Under the Trademarks Act, 2000 a trademark is defined as:
- any sign capable of being represented graphically; and
- which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trademark may consist of words (including personal names), figurative elements, letters, numerals or the shape of goods or their packaging.
In addition, marks and words must vary from those already legally utilised by other persons. In fact, the law provides for various grounds on which the Comptroller of Industrial Property may refuse to register a trademark.
Moreover, a separate trademark application must be filed in respect of each separate class of goods or services.
The Act also extends protection to marks eligible for protection in terms of the Paris Convention, as a well-known mark in Malta.
A trademark may be filed with priority. A priority claim may be made by any person who has duly applied for protection of a trademark in any country or territory which is a member of the World Trade Organisation or a party to the Paris Convention for the Protection of Industrial Property or such person’s successor in title. A priority claim may be made in respect of all or any of the same goods or services for which the first application has been filed. To be eligible for a priority claim, the application must be filed in Malta within six (6) months from the date of filing of the first application. In such case, the date of filing of the first application shall be the relevant date for the purposes of establishing which rights take precedence.
For registration purposes, we would only require the priority date(s) claimed, the country and the application number. However, in due course, we would require certified copies of the priority documentation from the Comptroller of Industrial Property of the country where the application was filed, accompanied by certified English translations, where necessary.
The documents required for the registration of a trademark are:
- Our standard Power of Attorney with the signatures thereon duly attested by a notary or legalised with the Apostille on the reverse side in terms of the Hague Convention or duly legalised by a Diplomatic or Consular Representative of Malta.
- Three (3) copies of the mark to be registered, for each class.
- Details as to whether a colour claim is being lodged and of any priority being claimed.
The application form for the registration of a trademark includes a declaration by the applicant that the mark applied for is being used by the applicant or with his or her consent, in relation to the specified goods or services, or that there is a bona fide intention that the mark will be so used.
Duration of Registration
Trademarks are registered for a period of 10 years from the date of registration and may be subsequently renewed for further periods of 10 years each upon payment of the relative renewal fee.
A trademark whether registered or in respect of which an application is being processed may be assigned either together with the goodwill of a business or independently of it. An assignment of a registered trademark is not effective unless made in writing.
Furthermore, an assignment may be restricted to be applicable:
- in relation to some but not all of the goods or services in respect of which the trademark is registered; or
- in relation to the use of the trademark in a particular manner or locality.
The documents we would require for the recordal of an assignment of a trademark are:
- a deed of assignment with the signatures thereon duly attested by a notary or legalised with the Apostille on the reverse side in terms of the Hague Convention or duly legalised by a diplomatic or consular representative of Malta.
- a written authorisation duly executed in our favour by both the assignor and assignee, with the signatures thereon duly attested by a notary or legalised with the Apostille on the reverse side in terms of the Hague Convention or duly legalised by a diplomatic or consular representative of Malta.
- trademark registration numbers and the relevant classes of the marks.
The services provided by the firm in this field include:
- Registration, administration and litigation in relation to trademarks, patents, designs and other intellectual property rights.
- Registration and administration of European Community Trademarks and Community Designs as well as assistance in the protection of intellectual property rights internationally, both within and outside of Europe.
- Advice and assistance including litigation in relation to copyright.
- Advice and assistance in relation to the assignment of intellectual property rights.