CHAPTER 416
TRADEMARKS ACT
To regulate Trademarks
1st January, 2001
ACT XVI of 2000, as amended by Act IX of 2003; and Legal Notices 181 and 186 of 2006, and 426 of 2007.
PART I “business” includes a trade or profession;
“Comptroller” means the Comptroller of Industrial Property and includes any other person appointed to exercise all or any of the powers and perform all or any of the duties of the Comptroller;
“European Union” means the European Union referred to in the Treaty;
“infringement proceedings” in relation to a registered trademark, includes proceedings under article 16;
“Member State” means a state which is a member of the European Union;
“Minister” means the Minister responsible for the protection of Industrial Property;
“Paris Convention” means the convention referred to in article 49 of this Act;
“prescribed” means prescribed by this Act or by any regulations made thereunder;
“publish” means make available to the public, and references to publication in relation to registration, are to publication under article 37(4);
“register” means the register of trademarks kept under this Act and includes the register of trademarks kept under the Industrial Property (Protection) Ordinance, partly repealed by this Act;
“trade” includes any business or profession;
“trademark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal names), figurative element, letters, numerals or the shape of goods or their packaging:
Provided that for the purpose of this Act “any sign capable of being represented graphically” includes any sign capable of being put down in words;
Short title.
Interpretation.
Amended by:
IX. 2003.102.
Cap. 29.
Cap. 460.
Property right.
Absolute ground for refusal.
“the Treaty” has the same meaning assigned to it by the European Union Act.
(2) (a) References in this Act to a trademark include, unless the context otherwise requires, reference to a collective mark or certification mark referred to respectively in articles 45 and 46.
(b) References in this Act to use (or any particular description of use) of a trademark or of a sign identical with, similar to or likely to be mistaken for a trademark, include use (or that description of use) otherwise than by means of a graphic representation.
PART II Introductory
3. A registered trademark is a property right obtained by the registration of the trademark under this Act. The proprietor of a registered trademark has the rights and remedies provided by this Act.
Grounds for refusal of registration
4. (1) The following shall not be registered as trademarks Provided that a trademark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it in Malta. 5. (1) A trademark which consists of or contains shall not be registered unless it appears to the Comptroller that consent has been given by or on behalf of the President or the Archbishop. Provided that the Minister may by regulation extend the applicability of the provisions of this subarticle to apply mutatis mutandis in respect of religions other than the Roman Catholic Apostolic Religion.
6. (1) A trademark shall not be registered if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier trademark is protected.
(2) A trademark shall not be registered if because it is either identical with an earlier trademark and is to be registered for goods
Specially protected emblems.
Relative grounds for refusal of registration.
Meaning of “earlier trademark”.
or services similar to those for which the earlier trademark is protected, or it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public, including the likelihood of association by the public with the earlier trademark:
Provided that the mere association without the likelihood of confusion shall not prevent a mark from being registered.
(3) A trademark which shall not be registered if, or to the extent that, the earlier trademark has reputation in Malta and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
(4) A trademark shall not be registered if, or to the extent that, its use in Malta is liable to be prevented A person thus entitled to prevent the use of a trademark is referred to in this Act as “the proprietor of an earlier right” in relation to the trademark.
(5) Nothing in this article prevents the registration of a trademark where the proprietor of the earlier trademark or the proprietor of an earlier right consents to the registration.
7. (1) In this Act an “earlier trademark” means determining the registrability of a later mark for a period of one year after the expiry thereof. However, if the Comptroller is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry no account shall be taken of the expired mark.
8. (1) The Minister may make regulations providing that a trademark shall not be refused registration on a ground mentioned in article 6. Effects of a registered trademark
9. (1) The proprietor of a registered trademark has exclusive rights in the trademark. Such rights are infringed by such use of the trademark in Malta as is specified in article 10 without the consent of the proprietor. Provided that 10. (1) A person infringes a registered trademark if he uses in the course of trade a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trademark if he uses in the course of trade a sign where because
Power to remove relative grounds for refusal of registration.
Rights conferred by a registered trademark.
Infringement of a registered trademark.
Limits on effect of a registered trademark. there exists a likelihood of confusion on the part of the public, including the likelihood of association with the trademark:
Provided that the mere association without the likelihood where the trademark has a reputation in Malta and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark. However, any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trademark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.
11. (1) A registered trademark is not infringed by the use of another registered trademark in relation to goods or services for which the latter is registered.
(2) A registered trademark is not infringed by Provided the use is in accordance with honest practices in industrial or commercial matters.
(3) (a) A registered trademark is not infringed by the use in the course of trade in Malta of an earlier right.
(b) For the purposes of this subarticle an “earlier right” means an unregistered trademark or other sign continuously used in relation to goods or services by a person or his predecessor in title from a date prior to whichever is the earlier of (iii) an earlier right shall be regarded as applying if, or to the extent that, its use is protected by virtue of any rule of law.
12. (1) A trademark shall not entitle the proprietor to prohibit its use in relation to goods bearing that trademark which have been put on the market by the proprietor or with his consent. 13. (1) An applicant for registration of a trademark, or the proprietor of a registered trademark, may (2) The Comptroller may disclaim any right to the exclusive use of any specified element of the trademark.
Proprietor may not prohibit use.
Substituted by:
IX. 2003.103.
Registration subject to disclaimer or limitation.
Action for infringement.
Amended by: Order for erasure, etc., of offending sign.
Order for delivery up of infringing goods, material or articles.
Meaning of “infringing goods, material of articles”. Infringement proceedings
14. (1) Subject to the provisions of articles 28 and 29, an infringement of a registered trademark is actionable by the proprietor of the trademark by sworn application to be filed in the First Hall of the Civil Court.
(2) In an action for infringement all such relief as is available in respect of the infringement of any other property right shall be available to the plaintiff.
15. (1) Where a person is found to have infringed a registered trademark, the Court may make an order requiring him (2) If an order under subarticle (1) is not complied with, or it appears likely to the Court that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.
16. (1) The proprietor of a registered trademark may apply to the Court for an order for the delivery up to him, or such other person as the Court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business. 19.
(4) Nothing in this article affects any other power of the Court.
17. (1) In this Act the expressions “infringing goods”, “infringing material” and “infringing articles” shall be construed in accordance with the following subarticles of this article.
(2) Goods are “infringing goods”, in relation to a registered trademark, if they or their packaging bear a sign identical or similar to that mark and 18. (1) An application for an order under article 16 may not be made after the end of the period of six years from except as provided in the following subarticle.
(2) If during the whole or part of that period the proprietor of the registered trademark is prevented by fraud or concealment from discovering the facts entitling him to apply for an order, an application may be made at any time before the end of the period of six years from the date on which he could with reasonable diligence have discovered those facts.
19.
PRELIMINARY
REGISTERED TRADEMARKS