Trademarks

Introduction

Trade marks have been protected in Malta since 1899. Though the laws that enabled such protection were amended several times over the years, it was nonetheless felt that the varying needs and requirements of the business community necessitated a total re-haul of the relevant legislation. As a result, new legislation – the Trademarks Act (Act XVI of 2000) -- was enacted in June 2000 which came into force on 1 January 2001.

In line with Malta’s present commitment to proceed with EU accession, the new legislation is not only TRIPS-compliant but is also in line with the Acquis Communautaire*.

Malta is a member of the World Intellectual Property Organisation, the Berne Convention, the Madrid Protocol concerning the International Registration of Marks and the Paris Convention for the Protection of Industrial Property. Moreover, in 1995, Malta signed the World Trade Agreement that incorporated the TRIPS Agreement.

What constitutes a trade mark?

A trade mark is any sign capable of being represented graphically or in words which is capable of distinguishing goods or services of one undertaking from those of another.

A trade mark may consist of words (including personal names), figurative elements, letters, numerals or the shape of goods or their packaging.

Collective marks as well as certification marks may also be registered. A collective mark is a mark which distinguishes 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 with which it is used are certified by the proprietor in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

Characteristics of a trade mark for it to be registered

In order to be registered, a trade mark must possess the following characteristics:

  • it should fall within the above-mentioned definition of trade marks;
  • it must possess a distinctive character;
  • it cannot consist exclusively of signs or indications which designate the kind; quality; intended purpose; value; geographical origin; time of production of the goods or of rendering of services; or other characteristics of the goods or services in question; and
  • it cannot consist exclusively of signs or indications which have become customary in the current language or in the particular genre of trade; and
  • it cannot consist exclusively of the shape which results from the nature of the goods themselves; or the shape of the goods which is necessary to obtain a technical result; or the shape which gives substantial value to the goods; and
  • it cannot be contrary to public policy or to public morals; or 
  • it cannot deceive or give rise to the possibility of deceiving the public, inter alia, as to the nature, quality or geographical origin of the goods or services.

Notwithstanding the first 4 characteristics, the registration of a trade mark is not to be refused if, before the date of application for registration, the trade mark in question has acquired a distinctive character as a result of the use made of it in Malta.

Trade marks which consist entirely of a representation of the national flag of Malta cannot be registered whereas those which contain a representation of the national flag will not be required if they could mislead the public or be grossly offensive.

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