- Post-filing:
Examination and registration: The process for registration will take around 8 months from application date.
- This process entails the checking of correctness of the application form;
- The creating of a file and the inputting and scanning in the National Trademark Database;
- Also, the Industrial Property Registrations Directorate (IPRD) examines every application on two levels:
Firstly, on absolute grounds: the mark must be distinctive, meaning that the relevant public should be able to identify the goods or services as originating from a particular undertaking. For instance, the word mark “DRINK” for water-based beverages merely designates the product itself rather than its commercial origin, so it is not distinctive. Moreover, under Maltese law a trademark will not be registered or, if registered, it will be revoked if it is misleading or offensive.
Secondly, on relative grounds: the mark must not conflict with earlier trademarks in Malta, provided they are still in use and have not expired. If you have conducted a research and you didn’t find a similar or identical mark or you did find one but you changed your mark to avoid an opposition or you agreed with the owner of the earlier trademark to not sell your products/services on the same market, then all the chances are on your side to avoid a refusal on relative grounds.
Publication: If approved, the mark is published in the Online Official Journal.
Opposition : Third parties have 90 days from the publication date to oppose the registration, if they feel it infringes on their rights.In case of an opposition, Chapter 597 allows for a “cooling-off” period during an opposition, letting parties negotiate a settlement—like a coexistence agreement—before proceeding to a full legal battle.
- Maintenance: “Use it or lose it”
Ownership is not absolute, it is conditional on use.
- Duration: Valid for 10 years, renewable indefinitely. It entails that if the owner of a mark desire to expand his trademark right, he should proceed to its renewal before the expiration date.
- Requirement of use: If you do not put a mark to “genuine use” in Malta for a continuous period of 5 years, any third party can apply for its revocation. You cannot have a monopoly on a name to prevent others from using it.
Written by Av. Paul Radmilli and Lou-Salomé Wang.
