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The long-awaited overhaul of Maltese trademark legislation is imminent – the first repeal and replacement of a major IP statute since Malta’s accession to the European Union in 2004. The principal object of the new law [1] is, of course, to transpose the provisions of Directive (EU) 2015/2436 of 16 December 2015 approximating the laws of EU Member States relating to trademarks.

One of the major substantive changes is the redefinition of a trademark such that it is no longer required for a sign or indication to be capable of “graphical representation” in order to be accepted for registration by the IPRD. This (at least theoretically) opens the door to Maltese trademarks in smells and tastes, which have thus far been practically categorically excluded by the criterion of graphical representation.

The second major substantive change is the extension of the functionality exclusion under A. 4(2) of the current Trademarks Act (Chapter 416 of the Laws of Malta). Under the current law, a finding that a trademark is functional (and hence non-registrable) can only result from the shape of a trademark. A trademark is deemed functional if it (1) consists of a shape which (2) results from the nature of the product, or (3) is necessary to achieve a technical result, or (4) simply adds value to the product.

A. 5 of the new statute expands the scope of the functionality exclusion such that it will now encapsulate the “shape, or another characteristic” of a trademark. Hence, any feature of a trademark which may be deemed functional can now form the basis of an objection to a trademark registration.

Procedurally, the major development under the new law will be the introduction of a fully adversarial system for resolving “relative grounds” disputes. At present, an objection to a trademark application on the basis of a pre-existing potentially conflicting mark can only be raised by the Maltese Industrial Property Registrations Directorate (“IPRD”).Applicants, in turn, are afforded two options in the event of an objection: either comply with conditions for registration set by the IPRD or argue their case before the IPRD.Once a trademark is registered, the only recourse available to owners of potentially conflicting prior rights that had not been previously detected by the IPRD during the application process would be a full-blown suit before the First Hall of the Civil Court.

This system is now set to be replaced.

A. 48(1) of the new law leaves the door open for the Minister to require ex officio relative grounds examinations by the IPRD. However, for the time being it appears that the role of the IPRD will be limited to the examination of trademark applications on absolute grounds only.The Trademark Search and Opposition Rules (S.L. 416.03) (issued by the Ministry late last month) only requires the Directorate to carry out “relative searches” for the purposes of notifying owners of similar or identical marks once a trademark application has been filed. It will ultimately fall upon trademark owners to object to a trademark application before it is registered.Failing this, prior right owners will have access to a more streamlined invalidation procedure facilitated by the Directorate.

[1] Bill 60 of 2018 entitled “AN ACT to repeal and replace the Trademarks Act, Cap. 416.

The opinions expressed in this article are the author’s own and do not necessarily reflect the views of Mamo TCV or any person associated with the firm.