The introduction of the 2021 Trademark Rules Malta

On the 12^th February 2021, Legal Notice 50 of 2021 came into force, further enabling the implementation of the Trademarks Act (Chapter 597 of the Laws of Malta). As a result of the implementation, the Trademarks (Provisions and Fees) Rules (S.L. 597.01), Community Trademark Rules (S.L. 597.02), and Trademark Search and Opposition Rules (S.L. 597.03) have repealed and replaced.

The newly introduced Trademark Rules establish the rules applicable to all trademark applications in Malta, on or after the entry into force of such rules as well as any applications which are still pending before the Intellectual Property Office of Malta (the “Office”). The rules are aimed at enabling the efficient implementation of the current Trademarks Act, as well as introducing certain provisions in connection with European Union resources on intellectual property, such as Regulation 2017/1001 regarding the principle of a unitary character of EU trademarks, while further referring to principles enunciated in the Court of Justice of the European Union, such as those requirements the Court set out in the case of Ralf Sieckmann v Deutsches Patent und Markenamt (C-273/00) in 2002 regarding unconventional marks.

Moreover, the newly implemented rules also consider the international dimension of intellectual property, as Part III provides for provisions that shall become applicable once the Madrid Protocol enters into force in Malta.

On a national front, the rules specifically focus on the way in which trademark applications and license application should be populated and filed. The Rules establish that any application for the registration of a trademark may be filed in either Maltese or English, and must contain the following information:

A request for registration of a trademark.
The applicant’s name and address.
A representation of the mark, which should be clear, precise, self-contained, easily accessible, intelligible, durable, and objective.
A list of goods or services, according to the classes of the Nice Classification.
The date of filing and the file number.
Where applicable, the representative or attorney’s name and address.
Where applicable, a declaration claiming priority, and
The prescribed fee (€115 for each class of goods and services).

Upon receipt of the application, the Office would then carry out an ex officio search under the national database to identify an identical or similar registrations or applications. Any results would then be notified to the applicant.

If the Office is satisfied that the requirements are met, it would publish the application on the official online journal, which is updated on a weekly basis. Once an application is published, the period of opposition starts, and lasts for 90 days. Any opposition filed after the 90 days would be rejected.

If any admissible opposition is filed, the applicant would be granted 90 days to either withdraw the application, restrict the goods and services covered by the application, or submit a counterstatement against the opposition together with any supporting evidence. Decisions regarding the opposition would then be communicated by the Office to both parties. The Rules also provide a 15-day window to file an appeal.

The legal notice also delves into the manner in which trademark applications or rights may be withdrawn, restricted, transferred, amended, or altered. In case of an application for amendments, should there be grounds for objecting to the trademark alteration, one may file an opposition within thirty days from the date of publication of the alteration.

The Rules further detail the way renewals of registrations must be made. The legal notice specifies that any renewal request must be filed within a period of six months ending on the date of the expiration of the registration and must be accompanied by the renewal fee. Should the trademark application not be renewed on time, it is possible to file the renewal request within 6 months from the date of expiration of the last registration, provided that both the renewal fee and the additional fee for the late submission are duly paid. Should the proprietor fail to file such a request for renewal, the trademark would then be removed from the register.