In light of the economic importance of trademark rights and regulation to the EU internal market as well as to the national economies of all Member States, in 2008 the EU embarked on a total reform of its trademark legislation which resulted in the enactment of a new Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks and European Union Trademark Regulation (Regulation (EU) 2017/1001). In Malta, Act XII of 2019 was enacted to transpose the provisions of Directive (EU) 2015/2436 and to substitute the old Trademarks Act (Cap 416 of the Laws of Malta). Act XII of 2019 came into force on the 14th May 2019 and the New Trademarks Act is now Chapter 596 of the Laws of Malta. The old Trademarks Act will continue to apply for pending trademark proceedings started under the old Act. All existing trademarks registered under the Old Trademarks Act shall be transferred under the new Trademark Register under the new regime of Chapter 596.
The following are some of the salient changes following the adoption of the new EU Directive and the Malta Trademarks Act:
Representation of new types of trademarks An important novelty introduced by Directive (EU) 2015/2436 and applicable also in Malta concerns the registration of ’unconventional trademarks’, such as sound, movement and olfactory marks. The new provisions eliminate the obligation to graphically represent the trademark itself from the registration procedure. Not having to graphically represent a trademark allows for the application of new types of trademarks as long as they are filed in a format that can be represented through generally available technology. Such formats were not previously provided for in any national and regional systems. Hence, this novelty allows for a simpler ‘recordal’ of sounds, perfumes, colors, holograms, patterns, and so on, as marks for registration.
For these new types of trademarks, Article 13 of Directive (EU) 2015/2436 provides: “The sign should be able to be represented in any suitable form using the generally available technology, and therefore not necessarily by means of graphic tools, provided that the representation offers sufficient guarantees in this sense“.
Consequently, anyone wishing to apply for the registration of a national trademark may represent it on the application form, in any suitable form, using generally available technology and on condition that such representation is clear, precise, autonomous, easily accessible, intelligible, durable and objective. For example, some of the accepted formats by the Malta Trademark Office (IPRD) are: (a) for colour marks, JPEG and TEXT formats; (b) for sound marks, JPEG and MP3 formats; (c) for motion marks, JPEG and MP4 formats; (d) for hologram marks, JPEG and MP4 formats; (e) for any ‘Other’ type of marks, JPEG, MP3, MP4, and TEXT formats.
The extent of the importance of the introduction of unconventional brands is highlighted when one considers that Community jurisprudence so far had shown itself to be rather cautious about such introductions. Previously, in fact, the ECJ, in the well-known Sieckmann ruling of 12 December 2002 specific to olfactory marks which was rejected due to the problem of graphic representation, had stated that the sign, although not capable of being perceived visually, could still form a trade mark object of a graphic representation, in particular by means of figures, lines or characters, which is clear, precise, complete in itself, easily accessible, intelligible, durable and objective. The new provisions and the abandonment of the requirement of graphic representation guarantees greater flexibility to companies to apply for the registration any type of trademarks.
Grounds of refusal
One of the major substantive changes in the new Trademarks Act is the extension of the functionality exclusion. The grounds of refusal sections have been amended in order to refer to European and international trademarks. Under Chapter 416 of the Laws of Malta, a trademark was deemed to be functional and, hence, excluded from registration, if it consisted of a shape which results from the nature of the product, or is necessary to achieve a technical result or simply adds value to the product. In this regard, the new Trademark Act expands the scope of the functionality exclusion and introduced the wording “shape, or another characteristic” of a trademark. Therefore, any feature of a trademark may be deemed functional depending on the trademark and may be used as the basis of an objection to a trademark registration. Naturally the above reflects the changes in the definition of a trademark.
The new Trademark Act also provides for a third-party adversarial opposition procedure before the Malta IP Office for Trademark applications. The new procedure took effect in late 2017, with the introduction of Legal Notice 343 of 2018, the ‘Trademark Search and Opposition Rules’. As such, this is a consolidation of previous changes introduced to be compliant with the EU Trademark Directive. The Industrial Property Registrations Directorate (IPRD) within the Commerce Department is the national Maltese entity officially designated with the responsibility to register trademarks in Malta. Whereas previously the law did not allow trademark owners to oppose the registration of another trademark other than in Court, the new law now allows the possibility of trademark owners to prevent conflicting marks from being registered in the first place. In this way, earlier trademark owners may initiate opposition proceedings before the Office within 60 days from the publication of the new trademark application on the IP Online Journal, instead of initiating proceedings before the courts in Malta in order to revoke a registration.
The coming into effect of the new Trademark Act harmonizes Malta’s trademark legislation with that of the EU. The ultimate goal is to achieve a strengthening of the trademark discipline both at European and national level. Matters relating to the classification of goods and services, application proceedings, rights provided and permitted use of a trademark will all benefit from such increased harmonization. This is a clear demonstration of the importance placed by European institutions on the ability of trademarks as distinctive signs to connect products and services to the company of origin and to integrate, in this way, an added value of the brand on the market in the eyes of the consumer, with obvious positive implications for the European and national economy.