Trademarks & Brand Protection

Brand protection in a small market such as Malta which can often become easily saturated is a necessity to prevent other entities from benefitting from your brand’s carefully curated image, reputation and goodwill. It is also advisable to protect one’s brand in foreign markets – particularly the European market – to ensure that the brand is protected in a vast manner and that it would not be infringed by businesses located overseas.

This becomes even more necessary in the world of bits and bytes where larger extents of our presence is shifted online. Therefore, it is ideal that  businesses employ sound brand protection strategies that are proportionate to the value of their brands.

A brand can be protected in a myriad of different ways however we recommend opting for the trademark route since this affords a registered protection. Locally, trademark protection can be achieved either through a national trademark registration under Chapter 597 of the Laws of Malta or alternatively through the European Trademark system as administered by the European Union Intellectual Property Office (‘EUIPO‘). These systems do not exclude each other but exist to supplement and complement each other.

At a local level, trademark registration is possible under the Trademarks Act, Chapter 597 of the Laws of Malta whereas at a European level, this area is regulated by the European Union Trade Mark Regulation (‘EUTMR‘), Regulation (EU) 2017/1001.

Nevertheless, a trademark registration remains a fiercely territorial right across Europe despite the introduction of the European Union Trade Mark (‘EUTM‘) which is a unitary right existing on a separate level. Due to the very different cost schemes involved with EUTM’s and Local Trademarks consultation should be sought to determine a cost effective path towards trademark registration. The new EUTMR also provides the opportunity for the registration of novel and non-traditional signs.

Despite what at a glance might appear to be steep costs to protect brands, our Firm can assist in applying for funds available both locally and at EU-level, which funds significantly reduce the cost to protect brands (up to a 75% reimbursement of registration fees).

At the most basic level, the registration of a trademark confers on the proprietor exclusive rights therein. This is based on the principle that a registered trademark is the personal property of its owner. In general terms, this means that trademark owners can prevent third parties from using, in the course of their trade, any sign that is either identical or similar to the protected trademark. Any person who breaches this fundamental rule may be subjected to infringement proceedings before a competent Court.

The owner of a protected trademark may also oppose the registration of an identical or similar trademark. This is made possible through the third-party adversarial opposition procedure before the Malta IP Office for trademark applications. Opposition may be made for example in the case of registration of a trademark which is identical or similar to an earlier trademark.

According to the law, a trademark may consist of any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods, or of the packaging of goods, or even sounds.

However, for registration to be permitted, such signs must be capable of distinguishing the goods or services of one’s business from those of another business. Moreover, they must be capable of being represented in a manner that enables everyone to determine what is actually being protected. By way of example, a logo is a design that can be graphically represented, as are jingles and sound bites that can be visually represented in sound waves.

Certain trademarks cannot be registered on absolute grounds, or if registered may be liable to be declared invalid. This is normally the case when trademarks are devoid of any distinctive characters, or consist exclusively of signs or indications which may serve, in a trade, to designate a kind or quality that is in itself general in nature. Trademarks which consist exclusively of signs or indications which have become customary cannot be registered either.

Other categories of trademarks that cannot be registered include trademarks that are contrary to public policy or to accepted principles of morality and signs that result from the nature of the goods themselves.

If proposed trademarks are identical or similar to earlier trademarks such that they may cause confusion in a person of average intelligence, then there might be relative grounds for refusal or invalidity. In such case, the relevant authorities would have to examine the proposed trademark against the earlier marks to determine whether such relative grounds for refusal truly exist.

In view of the considerable investment involved in the registration and protection of a trademark, Gonzi & Associates, Advocates offers trademark availability clearance work. This would include the provision of a legal opinion covering points such as the inherent registrability of a proposed mark and the results of identical / similarity searches carried out on the relevant trademark registers.

In addition, we can also assist to apply for funds potentially available to clients which would reduce the overall registration costs for the registration of trademarks and/or other intellectual property rights.

To this end, we offer the following services to our clients: