Ley de Marcas (Capítulo 416), Malta, WIPO Lex

Textos principales

Inglés Trademark act (Chapter 416)

Maltés Att Dwar It-Trademarks (Kapitolu 416)

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PART I
PART II
PART III
PART IV
PART V
PART VI
PART VII
FIRST SCHEDULE
SECOND SCHEDULE

CHAPTER 416 TRADEMARKS ACT

To regulate Trademarks

1st January, 2001

ACT XVI of 2000, as amended by Act IX of 2003.

PART I PRELIMINARY

The short title of this Act is the Trademarks Act. Short title.
In this Act, unless the context otherwise requires -Interpretation.

Amended by:“business” includes a trade or profession; IX. 2003.102.

“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 Cap. 29. Property (Protection) Ordinance, partly repealed by this Act;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;

“the Treaty” has the same meaning assigned to it by the European Union Act. Cap. 460.

Property right.

Absolute ground for refusal.

(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
REGISTERED TRADEMARKS

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

(a): signs which do not fall within the definition of trademarks in article 2;
(b): trademarks which are devoid of any distinctive character;
(c): trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
(d): trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

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.

(3): A trademark shall not be registered if it is

(a) contrary to public policy or to accepted principles of morality, or

(b) of such a nature as to deceive the public or likely to deceive the public as to the nature, quality or geographical origin of the goods or service or in any other manner.

(4): A trademark shall not be registered if or to the extent that its use is prohibited in Malta by any enactment or rule of law.
(5): A trademark shall not be registered in the cases specified, or referred to, in article 5.
(6): A trademark shall not be registered if, or to the extent that, the application is made in bad faith.

5. (1) A trademark which consists of or contains

(a): the arms, or any of the principal armorial bearings of the arms appertaining to the President or the Roman Catholic Archbishop of Malta, or any insignia or device so nearly resembling such arms or any such armorial bearing as to be likely to be mistaken for them or it,
(b): a representation of the Presidential or Episcopal flags,
(c): a representation of the President or the Archbishop, or any colourable imitation thereof, or
(d): words, letters or devices likely to lead persons to think that the applicant either has or recently has had Presidential or Episcopal patronage or authorization,

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.

(2): A trademark which consists of a representation of the national flag of Malta shall not be registered.
(3): A trademark which contains a representation of the national flag of Malta shall not be registered if it appears to the Comptroller that the use of the trademark would be misleading or grossly offensive.
(4): A trademark shall not be registered in the cases specified in article 51 or article 52:

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 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

Specially protected emblems.

Relative grounds for refusal of registration.

Meaning of “earlier trademark”.

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

(a): is identical with or similar to an earlier trademark, and
(b): is to be registered for goods or services which are not similar to those for which the earlier trademark is protected,

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): by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade, or
(b): by virtue of an earlier right other than those referred to in paragraph (a) hereof or in subarticles (1) to (3) in particular by virtue of the law of copyright, or registered designs.

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

(a): a registered trademark, which has a date of application for registration earlier than that of the trademark in question, taking account, where appropriate, of the priorities claimed in respect of the trademarks,
(b): a trademark which, at the date of application for registration of the trademark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention as a well-known trademark.

(2): Subject to its being so registered, references in this Act to an earlier trademark includes a trademark in respect of which an application for registration has been made and which, if registered, would be an earlier trademark by virtue of subarticle 1(a).
(3): A trademark as is referred to in subarticle (1)(a) whose registration expires shall continue to be taken into account in 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.

(3): Regulations making such provision as is mentioned in subarticle (2)(a) may direct that the provisions of article 35 in so far as they require a search to be carried out shall not have effect.
(4): Regulations making such provision as is mentioned in subarticle (2)(b) may provide that article 43(3) in so far as it provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order.
(5): Regulations under this article may contain such transitory provisions as appear to the Minister to be appropriate.

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.

(2): Any reference in this Act to the infringement of a registered trademark shall be deemed to be a reference to any such infringement of the rights of the proprietor.
(3): The rights of the proprietor have effect from the date of registration reckoned in accordance with article 37(3):

Provided that

(a): no infringement proceedings may be begun before the date on which the trademark is in fact registered; and
(b): no offence under article 72 shall be committed by anything done before the date of publication of the registration.

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

(a) the sign is identical with the trademark and is used in relation to goods or services similar to those for which

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.

the trademark is registered, or

(b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered,

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 of confusion shall not be considered as constituting an infringement.

(3) A person infringes a registered trademark if he uses in the course of trade a sign which

(a): is identical with or similar to the trademark, and
(b): is used in relation to goods or services which are not similar to those for which the trademark is registered,

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.

(5): A person who applies a registered trademark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trademark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(6): Nothing in the preceding provisions of this article shall be construed as preventing the use of a registered trademark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.

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

(a): the use by a person of his own name or address,
(b): the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
(c): the use of the trademark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts:

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

(i): the use of the first-mentioned trademark in relation to those goods or services by the proprietor or his predecessor in title, or
(ii): the registration of the first-mentioned trademark in respect of those goods or services in the name of the proprietor or his predecessor in title; and

(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.

(2): The provisions of subarticle (1) shall not apply where there is legitimate reasons for the proprietor to oppose further commercialisation of the goods particularly where the condition fo the goods is changed or impaired after they have been put on the market.
(3): For the purposes of this article “market” means the market in Malta and as from the 1st May 2004, the market in any Member State.

13. (1) An applicant for registration of a trademark, or the proprietor of a registered trademark, may -

(a): disclaim any right to the exclusive use of any specified element of the trademark, or
(b): agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation.

(2) The Comptroller may disclaim any right to the exclusive use of any specified element of the trademark.

(3) The Minister may make rules providing for the publication

Proprietor may not prohibit use.

Substituted by:

IX. 2003.103.

Registration subject to disclaimer or limitation.

Action for infringement.

Order for erasure, etc., of offending sign.

Order for delivery up of infringing goods, material or articles.

Meaning of “infringing goods, material of articles”.

and entry in the register of a disclaimer or limitation.

(4) Where the registration of a trademark is subject to a disclaimer or limitation, the rights conferred by article 9 shall be restricted accordingly.

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 writ of summons 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 -

(a): to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or
(b): if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.

(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.

(2): An application shall not be made after the end of the period specified in article 18; and no order shall be made unless the Court also makes, or it appears to the Court that there are grounds for making, an order under article 19.
(3): A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this article shall, retain them pending the decision of the Court under article

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

(a): the application of the sign to the goods or their packaging is an infringement of the registered trademark, or
(b): the goods are proposed to be imported into Malta and the application in Malta, of the sign, to them or their packaging would be an infringement of the registered trademark, or
(c): the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trademark.

(3): Material is “infringing material”, in relation to a registered trademark, if it bears a sign identical or similar to that mark and

(4): “Infringing articles”, in relation to a registered trademark, means articles

18. (1) An application for an order under article 16 may not be made after the end of the period of six years from

(a): in the case of infringing goods, the date on which the trademark was applied to the goods or their packaging,
(b): in the case of infringing material, the date on which the trademark was applied to the material, or
(c): in the case of infringing articles, the date on which they were made,

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. (1) Where infringing goods, material or articles have been delivered up in pursuance of an order under article 16, an action by writ of summon may be brought before the Court by any party interested

(a): for an order that they be destroyed or forfeited to such person as the Court may think fit, or
(b): for a decision that no such order should be made.

Period after which remedy of delivery up not available.

Order as to disposal of infringing goods, material or articles.

Remedy for groundless threats of infringement proceedings.

(2): In considering its decision, the Court shall consider whether other remedies available in an action for infringement of the registered trademark would be adequate to compensate the proprietor and any licensee to protect their interests.
(4): Where there is more than one person interested in the goods, material or articles, the Court shall make such order as it thinks fit.
(5): If the Court decides that no order should be made under this article, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return.

20. (1) Where a person threatens another with proceedings for infringement of a registered trademark other than

(a): use of the mark on goods or their packaging,
(b): the importation of goods to which, or to the packaging of which, the mark has been applied, or
(c): the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this article by writ of summons before the Civil Court, First Hall.

(2) The relief which may be applied for is any of the following

(a): a declaration that the threats are unjustified,
(b): an injunction against the continuance of the threats,
(c): damages in respect of any loss he may have sustained by the threats,

and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute, or if done would constitute, an infringement of the registered trademark concerned.

(3): Where the defendant shows that the acts in respect of which proceedings were threatened constitute or would constitute an infringement of the registered trademark, the plaintiff shall nevertheless be entitled to relief if he shows that the registration of the trademark is invalid or liable to be revoked.
(4): The mere notification that a trademark is registered, or that an application for registration has been made, does not constitute a

threat of proceedings for the purposes of this article.

Registered trademark as object of property

A registered trademark is the personal property of its owner.
(1) Where a registered trademark is granted to two or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trademark.

(2): The following provisions apply where two or more persons are co-proprietors of a registered trademark, by virtue of subarticle
(1): or otherwise.
(3): Subject to any agreement to the contrary, each coproprietor is entitled, personally or through his agents, to do for his own benefit and without the consent of or the need to account to any other co-proprietor, any act which would otherwise amount to an infringement of the registered trademark.
(5): Infringement proceedings may be brought by any coproprietor, but a co-proprietor may not, without the leave of the Court, proceed with the action unless the other, or each of the other co-proprietors, is joined in the suit.

A co-proprietor who is thus joined in the suit shall not be liable for any costs in the action.

Nothing in this subarticle affects the making of any precautionary warrant on the application of a single co-proprietor.

(6) Nothing in this article affects the rights and obligations of trustees or personal representatives, or their rights and obligations as such.

23. (1) A registered trademark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property.

It is so transmissible either in connection with the goodwill of a business or independently.

(3): An assignment of a registered trademark is not effective unless it is in writing signed by or on behalf of the assignor or, as

Nature of a registered trademark.

Co-ownership of a registered trademark.

Transmission of a registered trademark.

Registration of transactions affecting a registered trademark.

the case may be a personal representative.

(4) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark as part of the goodwill of a business.

24. (1) On application being made to the Comptroller by

(a): a person claiming to be entitled to an interest in or under a registered trademark by virtue of a registrable transaction, or
(b): any other person claiming to be affected by such a transaction,

the prescribed particulars of the transaction shall be entered in the register.

(5): The Minister may make regulations prescribing rules as to

(a) amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence, and

(c): the amendment or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.

The provisions of article 21 to 24 apply mutatis mutandis in relation to an application for the registration of a trademark in the same manner in relation to a registered trademark.

(1) A licence to use a registered trademark may be general or limited. A limited licence may in particular, apply

in relation to some but not all the goods or services for which the trademark is registered, or
in relation to use of the trademark in a particular manner or a particular locality.

(2): Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s interest, and references in this Act to doing anything with, or without, the consent of the proprietor of a registered trademark shall be construed accordingly.
(3): Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.

27. (1) In this Act an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trademark in the manner authorised by the licence.

(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence.

28. (1) The provisions of this article shall apply with respect to the rights of a licensee in relation to infringement of a registered trademark:

Provided that they shall not apply where or to the extent that, in accordance with article 29(1) an exclusive licensee has a right to bring proceedings in his own name.

Application for registration of a trademark as an object of property.

Licensing of a registered trademark.

Exclusive licences.

General provisions as to the rights of licensees in case of infringement.

Exclusive licensee having right and remedies of assignee.

(2): A licensee is entitled, unless his licence provides otherwise, to call on the proprietor of the registered trademark to take infringement proceedings in respect of any matter which affects his interests.

the licensee may bring the proceedings in his own name as if he were the proprietor.

(4): Where infringement proceedings are brought by a licensee by virtue of this article, the proprietor shall be joined in the suit.
(5): In infringement proceedings brought by the proprietor of a registered trademark any loss suffered or likely to be suffered by licensees shall be taken into account by the Court which shall give such directions as it thinks fit with regard to the disposal and distribution of any sum awarded as a remedy for the infringement.

29. (1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

Where or to the extent that such provision is made, the licensee shall be entitled, subject to the provisions of the licence and to the following provisions of this article, to bring infringement proceedings in his own name against any person other than the proprietor.

(2): The rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trademark; and references in this Act to the proprietor of a registered trademark relating to infringement shall be construed accordingly.
(3): In an action brought by an exclusive licensee under this article a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trademark.
(4): Where proceedings for infringement of a registered trademark are brought by the proprietor or by the exclusive licensee relating to an infringement in respect of which they have concurrent right of action, the proprietor or, as the case may be, the exclusive licensee who are not the plaintiff shall be joined in the suit.
(5): (a) Where an action for infringement of a registered trademark relating to an infringement in respect of which the proprietor and an exclusive licensee have concurrent right of action is brought

(i) the Court shall in assessing damages take into account

(1)	the terms of the licence, and
(2)	any pecuniary remedy already awarded or
	available to either of them in respect of the

infringement;

(ii) no account of profits shall be ordered to be made if an award of damages has been made, or an account of profits has been ordered, in favour of either of them in respect of the infringement; and

(iii) the Court shall, if an account of profits has been ordered, apportion subject to any agreement between them, the profits between them as the Court considers just.

(b) The provisions of this subarticle apply whether action is brought by the proprietor alone, or it is brought by the proprietor and the exclusive licensee; and if they are not both parties the Court may give such directions as it deems fit with regard to the disposal and distribution of any sum awarded as remedy for the infringement.

(6): The proprietor of a registered trademark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under article 16; and the Court may on the application of the licensee make such order under that article as it thinks fit having regard to the terms of the licensee.
(7): The provisions of subarticles (4) to (6) shall be without prejudice to any agreement to the contrary between the exclusive licensee and the proprietor.

Application for a registered trademark

An application for registration of a trademark shall be made to the Comptroller in such manner as may be prescribed.
(1) The date of filing of an application for registration of a trademark is the date on which the prescribed elements are furnished to the Comptroller by the applicant:

Provided that where the elements are furnished on different days, the date of filing shall be the date on which the last element is so furnished.

(2) References in this Act to the date of application for registration shall be construed as a reference to the date of filing of the application.

32. (1) Goods and services shall be classified for the purposes of the registration of trademarks according to such system of classification as may be prescribed.

(2) Any question arising as to the class within which any goods or services fall shall be determined by the Comptroller, whose decision shall be final.

Priority

33. (1) A person who has duly filed an application for protection of a trademark in a country which is a member of the World Trade Organisation or a party to the Paris Convention, hereinafter in this Act referred to as a “Convention application”, or

Application for registration.

Date of filing.

Classification of trademarks.

Claim to priority of Convention application.

Claim to priority from other relevant overseas application.

his successor in title, has a right to priority, for the purposes of registering the same trademark under this Act for any or all of the same goods or services for which such an application has been filed, for a period of six months from the date of filing of the first such application.

(2): If the application for registration under this Act is made within such six-month period

(3): (a) Any filing which in a country which is a member of the World Trade Organisation or is a party to the Paris Convention is under its legislation or any international agreement to which such country is a party, treated as if it were a regular national filing, shall be treated as giving rise to the right of priority.

(4): A subsequent application concerning the same goods or services as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (the filing date of which is the starting date of the period of priority), if at the time of the subsequent application

and the previous application may not thereafter serve as a basis for claiming a right of priority.

(5): Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application.
(6): A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently.

34. (1) The Minister may make regulations conferring on a person who has duly filed an application for protection of a trademark in a country or territory in relation to which the Maltese Government is a party to a treaty, convention, arrangement or engagement for the reciprocal protection of trademarks, a right to priority, for the purpose of registering the same trademark under this Act for any or all of the same goods or services, for a such period as may be specified in the application from the date of filing of that application.

(2) Such regulations may make provisions similar to those contained in article 33 in relation to Convention applications or such other provision as appears to the Minister to be appropriate.

Registration procedure

35. (1) The Comptroller shall examine whether an application for registration of a trademark satisfies the requirements of this Act and for that purpose he shall carry out a search, to such extent as he considers necessary, of earlier trademarks.

(2): If it appears to the Comptroller that the requirements for registration are not met, he shall inform the applicant and give him an opportunity to make representations or to amend the application within such period as the Comptroller may specify.
(3): If the applicant fails to satisfy the Comptroller that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Comptroller shall refuse the application.
(4): If it appears to the Comptroller that the requirements for registration are met, he shall accept the application as eligible for registration.

36. (1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.

(2) Save as provided in subarticle (1), an application may be amended, at the request of the applicant, only by correcting

(a): the name or address of the applicant,
(b): errors of wording or of copying, or
(c): obvious mistakes,

and then only where the correction does not substantially affect the identity of the trademark or extend the goods or services covered by the application.

37. (1) Where an application has been accepted as eligible for registration, the Comptroller shall register the trademark, unless it appears to him having regard to matters coming to his notice after he accepted the application that it was accepted in error.

(2): A trademark shall not be registered and the application shall be deemed to be withdrawn unless any fee prescribed in respect of any action taken before the registration is paid within the prescribed period.
(3): A trademark when registered shall be registered as of the date of filing of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration.
(4): On the registration of a trademark the Comptroller shall publish the registration in the prescribed manner and issue to the

Examination of application.

Withdrawal, restriction or amendment of application.

Registration.

Duration of registration.

Renewal of registration.

Alteration of a registered trademark.

Surrender of a registered trademark.

applicant a certificate of registration.

Duration, renewal and alteration of registered trademark

38. (1) A trademark shall be registered for a period of ten years from the date of registration.

(2) Registration may be renewed in accordance with article 39 for further periods of ten years.

39. (1) The registration of a trademark may be renewed at the request of the proprietor, subject to the payment of the prescribed renewal fee not more than 6 months before the date of expiry.

(2): The Minister may by regulation make rules providing that the Comptroller informs the proprietor of a registered trademark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.
(4): Renewal shall take effect from the expiry of the previous registration.
(5): If the registration is not renewed in accordance with the above provisions, the Comptroller shall remove the trademark from the register.
(6): Provision may be made by rules for the restoration of the registration of a trademark which has been removed from the register, subject to such conditions (if any) as may be prescribed.
(7): The renewal or restoration of the registration of a trademark shall be published in the prescribed manner.

40. (1) A registered trademark shall not be altered in the register, during the period of registration or on renewal.

(2): Nevertheless, the Comptroller may, at the request of the proprietor, allow the alteration of a registered trademark where the mark includes the proprietor’s name or address and the alteration is limited to the alteration of that name or address and does not substantially affect the identity of the mark.
(3): Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

Surrender, revocation and invalidity

41. (1) A registered trademark may be surrendered by the proprietor in respect of any or all of the goods or services for which it is registered.

(2) Provision may be made by rules -

(a) as to the manner and effect of a surrender, and

(b) for protecting the interests of other persons having a right in the registered trademark.

42. (1) The registration of a trademark may be revoked on any of the following grounds -

(a): that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in Malta, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for such non-use;
(b): that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for such non-use;
(c): that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;
(d): that in consequence of the use made of it by the proprietor or with his consent, it is liable to mislead the public in relation to the goods or services for which it is registered, particularly as to the nature, quality or geographical origin of those goods or services.

(2): For the purposes of subarticle (1) use of a trademark includes the use in a form differing in such elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Malta includes affixing the trademark to goods or to the packaging of goods in Malta solely for export purposes.
(4): An application for revocation may be made by writ of summons before the First Hall, Civil Court by any person.
(5): Where grounds for revocation exist in respect of only some of the goods or services for which the trademark is registered, revocation shall be limited to those goods or services.
(6): Where the registration of a trademark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from -

(a) the date of the application for revocation, or

Revocation of registration.

Grounds for invalidity of registration.

Effect of acquiescence.

(b) if grounds for revocation existed at an earlier date, such earlier date.

43. (1) The registration of a trademark may be declared invalid on the ground that the trademark was registered in breach of article 4 or any of the provisions referred to in that article.

Where the trademark was registered in breach of subarticle (1)(b), (c) or (d) of that article, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(3): An application for a declaration of invalidity may be made by any person, by writ of summons before the First Hall of the Civil Court.
(4): In the case of bad faith in the registration of a trademark, the Comptroller himself may apply to the Court for a declaration of the invalidity of the registration.
(5): Where the grounds of invalidity exist in respect of only some of the goods or services for which the trademark is registered, the trademark shall be declared invalid with regard to those goods or services only.
(6): Where the registration of a trademark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made:

Provided that this shall not affect transactions past and closed.

44. (1) Where the proprietor of an earlier trademark or other earlier right being aware of the use of a registered trademark in Malta, has acquiesced to such use for a continuous period of five years, he shall cease to be entitled to any right on the basis of that earlier trademark or other right

(a): to apply for a declaration that the registration of the later trademark is invalid, or
(b): to oppose the use of the later trademark in relation to the goods or services in relation to which it has been so used,

unless the registration of the later trademark was applied for in bad faith.

(2) In the cases referred to in subarticle (1), the proprietor of the later trademark is not entitled to oppose the use of the earlier trademark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trademark or right may no longer be invoked against his later trademark.

Collective marks

45. (1) A collective mark is a mark distinguishing the goods Collective marks. or services of members of an association which is the proprietor of the mark from those of other undertakings.

(2) The provisions of this Act apply to collective marks subject to the provisions of the First Schedule to this Act.

Certification marks

46. (1) A certification mark is a mark indicating that the Certification marks.

goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

(2) the provisions of this Act apply to certification marks subject to the provisions of the Second Schedule.

PART III INTERNATIONAL MATTERS

International registration

47. In this Part - The Madrid

Protocol.
“the Madrid Protocol” means the Protocol relating to the Madrid

Agreement concerning the International Registration of Marks

adopted at Madrid on 27 June, 1989;

“the International Bureau” has the meaning given by Article 2(1) of that Protocol; and

“international trademark (Malta)” means a trademark which is entitled to protection in Malta under that Protocol.

48. (1) The Minister may by Order make such provisions as Power to make provision giving

may be necessary for giving effect in Malta to the provisions of the

effect to Madrid

Madrid Protocol or any other regional or international registration _Protocol.systems concerning trademarks and without prejudice to the generality of the foregoing.

The Order may, in particular, be made with respect to

(a): the making of applications for international
registrations by way of the Industrial Property Office
as office of origin;
(b): the procedures to be followed where the basic Malta
application or registration fails or ceases to be in
force;
(c): the procedures to be followed where the Industrial
Property Office receives from the International Bureau
a request for extension of protection to Malta;
(d): the effects of a successful request for extension of
protection to Malta;

The Paris Convention.

Protection of well-known trademarks: Article 6 bis.

National emblems, etc., of Convention countries: Article 6ter.

(e): the transformation of an application for an international registration, or an international registration, into a national application for registration;
(f): the communication of information to the International Bureau;
(g): the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.

(2) Without prejudice to the generality of subarticle (1), provision may be made by regulations under this article applying in relation to “an international trademark (Malta)” the provisions of article 20 and of articles 72 to 86 of this Act.

The Paris Convention

49. (1) In this Part

(a): “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised or amended from time to time, and
(b): “Convention country” means a country, other than Malta, which is a party to that Convention.

(2) The Minister may make regulations to make provision, as appear to him appropriate in consequence of any revision or amendment of the Paris Convention after the passing of this Act to enable Malta to comply with any provisions of such amendment, and such regulations may in particular provide that any of the provisions of Part II of this Act shall no longer apply or shall apply with such amendments as may be required.

50. (1) References in this Act to a trademark which is entitled to protection under the Paris Convention as a well-known trademark are to a mark which is well-known in Malta as being the mark of a person who is a national of a Convention country, or is domiciled in, or has a real and effective industrial or commercial establishment in a Convention country, whether or not that person carries on business, or has any goodwill, in Malta, and reference to the proprietor of such a mark shall be construed accordingly.

(2): Subject to the provisions of article 44, the proprietor of a trademark which is entitled to protection under the Paris Convention as a well-known trademark is entitled to restrain by injunction the use in Malta of a trademark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.
(3): Nothing in subarticle (2) shall affect the continuation of any bona fide use of a trademark begun before the coming into force of this article.

51. (1) A trademark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Comptroller that use of the flag in the manner proposed is permitted without such authorisation.

(2): A trademark which consists of or contains the armorial bearing or any other State emblem of a Convention country which is protected under the Paris Convention shall not be registered without the authorisation of the competent authorities of that country.
(3): A trademark which consists of or contains an official sign or hallmark indicating control and warranty adopted by a Convention country shall not, where the sign or hall mark is protected under the Paris Convention, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.
(4): The provisions of this article relative to national flags and other State emblems, and official signs or hallmarks apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5): Nothing in this article prevents the registration of a trademark on the application of a national of a country who is authorised to make use of a State emblem or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
(6): Where by virtue of this article the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trademark, those authorities are entitled to restrain any use of the mark in Malta without their authorisation.

52. (1) This article applies to the armorial bearing, flags or other emblems, and the names and their abbreviations, of international intergovernmental organisations of which one or more Convention countries are members.

(3): The provisions of this article relative to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4): Where by virtue of this article the authorisation of an international organisation is or would be required for the registration of a trademark, that organisation is entitled to restrain

Emblems, etc., of certain international organisations: Article 6ter.

Notification under Article 6ter of the Convention.

Acts of agent or representative: Article 6septies.

any use of the mark in Malta without its authorisation.

(5) Nothing in this article affects the right of a person whose bona fide use of the trademark in question began before 1 January 2000.

53. (1) For the purposes of article 51 State emblems of a Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that

(a): the country in question has notified Malta in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, sign or hallmark,
(b): the notification remains in force, and
(c): Malta has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.

(3): Notification under Article 6ter (3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the receipt of the notification.
(4): The Comptroller shall keep and make available for public inspection by any person, as prescribed in the regulations, a list of the state emblems and official signs or hallmarks, and the emblems, abbreviations and names of international organisations, which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter (3).

54. (1) The following provisions apply where an application for registration of a trademark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country.

(3): The proprietor may restrain any use of the trademark in Malta which is not authorised by him.

(4): Subarticles (2) and (3) shall not apply if, or to the extent that, the agent or representative shows that his actions were authorised by the proprietor.
(5): An application under subarticle (2) must be made within three years of the proprietor becoming aware of the registration; and no injunction shall be granted under subarticle (3) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more.

PART IV
ADMINISTRATIVE AND OTHER SUPPLEMENTARY
PROVISIONS

The register

55. (1) (a) The Comptroller shall maintain a register of trademarks.

(b) References in this Act to “the register” are to that register; and references to registration, in particular, in the expression “registered trademark”, are, unless the context otherwise requires, to registration in that register.

(2): There shall be entered in the register in accordance with this Act

(3): The register shall be kept in such manner as may be prescribed, and provision shall in particular be made for

56. (1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register:

Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trademark.

(2) An application for rectification may be made either to the Comptroller or to the Court:

Provided that if proceedings concerning the trademarks in question are pending before the Court

(a): the application must be made to the Court; and
(b): if the application is made to the Comptroller, he may at any stage of the proceedings refer the application to the Court.

(3) Except where the Comptroller or the Court directs

Maintenance and content of register.

Rectification or correction of the register.

Adaptation of entries to new classification.

Power to require use forms.

Information about applications and registered trademarks.

otherwise the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made.

(4): The Comptroller may, on request made in the prescribed manner by the proprietor of a registered trademark, or a licensee, enter any change in his name or address as recorded in the register.
(5): The Comptroller may remove from the register any matter appearing to him to have ceased to have effect.

57. (1) The Minister may by regulations make rules empowering the Comptroller to do such things as may be necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trademarks, and without prejudice to the generality of the aforesaid provision may in particular be made for the amendment of existing entries on the register so as to accord with the new classification.

(2): Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the Comptroller that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the right of any person.
(4): Any such proposal shall be advertised, and may be opposed, in such manner as may be prescribed.

Powers and duties of the Comptroller

The Comptroller may require the use of such forms as he may direct for any purpose relating to the registration of a trademark or any other proceeding before him under this Act.
(1) Subject to such restrictions as the Minister may by regulations impose after publication of the registration of a trademark, the Comptroller shall on request provide a person with such information and permit him to inspect such documents relating to the registered trademark, as may be specified in the request.

Any such request must be made in such manner and be accompanied by such fee as may be prescribed.

(2) Before publication of registration of a trademark, documents or information constituting or relating to the application shall not be published by the Comptroller or communicated by him to any person except

(a): in such cases and to such extent as may be prescribed, or
(b): with the consent of the applicant.

60. (1) The Comptroller shall not be taken to warrant the validity of the registration of a trademark under this Act or under any treaty, convention, arrangement or engagement to which Malta is a party.

(2): The Comptroller is not subject to any liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent on such examination.
(3): No action shall lie against an officer of the Comptroller in respect of any matter for which, by virtue of this article, the Comptroller is not liable.

Legal proceedings and appeals

In all legal proceedings relating to a registered trademark (including proceedings for rectification of the register) the registration of a person as proprietor of a trademark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.
(1) If in proceedings before the Court the validity of the registration of a trademark is contested and it is found by the Court that the trademark is validly registered, the Court shall give judgement accordingly.

(2) Where the Court has given such a judgement and in subsequent proceedings

(a): the validity of the registration is again questioned, and
(b): the proprietor obtains a final order or judgement in his favour, he shall be entitled to his costs unless the Court directs otherwise.

63. (1) In proceedings before the Court involving a demand for

(a): the revocation of the registration of a trademark,
(b): a declaration of the invalidity of the registration of a trademark, or
(c): the rectification of the register,

the Comptroller shall be notified with the proceedings and shall be entitled to appear and to be heard if so directed by the Court.

(2) Unless otherwise directed by the Court, the Comptroller may, instead of appearing, file in the record of the case a statement in writing signed by him, giving particulars of

(a): any proceedings before him in relation to the matter in issue,
(b): the grounds of any decision given by him affecting it,
(c): the practice of the Industrial Property Office in like cases, or
(d): such matters relevant to the issues and within his knowledge as Comptroller as he thinks fit;

Exclusion of liability in respect of official acts.

Registration to be prima facie evidence of validity.

Certification of validity of contested registration.

Comptroller’s appearance in proceedings involving the register.

Appeals from the Comptroller’s decision.

Power of Minister to make rules.

Fees.

Hours of business and business days.

and the statement shall be deemed to form part of the evidence in the proceedings.

64. (1) Any decision of the Comptroller under this Act, may be appealed from, before the Court of Appeal composed in the manner provided in subarticle (6) of article 41 of the Code of Organization and Civil Procedure by application within fifteen days of service of the Comptroller’s decision.

(2): For the purposes of subarticle (1) of this article “decision” means any act, other than such acts as may by regulations be prescribed, done by the Comptroller in exercise of a discretion vested in him by or under this Act.
(3): The Minister may make rules governing appeals to the Court of Appeal under this Act, and presenting a scale of costs and fees in relation to such appeals.

Rules, fees, hours of business, etc.

65. (1) The Minister responsible for the protection of industrial property may make regulations for the better administration of this Act, making such rules as are required by any provisions of this Act, prescribing anything authorised or required by any provision of this Act to be prescribed, and generally for regulating practice and procedure under this Act, and in particular provision may be made

(a): with regard to the manner of filing of applications and other documents;
(b): requiring and regulating the translation of documents and the filing and authentication of any translation;
(c): with regard to the service of documents;
(d): authorising the rectification of irregularities of procedure;
(e): prescribing time limits for anything required to be done in connection with any proceeding under this Act;
(f): providing for the extension of any time limit so prescribed, or specified by the Comptroller whether or not such time limit has already expired.

66. (1) There shall be paid in respect of applications and other matters under this Act such fees as may be prescribed.

(2) Provision may be made by rules as to

(a): the payment of a single fee in respect of two or more matters, and
(b): the circumstances, if any, in which a fee may be repaid or remitted.

67. (1) The Comptroller may give directions specifying the hours of business of the Industrial Property Office for the purpose of the transaction by the public of business under this Act, and the days which are business days for that purpose.

(2): Business done on any day after the specified hours of business, or on a day which is not a business day, shall be deemed to have been done on the next business day; and where the time for doing anything under this Act expires on a day which is not a business day, that time shall be extended to the next business day.
(3): Directions under this article may make different provision for different classes of business and shall be published in the prescribed manner.

Trademark agents

Except as may otherwise be prescribed, any act required or authorised by this Act to be done by or in respect of a person in connection with the registration of a trademark, or any procedure relating to a registered trademark, may be done by or in respect of an agent authorised by that person in writing.
(1) The Minister may make rules requiring the keeping of a register of persons who act as agent for the purpose of applying for or obtaining the registration of trademarks; and in this Act a “registered trademark agent” means a person whose name is entered in the register kept under this article.

(2) The Minister may make rules regulating the registration of persons as registered trademark agents, and may in particular

(a): require the payment of such fees in connection with such registration as may be prescribed, and
(b): authorise in such cases as shall be specified the erasure from the register of the name of any person registered as a registered trademark agent or the suspension of such a registration.

(3) Only registered persons may

(a): carry on a business under any name or other description which contains the words “registered trademark agent”; or
(b): in the course of a business otherwise describe or hold himself out, or permit themselves to be described or held out, as registered trademark agents.

The provisions of article 588 of the Code of Organization and Civil Procedure shall apply with regard to registered trademark agents as it applies with respect to Advocates and legal procurators.

The Comptroller may, in accordance with such rules as may be prescribed refuse to recognize as agent in respect of any business under this Act

a person who not being a registered trademark agent shall have falsely posed as such;
a person whose name has been erased from and not restored to, or who is suspended from, the register of trademark agent on the ground of misconduct;
a person who is found to have been guilty of such

Recognition of agents.

The register of trademark agents/ attorneys.

Privilege for communication with registered trademark agents. Cap. 12.

Power to Comptroller to refuse to deal with certain agents.

conduct as would, in the case of an individual registered in the register of trademark agents, render him liable to have his name erased from the register on the ground of misconduct;

(d) a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognize under paragraph (a), (b) or

PART V CRIMINAL OFFENCES

Offences

Unauthorised use 72. (1) Any person who with a view to gain for himself or of trademark, etc.,

another, or with intent to cause loss to another, and without the

in relation to

goods. consent of the proprietor

(a): applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trademark, or
(b): sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or
(c): has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b), or
(e): uses, in the course of a business material bearing such a sign for labelling or packaging goods, or as a business paper in relation to goods, or for advertising goods, or
(f): has in his possession, custody or control in the course of a business any such material with a view to the doing of anything, by himself or another, which would be an offence under paragraph (e), or
(g): (i) makes an article specifically designed or adapted for making copies of a sign of or to make a sign likely to be mistaken for, a registered trademark, or

(ii) has such an article in his possession, custody or control in the course of a business,

knowing or having reason to believe that it has been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods,

shall be guilty of an offence against this article.

(3): It is a defence for a person charged with an offence against this article to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trademark.
(4): A person guilty of an offence under this article shall be liable on conviction to imprisonment for a term not exceeding three years or to a fine (multa) of not more than ten thousand liri or to both such fine and imprisonment.

73. (1) Any person who knowing or having reason to believe that it is false:

(a): makes, or causes to be made, a false entry in the register of trademarks; or
(b): makes, or causes to be made, anything falsely purporting to be a copy of an entry in the register, or
(c): produces or tenders or causes to be produced or tendered in evidence any such thing,

shall be guilty of an offence against this article.

(2) A person guilty of an offence against this article shall be liable on conviction to imprisonment for a term not exceeding two years or a fine (multa) of not more than five thousand liri or to both such fine and imprisonment.

74. (1) It shall be an offence against this article for a person -

(a): falsely to represent that a mark is a registered trademark, or
(b): to make a false representation as to the goods or services for which a trademark is registered,

knowing or having reason to believe that the representation is false.

(2) For the purposes of this article, the use in Malta in relation to a trademark

(a): of the word “registered”, or
(b): of any other word or symbol importing a reference, express or implied, to registration,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in Malta and that the trademark is in fact so registered for the goods or services in question.

(3) A person guilty of an offence against this article shall be

Falsification of register, etc.

Falsely representing trademark as registered.

Unauthorised use of certain devices, emblems, etc.

Delivery up to infringing articles, etc.

Powers of Magistrates.

Where owner of goods is unknown.

Forfeiture of things seized.

Procedure where owner in unknown.

liable on conviction to a fine (multa) of not more than five thousand liri.

75. (1) A person shall not without the authority of the President use in connection with any business any device, emblem or title in such a manner as to be calculated to lead to the belief that he is employed by, or supplies goods or services to, the President.

(2): Any person who contravenes the provisions of subarticle
(1): of this article shall be guilty of an offence against this article and shall on conviction be liable to a fine (multa) of not more than three thousand liri.

The Court may, moreover, in the cases referred to in article 73, on the demand of the prosecution, order that the machinery or other industrial means or contrivances used in contravention of the rights of the proprietors of the trademarks, the infringing articles, and the apparatus destined for their production, be forfeited, wholly or in part, and delivered to the holder of the trademark, without prejudice to any other right to relief under this Act.
Pending any proceedings for any one of the offences referred to in this Part, any Magistrate, if he is satisfied by information on oath that there is reasonable cause to suspect that any goods or things by means of, or in relation to which the offence has been committed, are in any house or premises of the accused, or are in his possession or under his control in any other place, may, by a warrant under his hand, direct any officer of the Police to be named in the warrant, to enter any house, premises or place, also to be named therein, and there to search for, seize, and remove such goods or things.
If the owner of any goods or things, which, if he were convicted of any of the offences referred to in this Part, would be liable to forfeiture, is unknown or cannot be found, any Magistrate may in the like manner and in the circumstances required in the last preceding article, issue the said warrant.
The goods and things so seized shall be produced before the Court of Magistrates sitting as a court of criminal judicature, and such Court shall determine whether they are liable to forfeiture under this Act.
(1) In the case referred to in article 78, the Court shall order the issue of banns which shall be published twice, with an interval of at least eight days, in the Government Gazette, and posted up at the entrance of the building wherein the Court sits, and in any other place which the court may deem fit, stating that the goods or things seized shall be forfeited, unless at the time and place named in the banns the owner of such goods or things or other person interested in such goods or things attends before the Court at the time and place indicated in the banns and shows cause to the contrary.

(2) If the owner or any person on his behalf, or other person interested in the said goods or things, fails to attend at the time and place named in the banns to show cause to the contrary, it shall be lawful for the Court to direct that such goods or things or any of them be forfeited.

The Court may direct that the goods or things so forfeited be destroyed or disposed of, after the trademarks or other trade descriptions have been obliterated from them, and may also direct that, out of the net proceeds which may be realized by the disposal of such goods or things and up to the amount thereof, any persons who, being in good faith, were injured by the forfeiture, be awarded compensation for any loss caused to them.
Criminal actions under this Act shall be barred by the lapse of three years from the day on which the act constituting the offence was committed, if the person to whose prejudice the act was committed, had no previous knowledge thereof, in all other cases the period of limitation shall be one year from the day on which such person became aware of that act.

The provisions relating to the use of forged marks shall not apply to the use of any mark of manufacture or description used in trade to indicate goods of a particular class, or the manufacture thereof by any particular method, where, at the time of the promulgation of this Act, such mark of manufacture or description was lawfully and generally applied for the above-mentioned purpose:
Provided that where such mark of manufacture or description includes the name of a place or country and the goods are not produced in the place or country indicated in the mark of manufacture or description so used, the provisions of this article shall not apply, unless there is added to the mark of manufacture or description, immediately before or after the name of the said place or country, in an equally conspicuous manner, the name of the place or country in which the goods were actually made or produced, and unless there is also stated that the goods were made or produced in that place or country.

Any person who falsely claims to be a registered trademark agent when he is not so registered in accordance with article 69 of this Act, shall be guilty of an offence against this article and shall in conviction be liable to a fine (multa) of not more than five hundred liri.
The provisions of this Part shall apply without prejudice to the right of any person to claim damages in consequence of any Act constituting an offence.
No proceedings shall be instituted against any person in the service of another person, if, he shows that in good faith, he acted in obedience to the instructions of his employer, and, on being questioned by the Police, gives full information relating to his employer and of the facts of the case as known to him.

PART VI
GENERAL PROVISIONS

87. In any civil proceedings under this Act if a question arises as to the use to which a registered trademark has been put, the burden of proof that a particular use has been made shall lie on the

Award of compensation to parties in good faith.

Limitation of criminal actions.

Use of forged marks.

Person falsely representing himself as a registered trademark agent.

Right to damages not affected.

Employer and employee.

Burden of proving use of trademark.

Limitations of civil action.

Interpretation.

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Existing registered marks.

Proceedings under the Old Law.

Effects of registration infringement.

proprietor.

88. Civil actions under this Act shall be barred by the lapse of five years in all cases in which no other period within which such actions may be brought is fixed in this Act

PART VII
TRANSITORY PROVISIONS

89. (1) In this Part

“existing registered mark” means a trademark, registered under the Industrial Property (Protection) Ordinance immediately before the commencement of this Act;

“former register” means the register kept under the Old Law;

“new register” means the register kept under this Act;

“Old Law” means the Industrial Property (Protection) Ordinance and any other enactment or rule of law applying to existing registered marks immediately before the commencement of this Act.

(2) For the purposes of this Part

(a): an application shall be treated as pending on the commencement of this Act if it was made but not finally determined before commencement, and
(b): the date on which it was made shall be taken to be the date of filing under the Old Law.

90. (1) Existing registered marks shall, on the commencement of this Act, be transferred to the new register and subject to the provisions of this Part, shall have effect as if they were registered under this Act.

(2): Existing registered marks registered as a series under article 91(2) and 91(3) of the Ordinance shall be similarly registered in the new register
(3): In any other case notes indicating that existing registered marks are associated with other marks shall cease to have effect on the commencement of this Act

91. (1) Proceedings under the Old Law which are pending on the commencement of this Act shall be dealt with under the Old Law and any necessary alteration pursuant to such proceedings shall be made to the new register.

(2) A disclaimer or limitation entered on the former register in relation to an existing registered mark immediately before the commencement of this Act shall be transferred to the new register and have effect as if entered on the register in pursuance of article 13 of this Act.

92. (1) Upon the coming into force of this Act articles 9 to 12 of this Act shall apply in relation to an existing registered mark and subject to subarticle (2) hereof, article 14 of this Act shall apply in relation to any infringement of an existing registered mark committed after the commencement of this Act.

(2) After the coming into force of this Act, it shall not be an infringement of

(a): an existing registered mark, or
(b): a registered trademark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue with any use which did not amount to infringement of the existing registered mark under the Old Law.

Article 16 of this Act shall apply to infringing goods, material or articles whether made before or after the commencement of this Act.
(1) Article 28 of this Act shall apply to licences granted before the commencement of this Act, but only in relation to infringements committed after its commencement.

(2) Paragraph 12 of the Second Schedule of this Act shall apply only in relation to infringements committed after the commencement of this Act.

The provisions of article 22 of this Act shall apply as from the commencement of this Act to an existing registered mark of which two or more persons were immediately before the commencement of this Act registered as joint proprietors.
(1) Article 23 of this Act shall apply to transactions and events occurring after the commencement of this Act in relation to an existing registered mark; and the Old Law shall continue to apply in relation to transactions and events occurring before its commencement.

(2): Existing entries under articles 98 and 100 of the Industrial Property (Protection) Ordinance shall be transferred on the commencement of this Act to the new register and have effect as if made under article 24 of this Act.
(4): An application for registration of an assignment under articles 98 and 100 of the Industrial Property (Protection) Ordinance which has been determined by the Comptroller but not finalised before the commencement of this Act shall be dealt with under the Old Law; and sub-paragraph (2) above shall apply in relation to any resulting entry in the register.

(5) Where, before the commencement of this Act, a person has

Infringing goods, material or articles.

Rights and remedies of licensee or authorised user.

Co-ownership of a registered mark.

Assignment, etc., of a registered mark.

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Licensing of a registered mark.

Pending applications for registration.

Conversion of pending application.

Trademarks registered according to old classification.

Claim to priority from overseas application.

Duration and renewal of registration.

become entitled by assignment or transmission to an existing registered mark but has not registered his title, any application for registration of an assignment after its commencement shall be made under article 24 of this Act.

Articles 26 and 27(2) of this Act shall apply only in relation to licences granted after the commencement of this Act.
(1) An application for registration of a mark under the Old Law which is pending on the commencement of this Act shall be dealt with under the Old Law, subject to the other provisions of this article, and, when registered, the mark shall be treated for the purposes of this Part as an existing registered mark.

(2) The power of the Minister under article 65 of this Act to make rules regulating practice and procedure, and in relation to the matters mentioned in subarticle (2) of that article, is exercisable in relation to such an application; and different provision may be made for such applications from that made for other applications.

99. (1) In the case of a pending application for registration which has not been advertised under article 87 of the Industrial Property (Protection) Ordinance before the commencement of this Act, the applicant may give notice to the Comptroller claiming to have the registrability of the mark determined in accordance with the provisions of this Act.

(2): The notice must be in the prescribed form, be accompanied by the appropriate fee and be given no later than six months after the commencement of this Act.
(3): Notice duly given shall be irrevocable and shall have the effect that the application shall be treated as if made immediately after the commencement of this Act.

The Comptroller may exercise the powers conferred by rules under article 57 of this Act to ensure that any existing registered marks which do not conform to the system of classification prescribed under article 32 of this Act are brought in conformity with such system.
Article 33 of this Act shall apply to an application for registration under this Act made after the commencement of this Act notwithstanding that the Convention application was made before commencement.
(1) Article 38(1) of this Act applies in relation to the registration of a mark in pursuance of an application made after the commencement of this Act; and the Old Law shall continue to apply in any other case.

(2): Articles 38(2) and 39 of this Act shall apply where the renewal falls due on or after 1st January, 2001; and the Old Law shall continue to apply in any other case.
(3): In either case the date of payment of the fee shall be immaterial.

FIRST SCHEDULE
COLLECTIVE MARKS

General

1. The provisions of this Act apply to collective marks subject to the following provisions which may, by regulations, be amended by the Minister.

Signs of which a collective mark may consist

2. In relation to a collective mark the reference in the definition of “trademark” in article 2 to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

Indication of geographical origin

3. Notwithstanding article 4(1)(c), a collective mark which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may be registered:

Provided that the proprietor of such a mark shall not be entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters particularly by a person who is entitled to use a geographical name.

Mark not to be misleading as to character or significance

4. (1) A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be construed as something other than a collective mark

(2) The Comptroller may accordingly require that a mark in respect of which application is made for registration includes some indication that it is a collective mark; and notwithstanding the provisions of article 36(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective mark

5. An applicant for registration of a collective mark must file with the Comptroller regulations governing the use of the mark specifying the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions for the use of the mark, as well as any sanctions against misuse and any further requirements with which the regulations have to comply as may be established by any rule made by the Minister.

Approval of regulations by Comptroller

6. (1) A collective mark shall not be registered unless the regulations governing the use of the mark

(a) comply with paragraph 5(2) and any further requirements imposed by rules, and

(b) are not contrary to public policy or to accepted principles of morality.

(2) The application shall be deemed to be withdrawn if before the end of any period as may be prescribed after the date of the application for registration of a collective mark, the applicant fails to file the regulations with the Comptroller and pay the prescribed fee.

7. (1) The Comptroller shall consider whether the requirements mentioned in paragraph 6(1) are met.

(2): If it appears to the Comptroller that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the Comptroller may specify, to make representations or to file amended regulations.
(3): If the applicant fails to satisfy the Comptroller that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Comptroller shall refuse the application.
(4): If it appears to the Comptroller that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with article 37.

Regulations to be open to inspection

8. The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.

Amendment of regulations

9. An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with the Comptroller and accepted by him.

Infringement: rights of authorised users

The provisions of subarticle (6) of article 10 and of subarticle (2) of article 19 apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trademark.
(1) The following provisions have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark.

(2): An authorised user is entitled, subject to any agreement to the contrary between him and the proprietor, to call on the proprietor to take infringement proceedings in respect of any matter which affects his interests.
(3): If the proprietor refuses to do so, or fails to do so within two months after being called upon, the authorised user may bring the proceedings in his own name as if he were the proprietor.
(4): Where infringement proceedings are brought by virtue of this paragraph, the authorised user may not, without the leave of

the Court, proceed with the action unless the proprietor is joined in the suit.

(5) In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court which shall give such directions as it thinks fit with regard to the disposal and distribution of any sum awarded as a remedy for infringement.

Grounds for revocation of registration

12. Apart from the grounds of revocation provided for in article 42, the registration of a collective mark may be revoked on the ground -

(a): that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 4(1), or
(b): that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark, or

Grounds for invalidity of registration

13. Apart from the grounds of invalidity provided for in article 43, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4(1) or 6(1) of this Schedule.

SECOND SCHEDULE
CERTIFICATION MARKS

General

1. The provisions of this Act apply to certification marks subject to the following provisions which may, by regulations, be amended by the Minister.

Signs of which a certification mark may consist

2. In relation to a certification mark the reference in the definition of “trademark” in article 2 to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not.

Indication of geographical origin

3. Notwithstanding article 4(1)(c), a certification mark which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may be registered:

Provided that the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

Nature of proprietor’s business

4. A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.

Mark not to be misleading as to character or significance

5. (1) A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.

(2) The Comptroller may accordingly require that a mark in respect of which application is made for registration includes some indication that it is a certification mark, and notwithstanding the provisions of article 36(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of certification mark

6. An applicant for registration of a certification mark must file with the Comptroller regulations governing the use of the mark specifying the person authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes and any further requirements with which the regulations have to comply as may be established by any rule made by the Minister.

Approval of regulations, etc.

7. (1) A certification mark shall not be registered unless

(b): the applicant is competent to certify the goods or services for which the mark is to be registered.

(2) The application shall be deemed to be withdrawn if before the end of any period as may be prescribed after the date of the application for registration of a certification mark, the applicant fails to file the regulations with the Comptroller and pay the prescribed fee.

8. (1) The Comptroller shall consider whether the requirements mentioned in paragraph 7(1) are met.

(2): If it appears to the Comptroller that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the Comptroller may specify, to make representations or to file amended regulations.
(3): If the applicant fails to satisfy the Comptroller that those requirements are met, or to file regulations amended so as to need them, or fails to respond before the end of the specified period, the Comptroller shall refuse the application.
(4): If it appears to the Comptroller that those requirements, and the requirements for registration are met, he shall accept the application and shall proceed in accordance with article 37.

Regulations to be open to inspection

9. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.

Amendment of regulations

10. An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the Comptroller and accepted by him.

Consent to assignment of registered certification mark

11. The assignment or other transmission of a registered certification mark is not effective without the consent of the Comptroller.

Infringement: right of authorised users

The provisions of subarticle (6) of article 10 and of subarticle (2) of article 19 apply in relation to an authorized user of a registered certificate mark as in relation to a licensee of a trademark.
In infringement proceedings brought by the proprietor of a registered certification mark any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court which shall give such directions as it thinks fit with regard to the disposal and distribution of any sum awarded as a remedy for infringement.

Grounds for revocation of registration

14. Apart from the grounds of revocation provided for in article 42, the registration of a certification mark may be revoked on the ground

(a): that the proprietor has begun to carry on such a business in contravention of paragraph 4,
(b): that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 5(1),
(c): that the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark,

(e): that the proprietor is no longer competent to certify the goods or services for which the mark is registered.

Grounds for invalidity of registration

15. Apart from the grounds of invalidity provided for in article 43, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4, 5(1) or 7(1) of this Schedule.

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CHAPTER 416

TRADEMARKS ACT