Trademark Application & Registration in Malta

In order to register a trademark in Malta the official application documents have to be filed with the Malta IPO.

Requirements

Filing requirements for Malta Trademark Applications:

1. The Power of Attorney (POA Requirements);
2. The applicant's name and address;
3. The trademark details;
4. A detailed description of the goods/services falling within the class(es) according to the International Classification of Goods and Services;
5. Prints of the trademark (not needed for word marks);

TM Classification

Trademarks in Malta are classified according to the International Classification of Goods and Services.
A detailed description of the goods/services falling within the class(es) is required.
The applicant, if in doubt, should check with us as to how the goods and services should be classified.

Single Class Jurisdiction

Malta is a Single Class Jurisdiction. Multiple-class applications are not possible.
The applicant who wishes to apply for several trademark classes has to apply for each single class as the Malta IPO handles each class as a separate application. In this case separate applications have to be filed for each single class.
All official trademark fees are charged per class.

Claiming Priority

A claim to priority is applicable for a period of 6 months from the date of filing of the first application.
The first application for protection of a trademark has to be filed in a country, which is a member of the World Trade Organisation (WTO) or a member of the "Paris Convention for the Protection of Industrial Property".
The successor in title has the right to claim priority in registering the same trademark for any or all of the same goods or services for which the first application has been filed.

Requirements & Documentation for Claim of Priority:

• Country, date and application number of the first application;
• Copies of the priority documentation of the first application from the Comptroller of Industrial Property (in case the priorty documentation is not in English a translation is required);

Registrability

Besides Word- and Picture Marks the Malta IPO also recognises applications for Collective Marks and Certification Marks.

Definition of Trademark

The Trademark Act of Malta defines a trademark as 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:

Exclusions from Registrability

"Absolute Grounds" and "Relative Grounds" are defined for the exclusion from the registration of a trademark.

Absolute Grounds for Refusal

The registration of trademark is refused for absolute grounds if the trademark:

• lacks distinctive character;
• is made up entirely 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;
• consists entirely of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
• Notwithstanding these last three exceptions, the registration of a trademark is not to be refused, if it can be shown that before the date of application for registration, the trademark has acquired a distinctive character as a result of the use made of it in Malta;

In addition a trademark shall not be registered if it consists exclusively of:

• the shape which results from the nature of the goods themselves;
• the shape of goods; and
• the shape which gives substantial value to the goods.

Finally a trademark shall not be registered if:

• it is contrary to public policy or morality;
• it is of such a nature as to deceive the public as to the nature, quality or geographical origin of the goods or services;
• its use is prohibited in Malta by any enactment or rule of law;
• it consists of/or contains of any signs, arms, armorial bearings on flags;
• it is made in bad faith;

Relative Grounds for Refusal

The registration of a trademark is refused for relative grounds if the trademark:

• it is identical with or similar to an earlier trademark and the goods or services for which the trademark is applied for are identical with or similar to the goods or services for which the earlier trademark is protected;
• it is identical with or similar to an earlier trademark, and although the goods or services are not similar to those in the earlier trademark, yet the registration would take unfair advantage of the distinctive character or repute of the earlier mark;
• its use in Malta is liable to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade or by virtue of an earlier right;

Trademark Search and Opposition Rules introduced in October 2018

Further to a consultation process carried out by the Malta IPO and an analysis of the feedback received, the Subsidiarly Legislation 416.03 entitled "Trademark Search and Opposition Rules" came into effect on 26 October 2018. This can be viewed under the following link: Trademark Search and Opposition Rules, 2018

The following are the main changes introduced by these rules applicable to trademark applications filed on and after the 26 October 2018:

1. The trademark application is searched on the National Trademark database. Trademark applications will not be searched on the EUTM database;
2. The trademark applicant is informed of the earlier mark/s resulting from the search found on the National Trademark database, if any.
   The applicant is requested to inform the Malta IPO whether the trademark application process shall be continued or whether the application is to be withdrawn;
3. If trademark applicant does not withdraw the application, the owner/s of the earlier mark/s are informed of this application and advised that they may submit an opposition to this within 60 days of its publication on the online journal;
4. The trademark application is published on the monthly issue of the IP Journal;
5. Earlier right holders or interested parties may submit an opposition to the registration of the mark within 60 days from publication accompanied by the officially prescribed fee;
6. The trademark applicant is informed of the opposition and may withdraw the application, or restrict the goods/services or reach an amicable agreement with the opponent or submit a counterstatement to the opposition;
7. In cases where a counter-statement is submitted, this is sent to the opponent and if opponent wishes to maintain the opposition then the Malta IPO is to be informed accordingly and an additional fee has to be paid;
8. The IPO takes a decision whether to accept or refuse the opposition. The decision of the IPO can be appealed before the Court of appeal;
9. The registration of the application will be published on the IP Journal.

New Trademark Act comes into force in the first quarter of 2019

A new Trademark Act will come into force in the first quarter of 2019, which will repeal the current Trademark Act. This new legislation transposes the necessary provisions of Trademark Directive EU 2015/2436 of 16 December 2015.
The relevant Bill can be viewed under the following link:
A BILL entitled - AN ACT to repeal and replace the Trademarks Act, Cap. 416.

Trademark Registration Process

The timeline from application to registration:

Revocation & Surrender

The proprietor may surrender a registered trademark in respect of some or all of the goods or services for which the trademark is registered. The registration of a trademark may be revoked when:

• within a period of 5 years from the date of registration the proprietor has not put the trademark to genuine use in Malta;
• 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; or
• 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.

FAQs - Malta Trademark Application