BE IT ENACTED by the President, by and with the advice and consent of the House of Representatives, in this present Parliament assembled, and by the authority of the same, as follows:—

Short title and commencement.

1. This Act may be cited as the Trademarks Act, 2000, and shall come into force on such date as the Minister responsible for the protection of Industrial Property may by notice in the Gazette establish and different dates may be so established for different provisions and different purposes thereof.

Interpretation.

2. (1) In this Act, unless the context otherwise requires:

“business” includes a trade or profession;

“Comptroller” means the Comptroller of Industrial Property and includes any other person appointed to exercise all or any of the powers and perform all or any of the duties of the Comptroller;

“infringement proceedings” in relation to a registered trademark, includes proceedings under section 16;

“Minister” means the Minister responsible for the protection of Industrial Property;

“Paris Convention” means the convention referred to in section 49 of this Act;

“prescribed” means prescribed by this Act or by any regulations made thereunder;

“publish” means make available to the public, and references to publication in relation to registration, are to publication under section 37(4);

Cap. 29.

“register” means the register of trademarks kept under this Act and includes the register of trademarks kept under the Industrial Property (Protection) Ordinance, partly repealed by this Act;

“trade” includes any business or profession;

“trademark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal names), figurative element, letters, numerals or the shape of goods or their packaging;

(2) (a) References in this Act to a trademark include, unless the context otherwise requires, reference to a collective mark or certification mark referred to respectively in sections 45 and 46.

(b)     References in this Act to use (or any particular description of use) of a trademark or of a sign identical with, similar to or likely to be mistaken for a trademark, include use (or that description of use) otherwise than by means of a graphic representation.

Property right.

3. A registered trademark is a property right obtained by the registration of the trademark under this Act. The proprietor of a registered trademark has the rights and remedies provided by this Act.

Absolute grounds for refusal.

4. (1) The following shall not be registered as trademarks—

(a)     signs which do not fall within the definition of trademarks in section 2;

(b)     trademarks which are devoid of any distinctive character;

(c)     trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;

(d)     trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that a trademark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(2) A sign shall not be registered as a trademark if it consists exclusively of—

(a)     the shape which results from the nature of the goods themselves,

(b)     the shape of goods which is necessary to obtain a technical result, or

(c)     the shape which gives substantial value to the goods.

(3) A trademark shall not be registered if it is—

(a)     contrary to public policy or to accepted principles of morality, or

(b)     of such a nature as to deceive the public or likely to deceive the public as to the nature, quality or geographical origin of the goods or service or in any other manner.

(4) A trademark shall not be registered if or to the extent that its use is prohibited in Malta by any enactment or rule of law.

(5) A trademark shall not be registered in the cases specified, or referred to, in section 5.

(6) A trademark shall not be registered if, or to the extent that, the application is made in bad faith.

Specially protected emblems.

5. (1) A trademark which consists of or contains—

(a)     the arms, or any of the principal armorial bearings of the arms appertaining to the President or the Roman Catholic Archbishop of Malta, or any insignia or device so nearly resembling such arms or any such armorial bearing as to be likely to be mistaken for them or it,

(b)     a representation of the Presidential or Episcopal flags,

(c)     a representation of the President or the Archbishop, or any colourable imitation thereof, or

(d)     words, letters or devices likely to lead persons to think that the applicant either has or recently has had Presidential or Episcopal patronage or authorization,

shall not be registered unless it appears to the Comptroller that consent has been given by or on behalf of the President or the Archbishop.

(2) A trademark which consists of a representation of the national flag of Malta shall not be registered.

(3) A trademark which contains a representation of the national flag of Malta shall not be registered if it appears to the Comptroller that the use of the trademark would be misleading or grossly offensive.

(4) A trademark shall not be registered in the cases specified in section 51 or section 52:

Provided that the Minister may by regulation extend the applicability of the provisions of this subsection to apply mutatis mutandis in respect of religions other than the Roman Catholic Apostolic Religion.

Relative grounds for refusal of registration.

6. (1) A trademark shall not be registered if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier trademark is protected.

(2) A trademark shall not be registered if because it is either identical with an earlier trademark and is to be registered for goods or services similar to those for which the earlier trademark is protected, or it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public, including the likelihood of association by the public with the earlier trademark:

Provided that the mere association without the likelihood of confusion shall not prevent a mark from being registered.

(3) A trademark which -

(a)     is identical with or similar to an earlier trademark, and

(b)     is to be registered for goods or services which are not similar to those for which the earlier trademark is protected,

shall not be registered if, or to the extent that, the earlier trademark has reputation in Malta and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

(4) A trademark shall not be registered if, or to the extent that, its use in Malta is liable to be prevented -

(a)     by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade, or

(b)     by virtue of an earlier right other than those referred to in paragraph (a) hereof or insubsections (1) to (3) in particular by virtue of the law of copyright, or registered designs.

A person thus entitled to prevent the use of a trademark is referred to in this Act as “the proprietor of an earlier right” in relation to the trademark.

(5) Nothing in this section prevents the registration of a trademark where the proprietor of the earlier trademark or the proprietor of an earlier right consents to the registration.

Meaning of “earlier trademark”.

7. (1) In this Act an “earlier trademark” means -

(a)     a registered trademark, which has a date of application for registration earlier than that of the trademark in question, taking account (where appropriate) of the priorities claimed in respect of the trademarks,

(b)     a trademark which, at the date of application for registration of the trademark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention as a well-known trademark.

(2) Subject to its being so registered, references in this Act to an earlier trademark includes a trademark in respect of which an application for registration has been made and which, if registered, would be an earlier trademark by virtue of subsection 1(a).

(3) A trademark as is referred to in subsection (1)(a) whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry thereof. However, if the Comptroller is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry no account shall be taken of the expired mark.

Power to remove relative grounds for refusal of registration.

8. (1) The Minister may make regulations providing that a trademark shall not be refused registration on a ground mentioned in section 6.

(2) Such regulations may make such consequential provision as appears to the Minister appropriate with respect to -

(a)     the carrying out by the Comptroller of searches of earlier trademarks, and

(b)     the persons by whom an application for declaration of invalidity may be made on the grounds specified in section 43(2).

(3) Regulations making such provision as is mentioned in subsection (2)(a) may direct that the provisions of section 35 in so far as they require a search to be carried out shall not have effect.

(4) Regulations making such provision as is mentioned in subsection (2)(b) may provide that section 43(3)in so far as it provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order.

(5) Regulations under this section may contain such transitional provisions as appear to the Minister to be appropriate.

Rights conferred by a registered trademark.

9. (1) The proprietor of a registered trademark has exclusive rights in the trademark. Such rights are infringed by such use of the trademark in Malta as is specified in section 10 without the consent of the proprietor.

(2) Any reference in this Act to the infringement of a registered trademark shall be deemed to be a reference to any such infringement of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of registration reckoned in accordance withsection 37(3):

Provided that -

(a)     no infringement proceedings may be begun before the date on which the trademark is in fact registered; and

(b)     no offence under section 72 shall be committed by anything done before the date of publication of the registration.

Infringement of a registered trademark.

10. (1) A person infringes a registered trademark if he uses in the course of trade a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered.

(2) A person infringes a registered trademark if he uses in the course of trade a sign where because -

(a)     the sign is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered, or

(b)     the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered,

there exists a likelihood of confusion on the part of the public, including the likelihood of association with the trademark:

Provided that the mere association without the likelihood of confusion shall not be considered as constituting an infringement.

(3) A person infringes a registered trademark if he uses in the course of trade a sign which -

(a)     is identical with or similar to the trademark, and

(b)     is used in relation to goods or services which are not similar to those for which the trademark is registered,

where the trademark has a reputation in Malta and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

(4) For the purposes of this section a person uses a sign if, in particular, he -

(a)     affixes it to the goods or the packaging thereof;

(b)     offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

(c)     imports or exports goods under the sign; or

(d)     uses the sign on business papers or in advertising.

(5) A person who applies a registered trademark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trademark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trademark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.

However, any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trademark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

Limits on effect of a registered trademark.

11. (1) A registered trademark is not infringed by the use of another registered trademark in relation to goods or services for which the latter is registered.

(2) A registered trademark is not infringed by -

(a)     the use by a person of his own name or address,

(b)     the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or

(c)     the use of the trademark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts):

Provided the use is in accordance with honest practices in industrial or commercial matters.

(3) (a) A registered trademark is not infringed by the use in the course of trade in Malta of an earlier right.

(b)     For the purposes of this subsection an “earlier right” means an unregistered trademark or other sign continuously used in relation to goods or services by a person or his predecessor in title from a date prior to whichever is the earlier of—

(i)     the use of the first-mentioned trademark in relation to those goods or services by the proprietor or his predecessor in title, or

(ii)     the registration of the first-mentioned trademark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and

(iii)     an earlier right shall be regarded as applying if, or to the extent that, its use is protected by virtue of any rule of law.

Exhaustion of rights conferred by a registered trademark.

12. (1) A registered trademark is not infringed by the use of the trademark in relation to goods which have been put on the market in Malta under that trademark by the proprietor or with his consent.

(2) Subsection (1) shall not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods in particular but without prejudice to the generality hereof, where the condition of the goods has been changed or impaired after they have been put on the market.

Registration subject to disclaimer or limitation.

13. (1) An applicant for registration of a trademark, or the proprietor of a registered trademark, may—

(a)     disclaim any right to the exclusive use of any specified element of the trademark, or

(b)     agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation.

(2) The Comptroller may disclaim any right to the exclusive use of any specified element of the trademark.

(3) The Minister may make rules providing for the publication and entry in the register of a disclaimer or limitation.

(4) Where the registration of a trademark is subject to a disclaimer or limitation, the rights conferred bysection 9 shall be restricted accordingly.

Action for infringement.

14. (1) Subject to the provisions of sections 28 and 29, an infringement of a registered trademark is actionable by the proprietor of the trademark by writ of summons to be filed in the First Hall of the Civil Court.

(2) In an action for infringement all such relief as is available in respect of the infringement of any other property right shall be available to the plaintiff.

Order for erasure, etc. of offending sign.

15. (1) Where a person is found to have infringed a registered trademark, the Court may make an order requiring him—

(a)     to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or

(b)     if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.

(2) If an order under subsection (1) is not complied with, or it appears likely to the Court that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.

Order for delivery up of infringing goods, material or articles.

16. (1) The proprietor of a registered trademark may apply to the Court for an order for the delivery up to him, or such other person as the Court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business.

(2) An application shall not be made after the end of the period specified in section 18; and no order shall be made unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 19.

(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, retain them pending the decision of the Court under section 19.

(4) Nothing in this section affects any other power of the Court.

Meaning of “infringing goods, material or articles”.

17. (1) In this Act the expressions “infringing goods”, “infringing material” and “infringing articles” shall be construed in accordance with the following subsections of this section.

(2) Goods are “infringing goods”, in relation to a registered trademark, if they or their packaging bear a sign identical or similar to that mark and—

(a)     the application of the sign to the goods or their packaging is an infringement of the registered trademark, or

(b)     the goods are proposed to be imported into Malta and the application in Malta, of the sign, to them or their packaging would be an infringement of the registered trademark, or

(c)     the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trademark.

(3) Material is “infringing material”, in relation to a registered trademark, if it bears a sign identical or similar to that mark and—

(a)     it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trademark, or

(b)     it is intended to be so used and such use would infringe the registered trademark.

(4) “Infringing articles”, in relation to a registered trademark, means articles—

(a)     which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and

(b)     which a person has in his possession, custody or control, knowing or having reason to believe that they have been used or are to be used to produce infringing goods or material.

Period after which remedy of delivery up not available.

18. (1) An application for an order under section 16 may not be made after the end of the period of six years from—

(a)     in the case of infringing goods, the date on which the trademark was applied to the goods or their packaging,

(b)     in the case of infringing material, the date on which the trademark was applied to the material, or

(c)     in the case of infringing articles, the date on which they were made,

except as provided in the following subsection.

(2) If during the whole or part of that period the proprietor of the registered trademark is prevented by fraud or concealment from discovering the facts entitling him to apply for an order, an application may be made at any time before the end of the period of six years from the date on which he could with reasonable diligence have discovered those facts.

Order as to disposal of infringing goods, material or articles.

19. (1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 16, an action by writ of summon may be brought before the Court by any party interested—

(a)     for an order that they be destroyed or forfeited to such person as the Court may think fit, or

(b)     for a decision that no such order should be made.

(2) In considering its decision, the Court shall consider whether other remedies available in an action for infringement of the registered trademark would be adequate to compensate the proprietor and any licensee to protect their interests.

(3) The Court shall order the service of the writ on persons having an interest in the goods, material or articles, and any person having an interest shall be entitled—

(a)     to appear in proceedings for an order under this section, whether or not he was served with a notice, and

(b)     to appeal against any order made, whether or not he appeared at first instance, and any such order shall not take effect until the end of the period within which an appeal may be filed or, if before the end of that period an appeal is so filed, until the final determination or abandonment of the proceedings on the appeal.

(4) Where there is more than one person interested in the goods, material or articles, the Court shall make such order as it thinks fit.

(5) If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return.

Remedy for groundless threats of infringement proceedings.

20. (1) Where a person threatens another with proceedings for infringement of a registered trademark other than -

(a)     use of the mark on goods or their packaging,

(b)     the importation of goods to which, or to the packaging of which, the mark has been applied, or

(c)     the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this section by writ of summons before the Civil Court, First Hall.

(2) The relief which may be applied for is any of the following -

(a)     a declaration that the threats are unjustified,

(b)     an injunction against the continuance of the threats,

(c)     damages in respect of any loss he may have sustained by the threats,

and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute, or if done would constitute, an infringement of the registered trademark concerned.

(3) Where the defendant shows that the acts in respect of which proceedings were threatened constitute or would constitute an infringement of the registered trademark, the plaintiff shall nevertheless be entitled to relief if he shows that the registration of the trademark is invalid or liable to be revoked.

(4) The mere notification that a trademark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.

Nature of a registered trademark.

21. A registered trademark is the personal property of its owner.

Co-ownership of a registered trademark.

22. (1) Where a registered trademark is granted to two or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trademark.

(2) The following provisions apply where two or more persons are co-proprietors of a registered trademark, by virtue of subsection (1) or otherwise.

(3) Subject to any agreement to the contrary, each co-proprietor is entitled, personally or through his agents, to do for his own benefit and without the consent of or the need to account to any other co-proprietor, any act which would otherwise amount to an infringement of the registered trademark.

(4) Notwithstanding the provisions of subsection (3) a co-proprietor may not without the consent of the other or others -

(a)     grant a licence to use the registered trademark, or

(b)     assign or cede control of his share in the registered trademark.

(5) Infringement proceedings may be brought by any co-proprietor, but a co-proprietor may not, without the leave of the Court, proceed with the action unless the other, or each of the other co-proprietors, is joined in the suit.

A co-proprietor who is thus joined in the suit shall not be liable for any costs in the action.

Nothing in this subsection affects the making of any precautionary warrant on the application of a single co-proprietor.

(6) Nothing in this section affects the rights and obligations of trustees or personal representatives, or their rights and obligations as such.

Transmission of a registered trademark.

23. (1) A registered trademark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property.

It is so transmissible either in connection with the goodwill of a business or independently.

(2) An assignment or other transmission of a registered trademark may be partial and limited so as to apply -

(a)     in relation to some but not all of the goods or services for which the trademark is registered, or

(b)     in relation to the use of the trademark in a particular manner or a particular locality.

(3) An assignment of a registered trademark is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be a personal representative.

(4) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark as part of the goodwill of a business.

Registration of transactions affecting a registered trademark.

24. (1) On application being made to the Comptroller by -

(a)     a person claiming to be entitled to an interest in or under a registered trademark by virtue of a registrable transaction, or

(b)     any other person claiming to be affected by such a transaction,

the prescribed particulars of the transaction shall be entered in the register.

(2) The following are registrable transactions —

(a)     an assignment of a registered trademark or any right in it;

(b)     the grant of a licence under a registered trademark;

(c)     the transfer of a registered trademark by testamentary disposition;

(d)     an order of a Court or other competent authority transferring a registered trademark or any right in or under it.

(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction -

(a)     the transaction is ineffective as against a person acquiring in good faith a conflicting interest in the registered trademark, and

(b)     a person claiming to be a licensee by virtue of the transaction shall not have the protection of section 28 or 29.

(4) Where a person becomes the proprietor or a licensee of a registered trademark by virtue of a registrable transaction, he shall not be entitled to damages or an account of profits in respect of any infringement of the registered trademark occurring after the date of the registrable transaction and before the prescribed particulars of the transaction are registered, unless:

(a)     an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with the date of the transaction, or

(b)     the Court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter.

(5) The Minister may make regulations prescribing rules as to -

(a)     amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence, and

(b)     the removal of such particulars from the register -

(i)     where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired;

(ii)     where no such period is indicated and, after such period as may be prescribed, and after the Comptroller has notified the parties of his intention to remove the particulars from the register and the parties have not indicated their agreement that such particulars should not be removed for such period as the parties shall have agreed and indicated to the Comptroller;

(c)     the amendment or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.

Application for registration of a trademark as an object of property.

25. The provisions of section 21 to 24 apply mutatis mutandis in relation to an application for the registration of a trademark in the same manner in relation to a registered trademark.

Licensing of a registered trademark.

26. (1) A licence to use a registered trademark may be general or limited. A limited licence may in particular, apply -

(a)     in relation to some but not all the goods or services for which the trademark is registered, or

(b)     in relation to use of the trademark in a particular manner or a particular locality.

(2) Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s interest, and references in this Act to doing anything with, or without, the consent of the proprietor of a registered trademark shall be construed accordingly.

(3) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.

Exclusive licences.

27. (1) In this Act an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trademark in the manner authorised by the licence.

(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence.

General provisions as to the rights of licensees in case of infringement.

28. (1) The provisions of this section shall apply with respect to the rights of a licensee in relation to infringement of a registered trademark:

Provided that they shall not apply where or to the extent that, in accordance with section 29(1) an exclusive licensee has a right to bring proceedings in his own name.

(2) A licensee is entitled, unless his licence, provides otherwise, to call on the proprietor of the registered trademark to take infringement proceedings in respect of any matter which affects his interests.

(3) If the proprietor -

(a)     refuses to do so, or

(b)     fails to do so within two months after being called upon, the licensee may bring the proceedings in his own name as if he were the proprietor.

(4) Where infringement proceedings are brought by a licensee by virtue of this section, the proprietor shall be joined in the suit.

(5) In infringement proceedings brought by the proprietor of a registered trademark any loss suffered or likely to be suffered by licensees shall be taken into account by the Court which shall give such directions as it thinks fit with regard to the disposal and distribution of any sum awarded as a remedy for the infringement.

Exclusive licensee having right and remedies of assignee.

29. (1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

Where or to the extent that such provision is made, the licensee shall be entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings in his own name against any person other than the proprietor.

(2) The rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trademark; and references in this Act to the proprietor of a registered trademark relating to infringement shall be construed accordingly.

(3) In an action brought by an exclusive licensee under this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trademark.

(4) Where proceedings for infringement of a registered trademark are brought by the proprietor or by the exclusive licensee relating to an infringement in respect of which they have concurrent right of action, the proprietor or, as the case may be, the exclusive licensee who are not the plaintiff shall be joined in the suit.

(5) (a) Where an action for infringement of a registered trademark relating to an infringement in respect of which the proprietor and an exclusive licensee have concurrent right of action is brought:-

(i)     the Court shall in assessing damages take into account-

(1) the terms of the licence, and

(2) any pecuniary remedy already awarded or available to either of them in respect of the infringement;

(ii)     no account of profits shall be ordered to be made if an award of damages has been made, or an account of profits has been ordered, in favour of either of them in respect of the infringement; and

(iii)     the Court shall, if an account of profits has been ordered, apportion subject to any agreement between them, the profits between them as the Court considers just.

(b)     The provisions of this subsection apply whether action is brought by the proprietor alone, or it is brought by the proprietor and the exclusive licensee; and if they are not both parties the Court may give such directions as it deems fit with regard to the disposal and distribution of any sum awarded as remedy for the infringement.

(6) The proprietor of a registered trademark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 16; and the Court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licensee.

(7) The provisions of subsections (4) to (6) shall be without prejudice to any agreement to the contrary between the exclusive licensee and the proprietor.

Application for registration.

30. An application for registration of a trademark shall be made to the Comptroller in such manner as may be prescribed.

Date of filing.

31. (1) The date of filing of an application for registration of a trademark is the date on which the prescribed elements are furnished to the Comptroller by the applicant:

Provided that where the elements are furnished on different days, the date of filing shall be the date on which the last element is so furnished.

(2) References in this Act to the date of application for registration shall be construed as a reference to the date of filing of the application.

Classification of trademarks.

32. (1) Goods and services shall be classified for the purposes of the registration of trademarks according to such system of classification as may be prescribed.

(2) Any question arising as to the class within which any goods or services fall shall be determined by the Comptroller, whose decision shall be final.

Claim to priority of Convention application.

33. (1) A person who has duly filed an application for protection of a trademark in a country which is a member of the World Trade Organisation or a party to the Paris Convention, hereinafter in this Act referred to as a “Convention application”, or his successor in title, has a right to priority, for the purposes of registering the same trademark under this Act for any or all of the same goods or services for which such an application has been filed, for a period of six months from the date of filing of the first such application.

(2) If the application for registration under this Act is made within such six-month period —

(a)     the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and

(b)     the registrability of the trademark shall not be affected by any use of the mark in Malta in the period between that date and the date of the application under this Act.

(3) (a) Any filing which in a country which is a member of the World Trade Organisation or is a party to the Paris Convention is under its legislation or any international agreement to which such country is a party, treated as if it were a regular national filing, shall be treated as giving rise to the right of priority.

(b)     For the purposes of this subsection “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent application.

(4) A subsequent application concerning the same goods or services as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (the filing date of which is the starting date of the period of priority), if at the time of the subsequent application —

(a)     the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding, and

(b)     it has not yet served as a basis for claiming a right of priority,

and the previous application may not thereafter serve as a basis for claiming a right of priority.

(5) Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application.

(6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently.

Claim to priority from other relevant overseas application.

34. (1) The Minister may make regulations conferring on a person who has duly filed an application for protection of a trademark in a country or territory in relation to which the Maltese Government is a party to a treaty, convention, arrangement or engagement for the reciprocal protection of trademarks, a right to priority, for the purpose of registering the same trademark under this Act for any or all of the same goods or services, for a such period as may be specified in the application from the date of filing of that application.

(2) Such regulations may make provisions similar to those contained in section 33 in relation to Convention applications or such other provision as appears to the Minister to be appropriate.

Examination of application.

35. (1) The Comptroller shall examine whether an application for registration of a trademark satisfies the requirements of this Act and for that purpose he shall carry out a search, to such extent as he considers necessary, of earlier trademarks.

(2) If it appears to the Comptroller that the requirements for registration are not met, he shall inform the applicant and give him an opportunity to make representations or to amend the application within such period as the Comptroller may specify.

(3) If the applicant fails to satisfy the Comptroller that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Comptroller shall refuse the application.

(4) If it appears to the Comptroller that the requirements for registration are met, he shall accept the application as eligible for registration.

Withdrawal, restriction or amendment of application.

36. (1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.

(2) Save as provided in subsection (1), an application may be amended, at the request of the applicant, only by correcting —

(a)     the name or address of the applicant,

(b)     errors of wording or of copying, or

(c)     obvious mistakes,

and then only where the correction does not substantially affect the identity of the trademark or extend the goods or services covered by the application.

Registration.

37. (1) Where an application has been accepted as eligible for registration, the Comptroller shall register the trademark, unless it appears to him having regard to matters coming to his notice after he accepted the application that it was accepted in error.

(2) A trademark shall not be registered and the application shall be deemed to be withdrawn unless any fee prescribed in respect of any action taken before the registration is paid within the prescribed period.

(3) A trademark when registered shall be registered as of the date of filing of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration.

(4) On the registration of a trademark the Comptroller shall publish the registration in the prescribed manner and issue to the applicant a certificate of registration.

Duration of registration.

38. (1) A trademark shall be registered for a period of ten years from the date of registration.

(2) Registration may be renewed in accordance with section 39 for further periods of ten years.

Renewal of registration.

39. (1) The registration of a trademark may be renewed at the request of the proprietor, subject to the payment of the prescribed renewal fee not more than 6 months before the date of expiry.

(2) The Minister may by regulation make rules providing that the Comptroller informs the proprietor of a registered trademark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.

(3) Without prejudice to subsection (1) a request for renewal must be made, before the expiry of the registration:

Provided that, the request may be made and the fee paid within such further period as may be prescribed, in which case a prescribed additional renewal fee must also be paid within that period.

(4) Renewal shall take effect from the expiry of the previous registration.

(5) If the registration is not renewed in accordance with the above provisions, the Comptroller shall remove the trademark from the register.

(6) Provision may be made by rules for the restoration of the registration of a trademark which has been removed from the register, subject to such conditions (if any) as may be prescribed.

(7) The renewal or restoration of the registration of a trademark shall be published in the prescribed manner.

Alteration of a registered trademark.

40. (1) A registered trademark shall not be altered in the register, during the period of registration or on renewal.

(2) Nevertheless, the Comptroller may, at the request of the proprietor, allow the alteration of a registered trademark where the mark includes the proprietor’s name or address and the alteration is limited to the alteration of that name or address and does not substantially affect the identity of the mark.

(3) Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

Surrender of a registered trademark.

41. (1) A registered trademark may be surrendered by the proprietor in respect of any or all of the goods or services for which it is registered.

(2) Provision may be made by rules —

(a)     as to the manner and effect of a surrender, and

(b)     for protecting the interests of other persons having a right in the registered trademark.

Revocation of registration.

42. (1) The registration of a trademark may be revoked on any of the following grounds —

(a)     that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in Malta, by the proprietor of with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for such non-use;

(b)     that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for such non-use;

(c)     that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;

(d)     that in consequence of the use made of it by the proprietor or with his consent, it is liable to mislead the public in relation to the goods or services for which it is registered, particularly as to the nature, quality or geographical origin of those goods or services.

(2) For the purposes of subsection (1) use of a trademark includes the use in a form differing in such elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Malta includes affixing the trademark to goods or to the packaging of goods in Malta solely for export purposes.

(3) The registration of a trademark shall not be revoked on the ground mentioned in paragraphs (a) or(b) of subsection (1) if such use as is referred to in those paragraphs is commenced or resumed after the expiry of the five-year period and before the application for revocation is made:

Provided that, any such commencement or resumption of use after the expire of the five-year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application is likely to be made.

(4) An application for revocation may be made by writ of summons before the First Hall, Civil Court by any person.

(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trademark is registered, revocation shall be limited to those goods or services.

(6) Where the registration of a trademark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from —

(a)     the date of the application for revocation, or

(b)     if grounds for revocation existed at an earlier date, such earlier date.

Grounds for invalidity of registration.

43. (1) The registration of a trademark may be declared invalid on the ground that the trademark was registered in breach of section 4 or any of the provisions referred to in that section.

Where the trademark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(2) The registration of a trademark may, unless the proprietor of that earlier trademark or other earlier right has consented to the registration, be declared invalid on the ground —

(a)     that there is an earlier trademark in relation to which the conditions set out in section 6 (1),(2) or (3) obtain, or

(b)     that there is an earlier right in relation to which the condition set out in section 6 (4) is satisfied.

(3) An application for a declaration of invalidity may be made by any person, by writ of summons before the First Hall of the Civil Court.

(4) In the case of bad faith in the registration of a trademark, the Comptroller himself may apply to the Court for a declaration of the invalidity of the registration.

(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trademark is registered, the trademark shall be declared invalid with regard to those goods or services only.

(6) Where the registration of a trademark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made:

Provided that this shall not affect transactions past and closed.

Effect of acquiescence.

44. (1) Where the proprietor of an earlier trademark or other earlier right being aware of the use of a registered trademark in Malta, has acquiesced to such use for a continuous period of five years, he shall cease to be entitled to any right on the basis of that earlier trademark or other right —

(a)     to apply for a declaration that the registration of the later trademark is invalid, or

(b)     to oppose the use of the later trademark in relation to the goods or services in relation to which it has been so used,

unless the registration of the later trademark was applied for in bad faith.

(2) In the cases referred to in subsection (1), the proprietor of the later trademark is not entitled to oppose the use of the earlier trademark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trademark or right may no longer be invoked against his later trademark.

Collective marks.

45. (1) A collective mark is a mark distinguishing the goods or services of members of an association which is the proprietor of the mark from those of other undertakings.

(2) The provisions of this Act apply to collective marks subject to the provisions of Schedule 1 to this Act.

Certification marks.

46. (1) A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

(2) the provisions of this Act apply to certification marks subject to the provisions of Schedule 2.

The Madrid Protocol.

47. In this Part —

“the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on 27 June, 1989;

“the International Bureau” has the meaning given by Article 2(1) of that Protocol; and

“international trademark (Malta)” means a trademark which is entitled to protection in Malta under that Protocol.

Power to make provision giving effect to Madrid Protocol.

48. (1) The Minister may by Order make such provisions as may be necessary for giving effect in Malta to the provisions of the Madrid Protocol and without prejudice to the generality of the foregoing.

The Order may, in particular, be made with respect to —

(a)     the making of applications for international registrations by way of the Industrial Property Office as office of origin;

(b)     the procedures to be followed where the basic Malta application or registration fails or ceases to be in force;

(c)     the procedures to be followed where the Industrial Property Office receives from the International Bureau a request for extension of protection to Malta;

(d)     the effects of a successful request for extension of protection to Malta;

(e)     the transformation of an application for an international registration, or an international registration, into a national application for registration;

(f)     the communication of information to the International Bureau;

(g)     the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.

(2) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section applying in relation to “an international trademark (Malta)” the provisions of section 20 and of sections 72 to 86 of this Act.

The Paris Convention.