Protection of Designs

Introduction

The Law that regulates the protection of designs and which grants them their status as a property right is the Patents and Designs Act.

The term 'Designs' is defined by the said Act as meaning the appearance of the whole or a part of a product with special characteristics in its lines, contours, colours, shape, texture and/or materials of the product itself, and/or of its ornamentation.

Requirements for Protection

The Act provides that designs are protected by their registration by means of which exclusive rights are conferred upon their holders.

Novelty and individuality

The 2 requirements for a design to be eligible for protection and, consequently, registration are:

  • novelty; and
  • individuality.

A design is considered to be new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, before the date of priority.

A design is considered to have individual character if the overall impression it has on the informed user differs from the overall impression produced by any other design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, before the priority date.

Complex Product

The Law provides that a design applied to or incorporated in a product that constitutes a component part of a complex product shall only be considered to be new and to have individual character:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

Disclosure

A design is considered as having been made available to the public if it has been published, exhibited, used in trade or otherwise disclosed, unless it can be shown that the design could have reasonably become known, before the filing date or where priority is claimed, before the priority date, in the normal course of business to the circles specialised in the sector concerned.

Non-Registrable Designs

A design right cannot be obtained with regards to:

  • features of appearance of a product which are solely dictated by its technical function; 
  • features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to allow the product, in which the design is incorporated or to which the design is applied, to function; 
  • a design serving the purpose of allowing multiple assembly or connection of multiple interchangeable products within a modular system;
  • a design which is contrary to public policy or accepted principles of morality; 
  • a design which consists principally of the national flag of Malta, or contains the Presidential or Episcopal arms or the principal armorial bearings or representation of flags; and
  • the abbreviations and names of international intergovernmental organisations of which one or more Paris Convention countries are members.

Scope of Protection

The protection of a design right extends to any design that does not give a different overall impression on the informed user.

Term of Protection

A design right is protected for a period of 5 years from the date of filing of the application and is renewable for one or more periods of 5 years each up to a maximum term of 25 years.

Renewal of registration

The registration of a design may be renewed at the request of the proprietor, accompanied by the prescribed fee. A late renewal can be effected up to 6 months after the date of expiry upon payment of the prescribed late renewal fee. If the registration is not renewed, the design shall be removed from the register.

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