods or services are

included in the transfer, particulars of the registered goods or

services to which the transfer relates;

(d)

evidence duly establishing the transfer in

accordance with sub-articles (3) and (4) of article 34 of the Act;

(e)

where applicable, the name and business address

of the representative of the new proprietor.

(2)

Sub-rule (1) shall apply mutatis mutandis for the

purposes of an application for the recording of a transfer of a

trademark application.

(3)

For the purposes of paragraph (d) of sub-rule (1), any one

of the following shall constitute sufficient evidence of transfer

(a)

the signing of the application for registration of

the transfer by the registered proprietor or a representative of

that proprietor, and by the successor in title or a representative

of that successor;

(b)

where the application is submitted by the

registered proprietor or a representative of that proprietor, a

declaration signed by the successor in title or a representative of

that successor agreeing to the registration of the transfer;

(c)

where the application for registration is submitted

by the successor in title, a declaration, signed by the registered

proprietor or a representative of that proprietor, that the

registered proprietor agrees to the registration of the successor

in title.

(1)

A request for the registration of a right in rem may

be submitted by

(a)

the proprietor of the trademark jointly with

pledgee; or

(b)

the proprietor of the trademark; or

(c)

the pledgee

Provided that if the said right in rem is recognised in

Malta.

(2)

The request for the registration of a right in rem shall

include

(a)

the trademark number;

(b)

the name and address of the proprietor;

(c)

the name and address of the pledgee; and

(d)

evidence duly establishing the right in rem.

(3)

For the purposes of paragraph (d) of sub-rule (2), any of

the following shall constitute as sufficient evidence

(a)

a declaration, signed by the trademark proprietor,

that he agrees to the registration of the right in rem;

(b)

the right in rem contract, or an extract therefrom,

indicating the trademark at issue and the parties, and bearing

their signatures;

(c)

a statement of a right in rem, signed by both the

proprietor and the pledgee; or

(d)

a res judicata judgement issued by a recognised

judicial institution establishing the right in rem.

(4)

The procedure for the registration of a transfer for a right

in rem follows the same rules as the registration of a right in rem set

out in sub-rules (1), (2) and (3).

(5)

The registration of a right in rem may be cancelled or

modified.

(6)

A request for the cancellation or modification for the

registration of a right in rem may be submitted by

(a)

the proprietor of the trademark jointly with

pledgee; or

(b)

the proprietor of the trademark; or

(c)

the registered pledgee.

(7)

The request for the cancellation or modification for the

registration of a right in rem shall include

(a)

the trademark number;

(b)

the name and address of the proprietor; and

(c)

the name and address of the pledgee.

(8)

When the request for cancellation is submitted by the

proprietor, the request must be accompanied by evidence establishing

that the registered right in rem no longer exists or by a declaration by

the pledgee that he consents to the cancellation.

(9)

(a)

Where the request for modification is submitted

by the proprietor, proof of the modification of the registration of the

right in rem is required only where the modification is of such a nature

that it would diminish the rights of the registered pledgee under the

right in rem.

(b)

Where the request for modification is submitted by the

registered pledgee, proof of the modification of the registration of the

right in rem is required only where the modification is of such a nature

that it would extend the rights of the registered pledgee under the right

in rem.

(10) The registration of rights in rem, of the transfer, of the

cancellation or of the modification of those rights shall be entered in

the Register and published on the official online journal or any other

official publication as may be decided by the Comptroller.

(11) The rules and sub-rules applicable to the registration of

rights in rem shall also be applicable to the registration of a security

over a trademark, and any reference to a right in rem shall inter alia

include a reference to a security..

(1)

An application for registration of a levy of

execution may be filed with the Office by

(a)

any interested person following a court or arbitral

order to that effect; or

(b)

the trademark proprietor; or

(c)

the beneficiary

Provided that if the said levy of execution is recognised

in Malta.

(2)

The application for registration of a levy of execution

must be accompanied by the final decision of the Court.

(3)

The Office will inform the beneficiary and the trademark

proprietor that the levy of execution has been registered.

(4)

A registration of a levy of execution may be cancelled or

modified. A request for cancellation of the registration of a levy of

execution must be accompanied by proof, comprising a certified copy

of the final decision of the Court or Arbitral Authority, showing that

the registered levy of execution no longer exists. A request for the

modification of the registration of the levy of execution must be

accompanied by proof comprising a certified copy of the final decision

of the Court or Arbitral Authority showing such modification.

(5)

The request for the cancellation or modification of the

registration of a levy of execution shall include

(a)

the trademark number;

(b)

the name and address of the proprietor; and

(c)

the name and address of the beneficiary.

(1)

An application for a registration of a licence shall

contain

(a)

the trademark number;

(b)

the name and address of the licensee;

(c)

whether the licence is exclusive or non-exclusive;

(d)

where the licence is limited, a description of the

limitation;

(e)

the duration of the licence, if applicable; and

(f)

evidence duly establishing the licence.

(2)

For the purposes of paragraph (f) of sub-rule (1), any of

the following shall constitute sufficient evidence of the licence

(a)

the signing of the application for registration of

the licence by the registered proprietor or a representative of

that proprietor, and by the licensee or a representative of that

licensee;

(b)

where the application is submitted by the

registered proprietor or a representative of that proprietor, a

declaration signed by the licensee or a representative of that

licensee agreeing to the registration of the licence;

(c)

where the application for registration is submitted

by the licensee, a declaration signed by the registered proprietor

or a representative of that proprietor, that the registered

proprietor agrees to the registration of the licence.

(1)

A declaration of the division of an application or a

registration shall contain

(a)

the trademark number;

(b)

the name and address of the applicant or

proprietor of the trademark;

(c)

the list of goods or services which are to form the

divisional application or registration, or, where the division into

more than one divisional application or registration is sought,

the list of goods or services for each divisional application or

registration; and

(d)

the list of goods or services which are to remain in

the original application or registration.

(2)

The Office shall establish a separate file for the

divisional application or registration, which shall consist of a complete

copy of the file of the original application or registration, including the

declaration of division and the correspondence relating thereto.

(3)

The Office shall assign a new number to the divisional

application or registration.

(1)

Renewal of registration shall be effected by filing

a request for renewal in the relevant official form at any time within

the period of six (6) months ending on the date of the expiration of the

registration.

(2)

At any time not earlier than six (6) months nor later than

one (1) month before the expiration of the last registration of a

trademark, the Comptroller shall, except where renewal has already

been effected under sub-rule (1), send to the registered proprietor or

the electronic address for service where such has been indicated as in

rule 4 notice of the approaching expiration and inform him at the same

time that the registration may be renewed in the manner prescribed in

sub-rule (1). A copy of said notice is also to be sent to the electronic

address for the representative or attorney where such has been

indicated in rule 4.

(3)

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, the proprietor may renew the mark within six (6) months

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

request for renewal is filed on the relevant official form and is

accompanied by the renewal fee and the additional renewal fee.

(4)

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 sub-rule (3), has been taken

by the proprietor, the Comptroller shall record the trademark as

removed from the register.

(5)

Where the Comptroller has removed the mark from the

register for failure to renew its registration in accordance with sub-rule

(3), he may, restore the mark to the register and renew its registration,

if after considering the circumstances of the failure to renew, he is

satisfied that it is just to restore such mark. Request for restoration is

to be filed on the relevant official form within six (6) months of the

date of the removal of the mark and be accompanied by the appropriate

renewal fee and appropriate restoration fee.

(6)

The renewal and restoration of the registration shall be

published on the official online journal or any other official

publication that the Comptroller shall prescribe. The publication shall

show the date of renewal or restoration.

(1)

A declaration of surrender shall contain

(a)

the trademark number;

(b)

the name and address of the proprietor; and

(c)

where surrender is declared only for some of the

goods or services for which the trademark is registered, an

indication of the goods or services for which the trademark is to

remain registered.

(2)

Where a right of a third party relating to the trademark is

entered in the register, a declaration of consent to the surrender, signed

by the proprietor of that right or a representative of that proprietor,

shall be sufficient proof of the third party's agreement to the surrender.

(3)

The Comptroller shall, upon the surrender taking effect

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

official online journal or any other official publication that the

Comptroller shall prescribe.

(1)

These rules shall apply to collective marks and

certification marks in so far as these are applicable.

(2)

Where the collective mark or certification mark is used to

indicate a geographical origin, there must be submitted before the

Comptroller, evidence that this mark is in fact being used to identify

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

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

the goods is essentially attributable to its geographical origin.

(3)

Within sixty (60) days of the date of the application for

the registration of a collective or certification mark, the applicant shall

file the regulations governing the use of the mark together with the

prescribed fee.

In addition to the requirements specified in article 67 of

the Act, the regulations governing collective marks shall also specify

(a)

the name of the applicant;

(b)

a declaration that the applicant complies with the

requirements laid down in article 64(1) of the Act;

(c)

the representation of the certification mark;

(d)

the goods or services covered by the certification

mark;

(e)

the characteristics of the goods or services to be

certified by the certification mark, which should include, as

applicable, the material, mode of manufacture of goods or

performance of services, quality or accuracy; and

(f)

the conditions governing

the

use

of

the

certification mark, including sanctions.

In addition to the requirements specified in article 81 of

the Act, the regulations governing collective marks shall also specify

(a)

the name of the applicant;

(b)

the object of the association or the object for

which the legal person governed by public law is constituted;

(c)

the bodies authorised to represent the association

or the legal person governed by public law;

(d)

the representation of the collective mark;

(e)

the goods or services covered by the collective

mark including, where appropriate, any limitation introduced as

a consequence of the application of article 5(1)(i), (j) or (k) of

the Act.

(1)

The register is available online and any interested

person may carry out a search directly in this register.

(2)

An interested person may also 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 of goods 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.

(1)

Where it appears to the Comptroller that any

matter in the register has ceased to have effect, before removing it

from the register

(a)

he may, where he considers it appropriate, publish

his intention on the official online journal or any other official

publication as may be decided by the Comptroller 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 forty (40) 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 relevant official form; and

(b)

the person to whom a notice is sent under

paragraph (b) of sub-rule (1) 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 45(1) of the Act, the

Comptroller may consequent upon an amendment of the International

Classification of Goods and Services, make 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 sub-

rule (1) 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 thirty (30) days from the date of the communication issued by

the Comptroller.

(4)

If no proposals are received within the prescribed period,

the Comptroller shall decide whether to cancel or refuse to renew the

registration of the trademark as specified in article 93(3)(b) of the Act.

(1)

The Comptroller shall, as soon as practicable,

publish the proposals on the official online publication or any other

official publication that the Comptroller shall prescribe.

(2)

Notice of any opposition shall be filed within forty (40)

days from the date of publication of the proposals under sub-rule(1)

and there shall be stated in the notice the grounds of opposition and, in

particular, how the proposed amendments would be contrary to article

93(2) of the Act.

(3)

If a notice of opposition under sub-rule (2) 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 sub-rule (2) 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 only be subject to

appeal based on points of law 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 (15)

days of service of the Comptroller’s decision.

(1)

Subject to sub-rules (2) and (3), the Comptroller

shall permit all documents filed or kept at the Office in relation to a

registered mark to be inspected.

(2)

The Comptroller shall not be obliged to permit the

inspection of any such document as is mentioned in sub-rule (1) 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 sub-rule (1) does not apply

to

(a)

any document until fourteen (14) 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 document issued or received by the Office

which the Comptroller considers should be treated as

confidential.

(4)

Nothing in sub-rule (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 sub-rule (4) not to make any document or part of a document

available for public inspection.

(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.

(1)

Any communication shall contain the following

indications

(a)

the name and address of the applicant, owner or

other interested person;

(b)

the number of the application or trademark to

which it relates;

(c)

where the applicant, owner or other interested

person is registered with the Office, the number or other

indication under which he is so registered.

(2)

In the case of a communication by an agent for the

purposes of a procedure before the Office it shall contain

(a)

the name and address of the agent;

(b)

a reference to the power of attorney, or other

communication in which the appointment of that agent is or was

effected, on the basis of which the said agent acts;

(c)

where the agent is registered with the Office, the

number or other indication under which he is registered.

(3)

An applicant, owner or other interested person shall

indicate in any communication an address for correspondence as well

as an address for the purposes of service which shall be in the

European Economic area

Provided that where an agent is not appointed and where

an applicant, owner or other interested person has provided as his

address, an address in the European Economic Area, the Office of the

Comptroller shall consider that address to be the address for

correspondence or for the purposes of service unless that applicant,

owner or other interested person expressly indicates another such

address

Provided further that where an agent is appointed, the

address of that agent shall be considered to be the address for

correspondence or for the purposes of service, unless that applicant,

owner or other interested person expressly indicates another such

address.

(4)

Where one or more of the requirements under sub-rules

(1) to (3) are not complied with in respect of communications, the

Office shall invite the applicant, owner or other interested person, to

comply with any such requirement, and to make observations, within

thirty (30) days from the date of the invitation

Provided that where an invitation has not been made

because indications allowing the applicant, owner or other interested

person to be contacted by the Office have not been filed, the time limit

for compliance and observations shall be sixty (60) days from the date

on which the communication was received by the Office.

(1)

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

Provided that when there are extenuating factors, the

Comptroller shall decide on a case by case basis

(a)

whether or not a fee is to be remitted;

(b)

whether or not an additional fee normally charged

because of a non-observance of a time limit is to be partially or

totally waived.

(2)

The Comptroller may request the submission of

documentary evidence before undertaking any act required of him by

law.

(3)

Fees may be reduced or waived, refunded or

compensated in respect of a particular sector, one or more sectors or in

respect of all sectors

(a)

during a period of national or sectorial emergency

or crisis or force majeure which may be declared by

Government;

(b)

in a designated period of recovery from such;

(c)

with a view to promote industrial property rights

Provided that notice of any reduction, refund, waiver or

any compensation of fees is to be specified by a notice in the Gazette

Provided further that when a reduction, refund, waiver or

compensation of fees is tied to the duration of national or sectorial

emergency or crisis or force majeure or to a period of recovery from

such, the designated period shall be specified by notice in the Gazette.

PART II

Trademark Search and Opposition

This part specifies

(a)

the details of the procedure governing a relative

search examination carried out by the Office, and

(b)

the details of the procedure for filing and

examining an opposition to the registration of a trademark at

the Office.

(1)

The Office shall carry out ex officio 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 thirty (30) 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 article 50 of the Act and these rules.

(1)

If it appears to the Comptroller that the

requirements for registration are met, the Comptroller shall publish the

application on the official online journal or any other official

publication as may be decided by the Comptroller.

(2)

The publication shall be updated with new applications

on a weekly basis.

Within a period of ninety (90) days following the

publication of a trademark application, notice of opposition to

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

not be registered because of any of the reasons specified in sub-articles

(1), (3) and (4) of article 6 of the Act.

(1)

A notice of opposition may be entered on the basis

of one or more earlier marks or other rights within the meaning of

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

entering the notice pursuant to article 50 of the Act are entitled to do

so for all the earlier marks or rights. Where an earlier mark has more

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

than one person, an opposition pursuant to article 50 of the Act 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 an earlier

mark within the meaning of article 6(1) and (2)(a), or (b)

or (c) 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 a well-

known mark within the meaning of article 6(2)(d) of the

Act, a representation of the mark;

(iii)

where the opposition is based on an earlier

mark within the meaning of article 6(3)(a) of the Act, the

file number or registration number of the earlier mark, an

indication of whether the earlier mark is registered or

there is an application for registration of that mark;

(iv)

where the opposition is based on an earlier

designation of origin or geographical indication within

the meaning of article 6(3)(c) of the Act 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.

(v)

where the opposition is based on the

grounds provided in article 6(4) of the Act a

representation of the mark.

(c)

a statement outlining the grounds on which the

opposition is based under article 6(1), article 6(3)(a), article

6(3)(c) or article 6(4) 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 earlier rights pursuant to article 6

(3)(c) of the Act the date of application for registration or, if

that date is not available, the date from which protection is

granted;

(f)

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;

(g)

an indication of the goods or services on which

each of the grounds of the opposition is based;

(h)

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 be accompanied by the

prescribed opposition fee. The notice of opposition may be submitted

either through soft or hard copy

Provided that if the related documentation is to be

submitted in hard copy, this should be submitted in duplicate.

(6)

(a)

The notice of opposition and any document

submitted by the opposing party, shall be sent by the Office to the

applicant for purpose of informing of the introduction of an

opposition.

(b)

In the case where the opposer desires to file

additional documentation, such documentation is to be

submitted within the ninety (90) day period referred to in rule

37. Additional documentation may be submitted provided that

the Office has not yet received a counterstatement from the

applicant as in rule 40(1). Where the opposer desires to submit

additional documentation, the ninety (90) day period referred to

in rule 40(1) will commence from the date of notification to the

applicant of such documentation

Provided that the filing of additional documentation as

provided in sub-rule (2) above does not affect the possibility to file

additional documentation again as provided in rule 41(1).

(c)

In the case where the applicant has not yet

submitted his counterstatement, the ninety (90) day period

referred to in rule 40(1) shall commence from the date of

notification by the Office to the applicant of such

documentation.

(1)

Where the opposition fee has not been paid

within the opposition period laid down in rule 37, the opposition shall

be 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 38(2)(d) to (h), the Office shall inform the opposing

party accordingly and shall invite it to remedy the deficiencies noted

within a period of thirty (30) 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-rules (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 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.

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

40(6)(b), the Office shall notify the applicant accordingly and provide

the applicant with a period of ninety (90) days therefrom within which

to file any additional supporting evidence and reasoned statement on

grounds, facts and arguments.

(2)

The Office shall proceed to take a decision based on the

information and evidence provided by the opposing party and the

applicant.

(3)

The decision shall be communicated to the applicant and

to the opposing party.

(4)

An appeal from the decision of the Office may be filed

according to the provisions of article 100 of the Act.

(5)

When a notice of appeal is filed according to sub-rule

(3), the party filing the appeal is to inform the Office of such within

the time period provided for in article 100 of the Act.

PART III

Madrid Protocol

This Part specifies the rules which will apply once the

Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks enters into force with respect to

Malta.

In this Part

"Contracting

Party"

means

any

country

or

intergovernmental organisation party to the Protocol;

"designation" means the request for extension of

protection ("territorial extension") to Malta under Article 3ter

(1) or (2) of the Protocol, as the case may be; it also means such

extension as recorded in the International Register;

"designated Contracting Party" means a Contracting

Party for which the extension of protection ("territorial

extension") has been requested under Article 3ter (1) or (2) of

the Protocol, as the case may be, or in respect of which such

extension has been recorded in the International Register;

"holder" refers to the natural person or legal entity in

whose name an international registration is recorded in the

International Register;

"international registration" means the registration of a

mark effected under the Agreement or the Protocol;

"invalidation" means a final decision by the Court

invalidating the effects of the protected international

registration designating Malta with regard to all or some of the

goods or services covered by the designation or subsequent

designation in Malta;

"Office of origin" means the Office of the Contracting

Party where, in accordance with Article 2(2) of the Protocol,

the international application was filed.

"provisional refusal" means a declaration by the Office,

outlining the grounds on the basis of which protection cannot

be granted; it also outlines the deficiencies to be remedied by

the holder;

"Regulations under the Protocol" means the Regulations

under the Protocol Relating to the Madrid Agreement

Concerning the International Registration of Marks;

"subsequent designation" means the request for

extension of protection ("territorial extension") to Malta under

Article 3ter (2) of the Protocol; it also means such extension as

recorded in the International Register;

"WIPO Gazette" means the periodical gazette referred to

in Rule 32 of the Regulations under the Protocol.

(1)

Any communication, including an international

application, for transmittal to the International Bureau through the

intermediary of the Comptroller shall be in English.

(2)

Any communication concerning an international

application or an international registration addressed to the

International Bureau by the Comptroller shall be in English.

(1)

Any natural person or legal entity, that is a

national of Malta, is domiciled in or has a real and effective industrial

or commercial establishment in Malta, is entitled to file an

international application with the Comptroller provided any basic

application or basic registration, as the case may be, used as a basis to

file the international application is in the name of that natural person

or legal entity.

(2)

The applicant shall provide, at the request of the

Comptroller, such evidence as may be necessary to satisfy the

Comptroller that the applicant is entitled to file the application in

accordance with sub-rule (1).

(1)

Where an international application is filed with

the Comptroller for transmittal to the International Bureau, the

Comptroller shall verify that Malta may be considered as the Office of

origin for that application, and that the relevant particulars appearing

in the international application correspond to those appearing in any

basic application or basic registration, as the case may be, in

accordance with the provisions of the Protocol and the Regulations

under the Protocol.

(2) Where the international application complies with the

prescribed requirements, the Comptroller shall so certify in the

international application, indicating also the date on which the

international application was received, and shall forward the

international application to the International Bureau.

(3) Where the international application does not meet the

prescribed requirements, the Comptroller shall not forward it to the

International Bureau, and shall inform the applicant accordingly.

The prescribed handling fee, shall be due and payable to

the Comptroller for the certification and transmittal to the International

Bureau of an international application originating in Malta.

(1)

Where the international application does not

comply with the prescribed requirements, the Comptroller shall give

the applicant the opportunity to submit the requested information or

pay the handling fee within ten (10) days.

(2)

Where the applicant does not provide the requested

information or the payment of the handling fee within the stipulated

time as determined in sub-rule (1) by the Comptroller, the international

application is considered abandoned and the Comptroller shall not

forward this to the International Bureau.

Where the international application complies with the

prescribed requirements, including payment of the handling fee, the

Comptroller shall certify the international application, also indicating

the date of its receipt and shall forward the international application to

the International Bureau.

The Comptroller shall respond to the International

Bureau, as appropriate, to any irregularities issued under Rules 11 to

13 of the Regulations under the Protocol, within the given time limit of

three months from the date of the notification of that irregularity by the

International Bureau. The Comptroller shall request the applicant to

provide the required information within thirty (30) days. The

Comptroller shall then forward this information to the International

Bureau.

The classification of goods and services of an

international application shall be subject to Rule 9(4)(xiii) of the

Regulations under the Protocol where the decision of the International

Bureau shall be final.

(1)

Where, in accordance with Article 6 of the

Protocol, the basic application, the registration resulting from such

application, or the basic registration, ceases to have effect, the

Comptroller shall inform the International Bureau accordingly, in

accordance with Rule 22 of the Regulations under the Protocol,

requesting the cancellation of the international registration.

(2)

Where the facts and decisions of the basic registration or

basic application affect the international registration only with respect

to some of the goods and services, the Comptroller shall indicate those

goods and services which are affected by the facts and decisions or

those which are not affected by the facts and decisions.

(1)

An international registration designating Malta

shall have the same effects as from the date of the international

registration or of the subsequent designation of Malta, as the case may

be, as an application for the registration of the mark filed directly with

the Comptroller under the Act.

(2)

The date of filing would be the date of the international

registration where Malta is designated in the international registration

or the date of the subsequent designation where Malta is designated

subsequently to the international registration.

(3)

The indication of classes and goods and services set out

in the international registration, in which Malta is designated, shall not

bind the Comptroller with regard to the determination of the scope of

the protection of the mark.

(4)

If no refusal is notified by the Comptroller to the

International Bureau in accordance with the Protocol and the

Regulations under the Protocol, or if a refusal has been so notified but

has been subsequently withdrawn, or if a statement or grant of

protection is sent by the Comptroller, the protection of the mark in

Malta shall be the same as if the mark had been registered directly by

the Comptroller on the date of the international registration or of the

subsequent designation of Malta, as the case may be.

(1)

The Comptroller shall examine the marks that are

the subject of international registrations designating Malta in relation

to articles 5, 6, 45(2) and (4), 127 and 128 of the Act.

(2)

Where any elements of the mark would be in a language

other than English, and the holder has not declared that the word has

no meaning, a translation into English is required. Where such

translation is not included in the international registration, the

Comptroller shall issue an ex officio provisional refusal under rule 56.

(1)

For collective marks in international registrations

designating Malta, article 61(b), articles 77 to 90 of the Act shall apply

mutatis mutandis.

(2)

For certification marks in international registrations

designating Malta, article 61(a), articles 62 to 76 of the Act shall apply

mutatis mutandis.

(3)

Where the regulations governing the use of collective or

certification marks have not been submitted directly to the

Comptroller, the Comptroller shall issue an ex officio provisional

refusal under rule 56.

(1)

Where the Comptroller finds that, in accordance

with the Act, an international registration designating Malta cannot be

accepted or can be accepted with conditions only, the Comptroller

shall, before the expiry of the refusal period specified in Article

5(2)(b) of the Protocol, notify to the International Bureau of a

provisional refusal of protection, complying with the requirements of

the Protocol and the Regulations under the Protocol.

(2)

The holder of that international registration shall enjoy

the same remedies as if the mark had been filed for registration

directly with the Comptroller.

(3)

Any provisional refusal of the international registration

designating Malta must be notified to the International Bureau,

together with a statement of all grounds, before the expiry of eighteen

(18) months from the date on which the notification of the extension

has been sent to Malta by the International Bureau.

(4)

The holder may respond to the provisional refusal

directly to the "Office" by requesting a review of the decision within a

period of sixty (60) days counted from the date of the notification to

the holder sent by the International Bureau.

(5)

The holder may appoint an agent or attorney to act on

their behalf before the Comptroller.

(6)

Where the Comptroller has requested the holder to accept

a disclaimer or has proposed that the designation shall only be

acceptable for specific goods and, or services, the Comptroller may

proceed for publication for opposition with the disclaimer or the

specific goods and/or services, where the holder has not submitted

their disagreement within the given time limit.

(7)

Where the holder does not respond to the total

provisional refusal within the given time limit, the designation of

Malta is deemed abandoned to the extent applicable.

(1)

Where Malta has been designated in an

international registration and the Comptroller finds that the mark that

is the subject of that international registration is acceptable, the

Comptroller shall publish the international registration as provided for

in rule 36.

(2)

A person who opposes the protection of an international

registration designating Malta (the opponent) may file with the

Comptroller a notice of opposition within the period of sixty (60) days

from the date of publication.

(3)

Opposition to the international registration shall be

governed by the provisions of the Act regarding opposition mutatis

mutandis.

Where the period to file an opposition against an

international registration ends after the expiry of the refusal period

specified in Article 5(2)(b) of the Protocol or the Comptroller

considers that it will end too late for the Comptroller to send a

notification under rule 59 within that refusal period, the Comptroller

shall send a communication informing that fact to the International

Bureau, complying with the requirements of Rule 16 of the

Regulations under the Protocol.

(1)

Where a notice of opposition is filed with the

Comptroller in respect of an international registration designating

Malta, the Comptroller shall, before the expiry of the refusal period

specified in Article 5(2)(b) or in accordance with Article 5(2)(c) of the

Protocol, notify that fact to the International Bureau as a provisional

refusal based on an opposition, complying with the requirements of the

Madrid Protocol and the Regulations under the Protocol.

(2)

Subject to rule 58 any provisional refusal of the

international registration designating Malta may be notified to the

International Bureau, together with a statement of all grounds, after the

expiry of eighteen (18) months from the date on which the notification

of the extension has been sent to Malta by the International Bureau,

provided this is notified within the time limit set out in Article

5(2)(c)(ii) of the Protocol.

(3)

The holder of the international registration concerned

shall enjoy the same remedies as if the mark had been filed for

registration directly with the Comptroller.

(4)

The holder may file his counterstatement within a period

of sixty (60) days, counted from the date of the notification to the

holder sent by the International Bureau.

(5)

Where the holder does not file counterstatement within

the given time limit, the designation of Malta is deemed abandoned.

(6)

After giving both parties opportunities to present their

arguments, the Comptroller shall make his decision on the opposition

and the possible protection of the international registration in Malta.

Where after all the procedures before the Office have

been completed, the Comptroller has not found grounds to refuse

protection, has not received a notice of opposition and, as a result, has

not notified a provisional refusal in accordance with rule 56 or rule 59,

the Comptroller shall, as soon as possible and before the expiry of the

refusal period applicable under Article 5(2) of the Protocol, send to the

International Bureau a statement to the effect that protection is granted

to the mark in Malta, in accordance with the relevant provisions of the

Regulations under the Protocol.

Where after the Comptroller has notified the

International Bureau of a provisional refusal of protection in

accordance with rule 56 or Rule 59 and, all the procedures before the

Office having been completed, the mark is either totally or partially

protected, the Comptroller shall send to the International Bureau, in

accordance with the relevant provisions of the Regulations under the

Protocol

(a)

a statement to the effect that the provisional

refusal is withdrawn and that protection of the mark is granted

in Malta for all the goods and services for which protection has

been requested; or

(b)

a statement indicating the goods and services for

which or the conditions under which protection of the mark is

granted in Malta.

Where the Comptroller has sent to the International

Bureau a notification of total provisional refusal in accordance with

rule 56 or rule 59 and, all the procedures before the Office having been

completed, the Comptroller has decided to confirm such refusal of

protection of the mark in Malta for all the goods and services for

which protection has been requested, the Comptroller shall send to the

International Bureau a statement to that effect, in accordance with the

relevant provisions of the Regulations under the Protocol.

(1)

Any person aggrieved with any decision made by

the Comptroller in respect to international registrations designating

Malta may appeal therefrom to the Court within a period of fifteen

(15) days of service by the International Bureau, of the Comptroller’s

decision. Article 100 of the Act shall apply mutatis mutandis

Provided that an appeal can only be made to a definitive

decision made by the Comptroller.

(2)

Any decision, judgement or order of the Court following

the appeal filed following sub-rule (1) shall be communicated to the

International Bureau as a further decision in accordance with rule 64.

Where a notification of provisional refusal has not been

sent by the Comptroller within the applicable time limit under Article

5(2) of the Protocol, or, where following the sending of a statement in

accordance with rules 60 to 62, a further decision, taken by the

Comptroller or the Court, affects the protection of a mark in Malta, the

Comptroller shall send to the International Bureau a further statement

indicating the status of the mark and, where applicable, the goods and

services for which the mark is protected in Malta

Provided that in the case where a decision is taken by the

Court, the above requirement is subject to the Comptroller being aware

of that decision and said requirement is undertaken without prejudice

to Rule 19 of the Regulations under the Protocol or rule 65.

Where, upon a final decision, the Court pronounces the

invalidation of the effects of an international registration in Malta, the

Comptroller shall, provided that the Comptroller is made aware of that

decision, notify the International Bureau in accordance with the

relevant provisions of the Protocol and the Regulations under the

Protocol.

(1)

(a) Where

(i)

a mark registered in Malta is also the subject of an

international registration, and the protection resulting therefrom

extends to Malta, and

(ii)

the same person is recorded as holder of the

registration in Malta and of the international registration, and

(iii) goods and services listed in the national

registration are also listed in the international registration in

respect of Malta, and

(iv) the extension of that international registration to

Malta took effect after the date of registration of the mark in

Malta,

the holder of the international registration may request the

Comptroller to take note of that international registration in the

register.

(b)

A request filed with the Comptroller in accordance with

paragraph (a), shall be made on the relevant official form and shall be

subject to the payment of the prescribed fee.

(c)

Replacement of the national registration by an

international registration is deemed to be automatic when the

conditions under Article 4bis (1) of the Protocol are met. Replacement

is not depending on any action by the holder or the Comptroller. The

effective date of replacement is the date of the international

registration or the subsequent designation.

(d)

The Comptroller may examine the request referred to in

paragraph (1) for compliance with the conditions under Article 4bis

(1) of the Protocol.

(2)

Where the Comptroller has taken note of an international

registration in accordance with paragraph (1)(a), the Comptroller shall

notify the International Bureau accordingly. Such notification shall

indicate the following

(a)

the number of the international registration in

question,

(b)

where only some of the goods and services listed

in the international registration are concerned, those goods and

services,

(ċ)

the filing date and number of the application for

registration of the mark in Malta,

(d)

the registration

date

and

number

of

the

registration in Malta,

(e)

the priority date, if any, of the registration in

Malta.

(3)

A national registration or registrations shall not be

cancelled or otherwise affected by the fact that they are deemed to be

replaced by an international registration or that the Comptroller has

taken note in its Register of the latter.

(4) Where all the goods and services listed in the national

registration or registrations are not listed in the international

registration, the scope of replacement shall be limited to the goods and

services listed in the international registration.

(1)

(a)Where an international registration designating

Malta is cancelled at the request of the Office of origin, in accordance

with Article 6(4) of the Protocol, for all or some of the goods and

services listed in the international registration, an application may be

made to the Comptroller, within three (3) months from the date on

which the international registration was cancelled, by the person who

was the holder of the international registration at the date of its

cancellation, for registration of the same trademark ("an application

resulting from transformation"), for goods and services covered by the

list of goods and services contained in the international registration.

(b)

Subject to sub-rules (2) and (3), the provisions applicable

to a trademark application filed directly with the Comptroller shall

apply mutatis mutandis to an application resulting from

transformation.

(2)

(a)

An application resulting from transformation shall

be made on the relevant official form and shall, in addition, include the

following

(i)

a statement that the application is made by way of

transformation;

(ii)

the international registration number of the

international registration which has been cancelled;

(iii) the date of the said international registration or the

date of the subsequent designation, as appropriate;

(iv) the date on which the cancellation of the

international registration was recorded;

(v)

where applicable, the date of any priority claimed

in the international application and recorded in the International

Register.

(b)

An application resulting from transformation shall be

subject to the payment of the prescribed transformation fees.

(3)

(a)

Where a mark that is the subject of an

international registration has become protected in Malta on or before

the date on which the international registration was cancelled and,

provided that all the requirements relating to an application resulting

from transformation have been met, that trademark shall be registered

by the Comptroller. The date of registration shall be the date of the

cancelled international registration or the date of the subsequent

designation, as appropriate, and that registration shall enjoy any

priority enjoyed by the cancelled international registration.

(b)

Where a mark that is the subject of an international

registration has not yet become protected in Malta on or before the

date on which the international registration was cancelled, any

procedures or measures already undertaken on or before the date on

which an application resulting from transformation is filed for the

purpose of the international registration shall be considered as having

been undertaken for the purposes of the application resulting from

transformation. The filing date of the application resulting from

transformation shall be the date of the international registration or the

date of the subsequent designation, as appropriate.

International registrations which, in accordance with

Article 7 of the Protocol, have been renewed in respect of Malta as a

designated Contracting Party shall continue to have effect in Malta.

(1)

Any recording made in the International Register

concerning an international registration, shall, to the extent that it

applies to Malta as a designated Contracting Party, have the same

effect as if it had been recorded by the Comptroller in the Register.

(2)

Where, under the laws of Malta, the Comptroller

considers that the recording referred to in sub-rule (1) has no effect in

Malta, the Comptroller shall, where so provided for in the Regulations

under the Protocol, send a communication to the International Bureau

to this effect, in accordance with rules 70 and 71.

(1)

Where the Office is notified by the International

Bureau of a change in ownership of an international registration

affecting Malta, the Comptroller may declare that the change in

ownership has no effect in Malta. The effect of such a declaration shall

be that, with respect to Malta as the designated Contracting Party, the

international registration concerned shall remain in the name of the

transferor.

(2)

The declaration referred to in sub-rule (1) shall indicate

(a)

the reasons for which the change in ownership has

no effect;

(b)

the corresponding essential provisions of the law;

and

(c)

whether such declaration may be subject to review

or appeal.

(3)

The declaration referred to in paragraph (1) shall be sent

to the International Bureau before the expiry of eighteen (18) months

from the date on which the notification referred to in sub-rule (1) was

sent to the Office.

(4)

The holder of the international registration may request a

review of the declaration by the Comptroller within a period of sixty

(60) days, counted from the date of the notification sent by the

International Bureau.

(5)

The holder may appoint an agent or attorney to act on

their behalf before the Comptroller.

(6)

Any final decision relating to a declaration made in

accordance with sub-rule (4) shall be notified to the International

Bureau.

For recording of a licence in an international registration

with effect for Malta, articles 39 to 42 of the Act shall apply mutatis

mutandis.

(1)

Upon receiving a notification from the

International Bureau of a correction of an international registration

where Malta is designated, the Comptroller may declare in a

notification of provisional refusal to the International Bureau that it

considers that protection cannot, or can no longer, be granted to the

international registration as corrected.

(2)

The Comptroller shall send such declaration within a

time limit of eighteen (18) months counted from the date of the

notification to Malta by the International Bureau.

PART IV

European Union Trademark Rules

In this Part

"the European Union Trademark Regulation" means

Regulation EU 2017/1001 of the European Parliament and of

the Council of 14 June 2017 on the European Union trademark.

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 European Union

trademark claims the seniority of a registered trademark which has

been removed from the register under article 58(5) of the Act or has

been surrendered under article 60 of the Act, application may be made

to the Comptroller 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 29 of the Act or

declared invalid under articles 5 and 6 of the Act.

(2)

Where a registered trademark has been surrendered in

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

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

(3)

The provisions of articles, 5, 6 or 29 of the Act, as the

case may be, articles 97, 99 and 100 of the Act, apply in relation to an

application under sub-rule (1).

The provisions of article 25 of the Act shall apply in

relation to a European Union trademark as in relation to a registered

trademark.

The provisions of article 106 of the Act apply in relation

to persons on the list of professional representatives maintained in

pursuance of Article 120 of the European Union Trademark

Regulation ("professional representatives") and for this purpose the

definition of "trademark agent" in article 105 of the Act includes

professional representatives.

The provisions of articles 108 to 122 of the Act regarding

criminal offences committed in respect of locally registered marks

shall apply in relation to a European Union Trademark and for the

purposes of those provisions

(a)

references to a registered trademark shall include

a European Union 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 European Union Trademark is registered.

For the purposes of Article 123 of the European Union

Trademark Regulation, the following courts are designated as

European Union trademark courts

(a) the First Hall of the Civil Court;

(b) the Court of Appeal.

(1)

The provisions of this rule shall apply where the

applicant for or the proprietor of a European Union Trademark

requests the conversion of his European Union Trademark application

or European Union Trademark into an application for registration of a

trademark under the Act ("conversion application'') pursuant to Article

139 of the European Union Trademark Regulation.

(2)

Where the Comptroller decides that a request for a

conversion application is admissible pursuant to Article 139 of the

European Union Trademark Regulation, 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.

PART V

Time Limits

(1)

The Comptroller may, at the request of the person

or party concerned or at the Comptroller’s own initiative extend a time

or period extend any time limit in these rules where he is satisfied that

the failure to do something under these rules was wholly or mainly

attributed to a delay in, or failure of, a communication service

Provided that the request for extension is received before

the expiration of said time limit.

(2)

Any extension under sub-rule (1) shall be

(a)

made after giving the parties such notice; and

(b)

subject to such conditions, as the Comptroller

may direct.

(3)

In this rule "communication service" means a service by

which documents may be sent and delivered and includes post,

electronic mail, online submissions and courier.

(1)

The Comptroller may, at the request of the person

or party concerned or at the Comptroller’s own initiative extend a time

or period prescribed by these Rules or a time or period specified by the

Comptroller for doing any act required or authorised by the Act. Any

extension under this sub-rule shall be made subject to such conditions

as the Comptroller may direct

Provided that a request for extension under this rule shall

be made before the time or period in question has expired.

(2)

The Comptroller, may, in the case of natural phenomena

and disasters, at his own discretion, or at the request of the person or

party concerned, extend a time or period prescribed by these rules.

PART VI

Revocation and Invalidation

(1) A notice for revocation of a trademark based on article 29

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, 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.

(1) A notice for revocation of a trademark based on article 30 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 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.

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.

(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.

(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.

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.

(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.

(1) Where the notice for revocation or the 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

re gistration is surrendered i n acc ordance 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

h e i s s us ta i n in g h is n o t i c e f o r r e v o c a t i on o r h i s n o t ic e f o r

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.