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.
Filing requirements for Malta Trademark Applications:
- The Power of Attorney (POA Requirements);
- The applicant's name and address;
- The trademark details;
- A detailed description of the goods/services falling within the class(es) according to the International Classification of Goods and Services;
- Prints of the trademark (not needed for word marks);
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.
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);
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.
If in doubt, you should check with us if an intended trademark application is excluded from registrability.
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:
- The trademark application is searched on the National Trademark database. Trademark applications will not be searched on the EUTM database;
- 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;
- 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;
- The trademark application is published on the monthly issue of the IP Journal;
- 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;
- 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;
- 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;
- 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;
- 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 form application to registration:
Step 1: Filing the TM Application
After we have received the instructions to file the trademark we check that the trademark application filing requirements are complete. If all filing requirements are complete we prepare the official documents and file the application directly with the Malta IPO.
Step 2: Examination of Application . approx. 6-9 months
Once the trademark application is filed and the formalities are fulfilled the application is then checked for the substantive requirements by the Malta IPO.
If all requirements for the registration of the application are met the IPO registers the TM.
In case the IPO determines that the trademark application does not comply with the requirements the applicant shall be given the opportunity to amend the application in order to comply with the requirements.
In this case we receive communication from the IPO which will be forwarded to the applicant (resp. to the applicant's representative).
Step 3: Certificate of Registration . Checking & Forwarding within 2-7 working days
If the application as originally filed or as amended complies with the requirements the Malta IPO registers the trademark.
When the trademark is registered the registration will be published and the "Certificate of Registration" will be issued and sent to us.
We check if the certificate has been issued correctly and forward the original certificate to the applicant (resp. to the applicant's representative) by registered mail.
Rights conferred by a Trademark
The proprietor of a registered trademark has exclusive rights in the trademark. Such rights are infringed by such use of the trademark in Malta when:
- the use in the course of trade is made of a sign which is identical with or similar to the trademark in relation to goods or services which are identical with or similar to those for which it is registered; and there is the likelihood of confusion on the part of the public, including the likelihood of association with the trademark;
- the use in the course of trade is made of a sign which is identical with or similar to a trademark in relation to goods or services which are not similar to those for which the trademark is registered, but the trademark has a reputation in Malta and such use takes unfair advantage of or is detrimental to the distinctive character or the repute of the trademark.
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 on Malta Trademark Protection
When a trademark is registered, the Comptroller publishes the registration.
Any decision of the Comptroller may be appealed from, before the Court of Appeal. Decision means any act, other than those acts that may be prescribed by the regulations, done by the Comptroller in exercise of a discretion vested in him.
An application may be amended at a fee at the request of the applicant only by correcting:
- the name or address of applicant
- errors of wording or of copying, or
- obvious mistakes
and only where the corrections do not substantially affect the identity of the trademark or extend the goods or services covered by the application.
The duration of the registration of a trademark is 10 years, which start running from the date of registration. The trademark may be renewed
for further periods of 10 years.
Besides trademarks the Industrial Property Office also receives applications for collective and certification marks. A collective mark is a mark distinguishing the goods or services of members of an association from those of other undertakings. A certification mark is a mark indicating that the 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.
A licence to use a registered trademark may be general or limited; and it may be exclusive or non-exclusive. The licence is binding on a successor in title to the grantors interest, unless the licence provides otherwise. Where the licence so provides, the licensee may grant a sub-licence.
A trademark (wordmark) of non-roman / non-latin characters (e.g. Trademarks of Chinese or Japanese characters) can be filed in Malta as long as a translation is provided.
An option to file a non-roman / non-latin trademark without translation is the filing of a logo (sometimes also called: "Design Mark", "Figurative Mark" or "Picture Mark";).