TRADEMARKS [CAP. 597. 1
CHAPTER 597
TRADEMARKS ACT
AN ACT to repeal and replace the Trademarks Act, Cap. 416.
14th May, 2019
ACT XII of 2019.  
Short title. 1. The short title of this Act is the Trademarks Act. 
PART I – GENERAL PROVISIONS 
Scope, purpose and 
data protection.2. (1) This Act applies to every trademark in respect of 
goods or services which is the s ubject of registration or of an  
application for registration in Malta as an individual trademar k, a 
certification mark or a collectiv e mark or of an international 
registration having effect in Malta.
(2) This Act transposes the pro visions of Directive (EU) 2015/
2436 of 16 December 2015 to approximate the laws of the Member States relating to trademarks (Recast).
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Cap. 586.(3) The processing of any persona l data carried out in Malta in  
the framework of this Act shall be subject to Regulation 2016/679 
(EU)  and the Data Protection Act .
Definitions. 3. (1) For the purpose of this Act, the following definitions 
apply:
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
Cap. 417."Comptroller" means the Comptroller of Industrial 
Property as established under article 3 of the Patents and 
Designs Act  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;
"European Union" or "Union" means the European 
Union referred to in the Treaty;
"infringement proceedings" in relation to a registered 
trademark, includes proceedings under article 21;
"Member State" means a state which is a member of the 
European Union;
"the Minister" means the Minister responsible for the 
protection of Industrial Property;
"the Office" means the nationa l Maltese entity officially 
designated with the responsibility to register trademarks in Malta;
Cap. 29. "the Ordinance" shall mean the Industrial Property 
2 [CAP. 597. TRADEMARKS
(Protection) Ordinance; 
"Paris Convention" means the convention referred to in 
article 125;
"prescribed" means prescribed by this Act or by any 
regulations made thereunder;
"publish" means make available to the public, and 
references to publication in rel ation to registration, are to 
publication under article 56(4);
"register" means the registe r of trademarks kept by the 
Office;
"trade" includes any business or profession;
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Cap. 460."the Treaty" has the same meaning assigned to it by 
article 2 of the European Union Act .
References to 
trademark.(2) References in this Act to a t rademark include, unless the 
context otherwise requires, reference to a certification mark o r 
collective mark referred to resp ectively in article 61(a) and ( b).
PART II - REGISTERED TRADEMARKS
Property right. 4. (1) A registered trademark is a property right obtained 
by the registration of the trademark under this Act. The propri etor of a 
registered trademark has the ri ghts and remedies provided by th is Act.
Signs of which a 
trademark may 
consist.(2) A trademark may consist of any signs, in particular words, 
including personal names, or des igns, letters, numerals, colour s, the 
shape of goods or of the packaging of goods, or sounds, provide d that 
such signs are capable of:
(a) distinguishing the goods or services of one 
undertaking from those of other undertakings; and
(b) being represented on the register in a manner 
which enables the competent authorities and the public to determine the clear and precise subject matter of the protectio n 
afforded to its proprietor.
Absolute grounds 
for refusal or 
invalidity.5. (1) The following shall not be registered as trademarks 
or, if registered, shall be lia ble to be declared invalid:
(a) signs which cannot c onstitute a trademark;
(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, 
      
TRADEMARKS [CAP. 597. 3
quality, intended purpose, value, geographical origin, the time  
of production of goods or of rende ring of the service, or other  
characteristics of the  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;
(e) signs which consist exclusively of -
(i) the shape, or another characteristic, which 
results from the nature o f the goods themselves;
(ii) the shape, or another characteristic, of 
goods which is necessary to  obtain a technical result;
(iii) the shape, or another characteristic, which 
gives substantial value to the goods;
(f) trademarks which are contrary to public policy or 
to accepted principles of morality;
(g) trademarks which are of such a nature as to 
deceive the public or likely to deceive the public, for instanc e, 
as to the nature, quality or geographical origin of the goods o r 
services;
(h) trademarks which have not been authorised by the 
competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention;
(i) trademarks which are excluded from registration 
pursuant to Union legislation or the laws of Malta, or to 
international agreements to which the Union or Malta is party, providing for protection of designations of origin and geographical indications;
(j) trademarks which are excluded from registration 
pursuant to Union legislation or international agreements to which the Union is party, providing for protection of tradition al 
terms for wine;
(k) trademarks which are excluded from registration 
pursuant to Union legislation or international agreements to which the Union is party, providing for protection of tradition al 
specialities guaranteed; 
(l) trademarks which consist of, or reproduce in their 
essential elements, an earlier plant variety denomination registered in accordance with Union legislation or the laws of Malta, or international agreements to which the Union or Malta 
4 [CAP. 597. TRADEMARKS
is party, providing protection fo r plant variety rights, and wh ich 
are in respect of plant varieties of the same or closely relate d 
species.
(2) A trademark shall be liable to be declared invalid where th e 
application for registration of t he trademark was made in bad f aith by 
the applicant.
(3)  A trademark shall not be registered or, if registered, is 
liable to be declared invalid w here and to the extent that:
(a) the use of that trademark may be prohibited 
pursuant to provisions of law other than trademark law of Malta  
or of the Union;
(b) the trademark includes a sign of high symbolic 
value, in particular a religious symbol;
(c) the trademark includes badges, emblems and 
escutcheons other than those covered by Article 6 ter o f  t h e  
Paris Convention and which are of public interest, unless the 
consent of the competent authority to their registration has be en 
given in conformity with the laws of Malta.
(4) A trademark which c onsists 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 colour able 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 th at 
consent has been given by or on behalf of the President or the Archbishop:
Provided that the Minister may by regulations extend the 
applicability of the provisions of this sub-article to apply mutatis 
mutandis  in respect of religions other than the Roman Catholic 
Apostolic Religion.
(5) A trademark which consists  of a representation of the 
      
TRADEMARKS [CAP. 597. 5
national flag of Malta s hall not be registered.
(6) A trademark which contains a representation of the national  
flag of Malta shall not be regis tered if it appears to the Comp troller 
that the use of the trademark would be misleading or grossly of fensive.
(7) A trademark shall not be registered in the cases specified in 
article 127 or article 128 except as provided in said articles.
 (8) A trademark shall not be refused registration in accordanc e 
with sub-article (1)(b), (c) or (d) if, before the date of appl ication for 
registration, it has acquired a di stinctive character as a resu lt of the use 
made of it in Malta. A trademark shall not be declared invalid for the 
same reasons if, before the date  of action for a declaration of  
invalidity, following the use which has been made of it, it has  acquired 
a distinctive character as a res ult of the use made of it in Ma lta.
Relative grounds 
for refusal or 
invalidity. 6. (1) A trademark shall not be registered or, if registered, 
shall be liable to be declared invalid where:
(a) it is identical with an earlier trademark, and the 
goods or services for which the trademark is applied for or is registered are identical with th e goods or services for which t he 
earlier trademark is protected;
(b) because of its identity with, or similarity to, an 
earlier trademark and the identity or similarity of the goods o r 
services covered by the trademarks, there exists a likelihood o f 
confusion on the part of the public, including the likelihood o f 
association by the public with the earlier trademark.
(2) "Earlier trademarks" within the meaning of sub-article (1) 
means:
(a) trademarks of the following kinds with a date of 
application for registration which is earlier than the date of application for registration of the trademark, taking account, where appropriate, of the priorities claimed in respect of thos e 
trademarks:
(i) EU trademarks;(ii) trademarks registered in Malta;
(iii) trademarks registered under international 
arrangements which ha ve effect in Malta;
(b) EU trademarks which validly claim seniority, in 
accordance with Regulation (EU) No. 2017/1001
, of a 
trademark referred to in sub-article (2)(a)(ii) and (iii), even  
when the latter trademark has been surrendered or allowed to lapse; 
6 [CAP. 597. TRADEMARKS
(c) applications for the trade marks referred to in sub-
article (2)(a) and (b), subj ect to their registration;
(d) trademarks which, on th e date of application for 
registration of the trademark o r ,  w h e r e  a p p r o p r i a t e ,  o f  t h e  
priority claimed in respect of the application for registration  of 
the trademark, are well known in Malta, in the sense in which the words "well-known" are used in Article 6 bis of the Paris 
Convention.
 (3) Furthermore, a trademark shall not be registered or, if 
registered, shall be liable to be declared invalid where:
(a) it is identical with, or similar to, an earlier 
trademark irrespective of whether the goods or services for which the trademark is applied or registered are identical with , 
similar to or not similar to those for which the earlier tradem ark 
is protected, where the earlier trademark has a reputation in Malta or, in the case of an EU trademark, has a reputation in t he 
Union and the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the r epute of the earlier trademark;
(b) an agent or representative of the proprietor of the 
trademark applies for registration thereof in his own name without the proprietor's authorisation, unless the agent or representative jus tifies his action;
(c) to the extent that, pursu ant to Union legislation or 
the laws of Malta providing for protection of designations of origin and geographical indications:
(i) an application for a designation of origin 
or a geographical indication had already been submitted in accordance with Union legislation or the laws of Malta prior to the date of application for registration of the trademark or the date of the priority claimed for the application, subject to its  subsequent registration;
(ii) that designation of origin or geographical 
indication confers on the per son authorised under the 
relevant law to exercise the rights arising therefrom, the right to prohibit the use of  a subsequent trademark.
(4) A trademark is not to be registered or, if registered, is l iable 
to be declared invalid where, and to the extent that:
(a) rights to a non-registered trademark or to another 
sign used in the course of trade, were acquired prior to the da te 
of application for registration of the subsequent trademark, or  
the date of the priority claimed for the application for 
      
TRADEMARKS [CAP. 597. 7
registration of the subsequent trademark, and that non-
registered trademark or other sign confers on its proprietor th e 
right to prohibit the use of  the subsequent trademark;
(b) the use of the trademark may be prohibited by 
virtue of an earlier right, other than the rights referred to i n sub-
articles (2) and (4)(a), an d protected by means of:
 (i) copyright;(ii) registered designs;(iii) other rights which the Minister may 
prescribe by regulation.
 (5) A trademark shall not be refused registration or declared 
invalid where the proprietor of the earlier trademark or other earlier 
right consents to the registra tion of the later trademark.
Derogation in 
respect of trademarks 
regulated by the 
Ordinance 
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(Cap. 29).7. The grounds for refusal of registration or invalidity in force 
in Malta prior to the date of the entry into force of the Trademarks Act
(Cap. 416), are to continue to apply in relation to trademarks for which 
an application was made prior to such entry into force and whic h 
remained regulated thereby.
Establishment a 
posteriori  of 
invalidity or revocation of a 
trademark.8. Where the seniority of a national trademark or of a 
trademark registered under intern ational arrangements having ef fect in 
Malta, which has been surrendered or allowed to lapse, is claim ed for 
an EU trademark, the invalidity or revocation of the trademark providing the basis for the seniority claim may be established a 
posteriori , provided that the invalidity or revocation could have been 
declared at the time the mark was surrendered or allowed to lap se. In 
such a case, the seniority shall cease to produce its effects.
Grounds for refusal 
or invalidity relating to only 
some of the goods 
or services.9. Where grounds for refusal of registration or for invalidity of  
a trademark exist in respect of only some of the goods or servi ces for 
which that trademark has been applied or registered, refusal of  
registration or invalidity shall cover those goods or services only. 
Lack of distinctive 
character or of 
reputation of an earlier trademark 
precluding a 
declaration of invalidity of a 
registered 
trademark.10. An action for a declaration of invalidity on the basis of an 
earlier trademark shall not succeed at the date of the action f or 
invalidation if it would not hav e been successful at the filing  date or 
the priority date of the later trademark for any of the followi ng 
reasons:
(a) the earlier trademark liable to be declared invalid 
pursuant to article 5(1)(b), (c) or (d) had not yet acquired a distinctive character as r eferred to in article 5(8);
(b) the application for a declaration of invalidity is 
based on article 6(1)(b) and the earlier trademark had not yet 
become sufficiently distinctive to support a finding of 
8 [CAP. 597. TRADEMARKS
likelihood of confusion within the  meaning of article 6(1)(b);
(c) the application for a declaration of invalidity is 
based on article 6(3)(a) and the  earlier trademark had not yet 
acquired a reputation within t he meaning of article 6(3)(a).
Preclusion of a 
declaration of 
invalidity due to acquiescence.11. (1) Where, in Malta, the proprietor of an earlier 
trademark, as referred to in article 6(2) or article 6(3)(a) ha s 
acquiesced for a period of five successive years, in the use of  a later 
trademark registered in Malta, he shall no longer be entitled o n the 
basis of the earlier trademark to apply for a declaration that the later 
trademark is invalid in respect of the goods or services for wh ich the 
later trademark has been used, unless registration of the later  
trademark was applied for in bad faith.
(2) Sub-article (1) is to apply to the proprietor of any other 
earlier right referred to i n article 6(4)(a) or (b).
(3) In the cases referred to in sub-articles (1) and (2), the 
proprietor of the later registered trademark shall not be entit led to 
oppose the use of the earlier right, even though that right may  no 
longer be invoked against the later trademark.
Rights conferred and limitations
Rights conferred 
by a trademark.12. (1) The registration of a trademark shall confer on the 
proprietor exclusive rights therein. 
(2) Any reference in this Act to  the infringement of a register ed 
trademark shall be deemed to be a reference to any such infring ement 
of the rights of the proprietor.
(3) The rights of the proprietor have effect from the date of 
registration reckone d in accordance with article 56(3):
Provided that -
(a) no infringement proceedings may be begun 
before the date on which the trad emark is in fact registered; a nd
(b) no offence under article 109 shall be committed 
by anything done before the da te of publication of the 
registration.
(4) Without prejudice to the rights of proprietors acquired 
before the filing date or the priority date of the registered t rademark, 
the proprietor of that registered trademark shall be entitled t o prevent 
all third parties not having his consent from using in the cour se of 
trade, in relation to goods or services, any sign where:
(a) the sign is identical with the trademark and is 
used in relation to goods or services which are identical with 
      
TRADEMARKS [CAP. 597. 9
those for which it is registered;
(b) the sign is identical with, or similar to, the 
trademark and is used in relati on to goods or services which ar e 
identical with, or similar to, the goods or services for which the 
trademark is registered: 
Provided that there exists a likelihood of 
confusion on the part of the public: 
Provided further that the likelihood of confusion 
includes the likelihood of association between the sign and the  
trademark;
(c) the sign is identical with, or similar to, the 
trademark irrespective of whether it is used in relation to goo ds 
or services which are identical with, similar to, or not simila r to, 
those for which the trademark is  registered, where the latter h as 
a reputation in Malta and where use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.
(5) The following, in particular, may be prohibited under sub-
article (4):
(a) affixing the sign to the goods or the packaging 
thereof;
(b) offering the goods or putting them on the market, 
or stocking them for those purposes, under the sign, or offerin g 
or supplying services thereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign as a trade or company name or part 
of a trade or company name;
(e) using the sign on business papers or in 
advertising;
(f) using the sign in comparative advertising in a 
manner that is contrary t o Directive 2006/114/EC.
(6) A person who applies a registered trademark to material 
intended to be used for labelling or packaging goods, as a busi ness 
paper, or for advertising goods o r services, shall be treated a s a party to 
any use of the material which infringes the registered trademar k 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 propriet or or a 
licensee.
(7) Without prejudice to the rights of proprietors acquired 
10 [CAP. 597. TRADEMARKS
before the filing date or the priority date of the registered t rademark, 
the proprietor of that registered trademark shall also be entit led to 
prevent all third parties from bringing goods, in the course of  trade, 
into Malta, without bei ng released for free circulation there, where 
such goods, including the packaging thereof, come from third countries and bear without authorisation a trademark which is i dentical 
with the trademark registered in  respect of such goods, or whic h 
cannot be distinguished in its ess ential aspects from that trad emark.
The entitlement of the trademark proprietor pursuant to the 
first sub-paragraph shall lapse if, during the proceedings to d etermine 
whether the registered trademark  has been infringed, initiated in 
accordance with Regulation (EU) No. 608/2013 , evidence is provided 
by the declarant or the holder of the goods that the proprietor  of the 
registered trademark is not entitled to prohibit the placing of  the goods 
on the market in the count ry of final destination.
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Cap. 416. 
Cap. 29.(8) Where the use of a sign unde r the conditions referred to in  
paragraphs (b) and (c) of sub-article (4) could not be prohibit ed before 
the coming into force of the Trademarks Act , the rights conferred by 
the trademark cannot be relied on to prevent the continued use of the 
sign if such use had started prio r to the said Act coming into force.
(9) Sub-articles (1), (4), (5) and (8) shall not affect provisions 
applicable under any law relating to the protection against the  use of a 
sign other than use for the purposes of distinguishing goods or  services, 
where use of that sign without due  cause takes unfair advantage  of or is 
detrimental to, the distinctive c haracter or the repute of the trademark.
The right to 
prohibit preparatory acts in 
relation to the use 
of packaging or other means.13. Where the risk exists that the packaging, labels, tags, 
security or authenticity features or devices, or any other mean s to 
which the trademark is affixed, could be used in relation to go ods or 
services and that use would constitute an infringement of the r ights of 
the proprietor of a trademark under article 12(4) and (5), the proprietor 
of that trademark shall have the right to prohibit the followin g acts if 
carried out in the course of trade:
(a) affixing a sign identical with, or similar to, the 
trademark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed;
(b) offering or placing on the market, or stocking for 
those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any othe r 
means to which the mark is affixed.
Reproduction of 
trademarks in dictionaries.14. If the reproduction of a trademark in a dictionary, 
encyclopaedia or similar reference work, in print or electronic  form, 
gives the impression that it constitutes the generic name of th e goods 
or services for which the trademark is registered, the publishe r of the 
      
TRADEMARKS [CAP. 597. 11
work shall, at the request of the  proprietor of the trademark, ensure 
that the reproduction of the trademark is, without delay, and i n the case 
of the work in printed form at the latest in the next edition o f the 
publication, accompanied by an indication that it is a register ed 
trademark.
Prohibition of the 
use of a trademark 
registered in the name of an agent 
or representative.15. (1) Where a trademark is registered in the name of the 
agent or representative of a per son who is the proprietor of th at 
trademark, without the proprietor’ s consent, the latter shall b e entitled 
to do either or both of the following:
(a) oppose the use of the trademark by his agent or 
representative;
(b) demand the assignment of the trademark in his 
favour.
(2) Sub-article (1) shall not apply where the agent or 
representative justifies his action.
Limits on effects of 
a registered trademark.16. (1) A trademark shall not entitle the proprietor to 
prohibit a third party from us ing, in the course of trade:
(a) the name or address of the third party, where that 
third party is a natural person;
(b) signs or indications which are not distinctive or 
which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the services, or other characteristics of goods  or 
services; 
(c) the trademark for the purpose of identifying or 
referring to goods or services as those of the proprietor of th at 
trademark in particular where the use of the trademark is necessary to indicate the intended purpose of a product or service in particular as a ccessories or spare parts. 
(2) Sub-article (1) shall only apply where the use made by the 
third party is in accordance with honest practices in industria l or 
commercial matters.
(3) (a) A trademark shall not entitle the proprietor to 
prohibit a third party from using, in the course of trade in Ma lta, an 
earlier right, if the right is recognised by law and if, or to the extent 
that, its use is protected by  virtue of any rule of law.
(b) For the purposes of this sub-article 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 t he 
earlier of - 
12 [CAP. 597. TRADEMARKS
(i) the use of the first-mentioned trademark in 
relation to those goods or ser vices 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  his predecessor in title.
Exhaustion of the 
rights conferred by 
a trademark.17. (1) A trademark shall not entitle the proprietor to 
prohibit its use in relation to goods which have been put on th e market 
in the Union under that trademark by the proprietor or with the  
proprietor’s consent.
(2) Sub-article (1) shall not apply where there exist legitimat e 
reasons for the proprietor to oppose further commercialisation of the 
goods, particularly whe re the condition of the goods is changed  or 
impaired after they have  been put on the market.
Registration 
subject to disclaimer or 
limitation.18. (1) An applicant for registration of a trademark, or the 
proprietor of a registe red 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 elemen t 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 by article 12 sh all be 
restricted accordingly.
Action for 
infringement.19. (1) Subject to the provisions of articles 41 and 42, an 
infringement of a registered trademark is actionable by the pro prietor 
of the trademark by sworn application to be filed in the First Hall of 
the Civil Court.
(2) In an action for infringement  all such relief as is availab le in 
respect of the infringement of any other property right shall b e 
available to the plaintiff.
Order for erasure, 
etc., of offending sign.20. (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
      
TRADEMARKS [CAP. 597. 13
(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 sub-article  (1) is not complied with, or it 
appears likely to the Court that such an order would not be com plied 
with, the Court may order that the infringing goods, material o r articles 
be delivered to such person as the Court may direct for erasure , 
removal or obliteration of the si gn, or for destruction, as the  case may 
be.
Order for delivery 
up of infringing 
goods, material or 
articles.21. (1) The proprietor of a registered trademark may, by 
application, ask the First Hall of Civil Court for an order for  the 
delivery up to him, or such other person as the Court may direc t, of 
any infringing goods, material or  articles which a person has i n his 
possession, custody or contro l in the course of a business.
(2) An application shall not be made after the end of the perio d 
specified in article 23; and no order shall be made unless the Court 
also makes, or it appears to the Court that there are grounds f or 
making, an order under article 24.
(3) A person to whom any infringing goods, material or articles  
are delivered up in pursuance of an order under this article sh all retain 
them pending the decision of the Court under article 24.
(4) Nothing in this article affect s any other power of the Cour t.
Meaning of 
"infringing goods, material or 
articles".22. (1) In this Act the expressions "infringing goods", 
"infringing material" and "infringing articles" shall be constr ued in 
accordance with the following sub-articles of  this article.
(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 be en used in relation to the 
goods in such a way as to infri nge the registered trademark.
(3) Material is "infringing material", in relation to a registe red 
trademark, if it bears a sign id entical or similar to that mark  and -
(a) it is used for labelling or packaging goods, as a 
14 [CAP. 597. TRADEMARKS
business paper, or for advertisin g 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 trademar k, 
means articles -
(a) which are specifically designed or adapted for 
making copies of a sign identical or similar to that trademark;  
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.23. (1) An application for an order under article 24 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 t he goods or their packaging;
(b) in the case of infringing material, the date on 
which the trademark was ap plied to the material; or
(c) in the case of infringing articles, the date on 
which they were made,
except as provided in the  following sub-article.
(2) If during the whole or part of that period the proprietor o f 
the registered trademark is prev ented by fraud or concealment f rom 
discovering the facts entitling him to apply for an order, an a pplication 
may be made at any time before the end of the period of six yea rs from 
the date on which he could with reasonable diligence have disco vered 
those facts.
Order as to 
disposal of 
infringing goods, material or articles.24. (1) Where infringing goods, material or articles have 
been delivered up in pursuance of an order under article 21, an  action 
by sworn application may be brought before the Court by any par ty 
interested -
(a) for an order that they be destroyed or forfeited in 
favour of 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 wheth er 
other remedies available in an action for infringement of the r egistered 
trademark would be adequate to compensate the proprietor and an y 
      
TRADEMARKS [CAP. 597. 15
licensee to protect their interests.
(3) The Court shall order the service of the sworn application 
on persons having an interest in  the goods, material or article s, and any 
person having an intere st shall be entitled -
(a) to appear in proceedings for an order under this 
article, whether or not he wa s 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 tak e 
effect until the end of the period within which an appeal may b e 
filed or, if before the end of that period an appeal is so file d, 
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 sh all make such or der as it thi nks fit.
(5) If the Court decides that no order should have been made 
under article 21, the person in whose possession, custody or co ntrol 
the goods, material or articles were before being delivered up,  is 
obliged towards their return.
Remedy for 
groundless threats of infringement 
proceedings.25. (1) Where a person threatens another with proceedings 
for infringement of a registered trademark other than-
(a) use of the mark on goo ds 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 ser vices under the mark,
any person aggrieved may bring p roceedings for relief under thi s 
article by sworn application befo re 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  
16 [CAP. 597. TRADEMARKS
proceedings were threatened con stitute or would  constitute an 
infringement of the registered trademark, the plaintiff shall nevertheless be entitled to relie f if he shows that the registr ation of the 
trademark is invalid or liable to be revoked.
(4) The mere notification that a trademark is registered, or th at 
an application for registration has been made, does not constit ute a 
threat of proceedings for th e purposes of this article.
Use of trademarks. 26. (1) If, within a period of five years following the date of 
the completion of the registrati on procedure, the proprietor ha s not put 
the trademark to genuine use in Malta in connection with the go ods or 
services in respect of which it is registered, or if such use h as been 
suspended during a continuous five-year period, the trademark s hall be 
subject to the limits and sanctions provided for in article 27,  article 
29(1), article 51(1) and (2), and article 53(3) and (4), unless  there are 
proper reasons for non-use.
(2) Subject to Malta becoming member to the Protocol relating 
to the Madrid Agreement concerni ng the International Registrati on of 
Marks adopted at Madrid on 27 June, 1989, the five-year period referred to in sub-article (1), fo r a trademark registered unde r 
international arrangements and ha ving effect in Malta, shall be  
calculated from the date when the trademark can no longer be re jected 
or opposed. Where an opposition ha s been lodged the period shal l be 
calculated from the date when a decision terminating the opposi tion 
proceedings became final or t he opposition was withdrawn.
(3) The date of commencement of the five-year period, as 
referred to in sub-article (1) s hall be entered in the register .
(4) The following shall also constitute use within the meaning 
of sub-article (1):
(a) use of the trademark in a form differing in 
elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trademark in the form as used is also registered in the name of the proprietor;
(b) affixing of the trademark to goods or to the 
packaging thereof in Malta s olely for export purposes.
(5) Use of the trademark with the consent of the proprietor sha ll 
be deemed to constitute u se by the proprietor.
Non-use as defence 
in infringement 
proceedings.27. The proprietor of a trademark shall be entitled to prohibit 
the use of a sign only to the extent that the proprietor's righ ts are not 
liable to be revoked pursuant to article 29 at the time the inf ringement 
action is brought. If the defenda nt so requests, the proprietor  of the 
trademark shall furnish proof tha t, during the five-year period  
      
TRADEMARKS [CAP. 597. 17
preceding the date of bringing the action, the trademark has be en put 
to genuine use as provided in article 26 in connection with the  goods 
or services in respect of which it is registered and which are cited as 
justification for the action, or that there are proper reasons for non-use, 
provided that the registration procedure of the trademark has a t the 
date of bringing the ac tion been completed for not less than fi ve years.
Intervening right as 
defence in 
infringement proceedings.28. (1) In infringement proceedings, the proprietor of a 
trademark shall not be entitled t o prohibit the use of a later registered 
mark where that later trademark would not be declared invalid pursuant to article 10, article 1 1(1) or (2) or article 53(3).
(2) In infringement proceedings, the proprietor of a trademark 
shall not be entitled to prohibit the use of a later registered  EU 
trademark where that later trade mark would not be declared inva lid 
pursuant to Article 60(1), (3) or (4), 61(1) or (2) or 64(2) of Regulation 
(EU) No. 2017/1001 .
(3) Where the proprietor of a trademark is not entitled to 
prohibit the use of a later registered trademark pursuant to su b-article 
(1) or (2), the proprietor of that later registered trademark s hall not be 
entitled to prohibit the use of the earlier trademark in infrin gement 
proceedings, even though that earlier right may no longer be in voked 
against the later trademark.
Revocation of registe red trademark rights
Absence of 
genuine use as 
grounds for 
revocation.29. (1) A trademark shall be liable to revocation if, within a 
continuous five-year period, it has not been put to genuine use  in Malta, 
in connection with the goods or services in respect of which it  is 
registered, and there are no proper reasons for non-use.
(2) The registration of a trademark shall not be revoked on the  
grounds mentioned in sub-article (1) if such use as is referred  to in that 
sub-article is commenced or resu med after the expiry of the fiv e-year 
period and before the acti on for revocation is made:
Provided that, the commencement or resumption of use 
within the three-month period preceding the filing of the actio n shall 
be disregarded where preparati ons for the co mmencement or 
resumption occur only after the proprietor becomes aware that t he 
action may be filed.
Trademark having 
become generic or is a misleading 
indication as 
grounds for revocation.30. A trademark shall be liable to r evocation if, after the date o n 
which it was registered:
(a) as a result of acts or ina ctivity of the proprietor, it 
has become the common name in the trade for a product or 
service in respect of which it is registered;
(b) as a result of the use made of it by the proprietor 
of the trademark or with the proprietor's consent in respect of  
18 [CAP. 597. TRADEMARKS
the goods or services for which it is registered, it is liable to 
mislead the public, particularly as to the nature, quality or geographical origin of t hose goods or services.
Revocation 
relating to only some of the goods 
or services.31. Where grounds for revocation of a trademark exist in 
respect of only some of the goods  or services for which that tr ademark 
has been registered, revocation shall cover those goods or serv ices 
only.
Registered Trademarks as objects of property
Nature of a 
registered 
trademark.32. A registered trademark is the personal property of its owner.
Co-ownership of a 
registered 
trademark.33. (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 sub- article 
(1) or otherwise.
(3) Subject to any agreement to the contrary, each co-proprieto r 
is entitled, personally or through his agents, to do for his ow n benefit 
and without the consent of or the need to account to any other co-
proprietor, any act which would otherwise amount to an infringe ment 
of the registered trademark.
(4) Notwithstanding the provisions of sub-article (3) a co-
proprietor may not without the c onsent of the other or others -
(a) grant a licence to use th e 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 t he Court, 
proceed with the action unless th e 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 sub-article affects the making of any 
precautionary warrant on the app lication of a single co-proprie tor.
(6) Nothing in this article affects the rights and obligations of 
trustees or personal representat ives, or their rights and oblig ations as 
such.
      
TRADEMARKS [CAP. 597. 19
Transmission of a 
registered trademark.34. (1) A registered trademark is transmissible by 
assignment, testamentary disposition or operation of law in the  same 
way as other personal or moveable property.
Transfer of a 
registered 
trademark.(2) A registered trademark may be transferred, separately from 
any transfer of the undertaking,  in respect of some or all of t he goods 
or services for whic h it is registered.
(3) A transfer of the whole of the undertaking shall include th e 
transfer of the trademark except where there is agreement to th e 
contrary or circumstances clearly  dictate otherwise. This provi sion 
shall apply to the contractual obligation to transfer the under taking.
(4) 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, by a personal representative.
(5) Nothing in this Act shall be construed as affecting the 
assignment or other transmission of an unregistered trademark a s part 
of the goodwill of a business.
( 6 )  T h e  M i n i s t e r  m a y  m a k e  r e g u l a t i o n s  f o r  t h e  r e c o r d a l  o f  
transfers in the register.
Registration of 
transactions 
affecting a registered 
trademark.35. (1) On application being ma de 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 reg istrable transactions -
(a) an assignment of a registered trademark or any 
right in it;
( b ) t h e  g r a n t  o f  a  l i c e n c e  u n d e r  a  r e g i s t e r e d  
trademark;
(c) the transfer of a registered trademark by 
testamentary disposition;
(d) an order of a Court or other competent authority 
transferring a registered tradema rk or any right in or under it .
(3) Until an application has been made for registration of the 
prescribed particulars of a  registrable transaction -
20 [CAP. 597. TRADEMARKS
(a) the transaction is ineffective as against a person 
acquiring in good faith a conflicting interest in the registere d 
trademark, and
(b) a person claiming to be a licensee by virtue of the 
transaction shall not have the protection of article 41 or 42.
(4) Where a person becomes the proprietor or a licensee of a 
registered trademark by virtue o f a registrable transaction, he  shall not 
be entitled to damages or an acco unt of profits in respect of a ny 
infringement of the registered trademark occurring after the da te of the 
registrable transaction and before the prescribed particulars o f 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 w ith the date of the transaction ; 
or
(b) the Court is satisfied that it was not practicable 
for such an application to be ma de before the end of that perio d 
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 a lteration of the terms of the lic ence; 
and
(b) the removal of such par ticulars 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 th e 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 indi cated to the Comptroller;
(c) the amendment or removal from the register of 
particulars relating to a secur ity interest on the application of, 
or with the consent of, the person entitled to the benefit of t hat 
interest.
Application for 
registration of a trademark as an 
object of property.36. The provisions of article 32 to 35 apply mutatis mutandis in 
relation to an application for the registration of a trademark in the 
same manner in relation to a registered trademark.
      
TRADEMARKS [CAP. 597. 21
Rights in rem . 37. (1) A trademark may, independently of the undertaking, 
be given as security or be the subject of rights in rem .
( 2 )  T h e  M i n i s t e r  m a y  m a k e  r e g u l a t i o n s  f o r  t h e  r e c o r d a l  o f  a  
security or of rights in rem  in the register.
Levy of execution. 38.  (1) A trademark may be levied in execution.
(2) The Minister may make regulations for the recordal of levy 
of execution in the register. 
Licensing. 39. (1) A trademark may be licensed for some or all of the 
goods or services for which it is registered, and for the whole  or part of 
Malta. A licence may be ex clusive or non-exclusive.
(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 i n this Act to a licence or lic ensee 
include a sub-licence or sub-licensee. 
(4) The proprietor of a trademark may invoke the rights 
conferred by that trademark agai nst a licensee who contravenes any 
provision in his licensing contract with regard to: 
(a) its duration;
(b) the form covered by the registration in which the 
trademark may be used;
(c) the scope of the goods or services for which the 
licence is granted;
(d) the territory in which the trademark may be 
affixed; or
(e) the quality of the goods manufactured or of the 
services provided by the licensee.
(5) Without prejudice to the provisions of the licensing 
contract, the licensee may bri ng proceedings for infringement o f a 
trademark only if its proprietor  consents thereto. However, the  holder 
of an exclusive licence may bring such proceedings if the propr ietor of 
the trademark, after formal notice, does not himself bring infr ingement 
proceedings within an appropriate period.
(6) A licensee shall, for the purpose of obtaining compensation  
for damage suffered by him, be entitled to intervene in infring ement 
proceedings brought by the pr oprietor of the trademark.
22 [CAP. 597. TRADEMARKS
(7) The Minister may make regu lations for the recordal of 
licences in the register.
Exclusive licences. 40. (1) In this Act an "exclusive licence" means a licence 
(whether general or limited) authorising the licensee to the ex clusion 
of all other persons, including the person granting the licence , to use a 
registered trademark in the ma nner 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 agains t the 
person granting the licence.
General provisions 
as to the rights of 
licensees in case of 
infringement.41. (1) The provisions of this article shall apply with respect to 
the rights of a licensee in relat ion to infringement of a regis tered 
trademark:
Provided that they shall not apply where or to the extent 
that, in accordance with article 42(1) an exclusive licensee ha s a right 
to bring proceedings in his own name.
(2) A licensee is entitled, unles s his licence provides otherwi se, 
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 proceed ings in his own name as if he  were the 
proprietor.
(4) Where infringement proceed ings are brought by a licensee 
by virtue of this article, the pr oprietor shall be joined in th e 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 acco unt by the Court which shall give 
such directions as it thinks fit with regard to the disposal an d 
distribution of any sum awarded as a remedy for the infringemen t.
Exclusive licensee 
having right and 
remedies of 
assignee.42. ( 1 )  A n  e x c l u s i v e  l i c e n c e  m a y  p r o v i d e  t h a t  t h e  l i c e n s e e  
shall have, to such extent as may be provided by the licence, t he same 
rights and remedies in respect of matters occurring after the g rant 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 li cence and to 
the following provisions of this article, to bring infringement  
      
TRADEMARKS [CAP. 597. 23
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 propr ietor of the registered trade mark; 
and references in this Act to th e proprietor of a registered tr ademark 
relating to infringement sha ll be construed accordingly.
(3) In an action brought by an exclusive licensee under this 
article a defendant may avail himself of any defence which woul d have 
been available to him if the action had been brought by the pro prietor 
of the registered trademark.
(4) Where proceedings for infringement of a registered 
trademark are brought by the proprietor or by the exclusive lic ensee 
relating to an infringement in respect of which they have concu rrent 
right of action, the proprietor or, as the case may be, the exc lusive 
licensee who is not the plaintif f 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 licen see have concurrent right of a ction 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 t he Court considers just. 
(b) The provisions of this sub-article 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 conc urrent right of action before 
applying for an order under article 21; and the Court may on th e 
application of the licensee make such order under that article as it 
24 [CAP. 597. TRADEMARKS
thinks fit having regard to the terms of the licensee.
(7) The provisions of sub-articles (4) to (6) shall be without 
prejudice to any agreement to the  contrary between the exclusiv e 
licensee and the proprietor.
Applications for the regis tration of a trademark 
Application 
requirements.43. (1) An application for registration of a trademark shall 
contain at least all of the following: 
(a) a request for registration; 
(b) information identifying the applicant; 
(c) a list of the goods or services in respect of which 
the registration is requested;
(d) a representation of the trademark, which satisfies 
the requirements set out in sub- article (2)(b) of article 4. 
(2) The application for a trademark shall be subject to the 
payment of the prescribed fee.
Date of filing. 44. (1) The date of filing of a trademark application shall be 
the date on which the documents containing the information spec ified 
in article 43(1) are filed with  the Office by the applicant. 
(2) The accordance of the date of filing is to be subject to th e 
payment of a fee as refe rred to in article 43(2):
Provided that where the elements are furnished on different 
days, the date of fili ng shall be the date on which the last el ement is so 
furnished.
(3) References in this Act to the date of application for 
registration shall be construed as a reference to the date of f iling of the 
application.
Designation and 
classification of 
goods and services.45. (1) The goods and services in respect of which 
trademark registration is applied for shall be classified in co nformity 
with the system of classificatio n established by the Nice Agree ment 
Concerning the International Classification of Goods and Servic es for 
the Purposes of the Registration of Marks of 15 June 1957 ("the  Nice 
Classification").
(2) The goods and services for which protection is sought shall  
be identified by the applicant with sufficient clarity and prec ision to 
enable the competent authorities and economic operators, on tha t sole 
basis, to determine the extent of the protection sought. 
(3) For the purposes of sub-article (2), the general indication s 
included in the class headings o f the Nice Classification or ot her 
      
TRADEMARKS [CAP. 597. 25
general terms may be used, provi ded that they comply with the 
requisite standards of clarity a nd precision set out in this ar ticle.
(4) The Office shall reject an application in respect of 
indications or terms which are un clear or imprecise, where the 
applicant does not suggest an acceptable wording within a perio d set 
by the Office to that effect. 
(5) The use of general terms, including the general indications  
of the class headings of the Nice  Classification, shall be inte rpreted as 
including all the goods or serv ices clearly covered by the lite ral 
meaning of the indication or term. The use of such terms or ind ications 
shall not be interpreted as com prising a claim to goods or serv ices 
which cannot be so understood.
(6) Where the applicant requests registration for more than one  
class, the applicant shall gr oup the goods and services accordi ng to the 
classes of the Nice Classification, each group being preceded b y the 
number of the class to which that group of goods or services be longs, 
and shall present them in the order of the classes. 
(7) Goods and services shall not b e regarded as being similar t o 
each other on the ground that they appear in the same class und er the 
Nice Classification. Goods and se rvices shall not be regarded a s being 
dissimilar from each other on the ground that they appear in di fferent 
classes under the Ni ce Classification.
(8) 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.46. (1) A person who has duly filed an application for 
protection of a trademark in a co untry which is a member of the  World 
Trade Organisation or a party to the Paris Convention, hereinaf ter in 
this Act referred to as a "Convention application", or his succ essor 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 se rvices 
for which such an application has been filed, for a period of s ix months 
from the date of filing of t he 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 
26 [CAP. 597. TRADEMARKS
the World Trade Organisation or is a party to the Paris Convent ion is 
made under its legislation or any international agreement to wh ich 
such country is a party, treated as if it were a regular nation al filing, 
shall be treated as giving ri se to the right of priority.
(b) For the purposes of this s ub-article "regular national 
filing" means a filing which is adequate to establish the date on which 
the application was filed in tha t 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 t he 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 leavin g 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 cla iming 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 appli cation.
(6) A right to priority arising as a result of a Convention 
application may be assigned or otherwise transmitted, either wi th the 
application or independently.
Claim to priority 
from other relevant 
overseas 
application.47. (1) The Minister may make regulations conferring on a 
person who has duly filed an application for protection of a tr ademark 
in a country or territory in relation to which the Maltese Gove rnment is 
a party to a treaty, convention, a rrangement or engagement for the 
reciprocal protection of trademarks, a right to priority, for t he purpose 
of registering the same trademark under this Act for any or all  of the 
same goods or services, for such a period as may be specified i n the 
application from the date of filing of that application.
(2) Such regulations may make provisions similar to those 
contained in article 46 in relation to Convention applications or such 
other provision as appears to the  Minister to be appropriate.
Examination of 
application.48. (1) The Comptroller shall examine whether an 
application for registration of a  trademark satisfies the requi rements of 
this Act:
Provided that the Minister may prescribe regulations as to 
whether such examination shall include ex officio  relative grounds 
examination.
      
TRADEMARKS [CAP. 597. 27
(2) If it appears to the Comptroller that the requirements for 
registration are not met, he shall inform the applicant and giv e 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 thos e 
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 re fuse the application.
(4) If it appears to the Comptroller that the requirements for 
registration are met, he shall a ccept the applic ation as eligib le for 
registration.
Withdrawal, 
restriction or amendment of 
application.49. (1) The applicant may at any time withdraw his 
application or restrict the goods or services covered by the ap plication.
(2) Save as provided in sub-article (1), an application may be 
amended, at the request of the a pplicant, only by correcting -
(a) the name or addres s 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.
Opposition 
procedure.50. (1) The proprietor of an earlier trademark as referred to 
in article 6(2) and article 6(3)(a), and the person authorised under the 
relevant law to exercise the ri ghts arising from a protected de signation 
of origin or geographical indica tion as referred to in article 6(3)(c) 
shall be entitled to file a notice of opposition to the registr ation of a 
trademark before the Comptroller. A notice of opposition may be  filed 
on the basis of one or more ear lier rights, provided that they all belong 
to the same proprietor, and on t he basis of part or the totalit y of the 
goods or services in respect of which the earlier right is prot ected or 
applied for, and may be directed against part or the totality o f the 
goods or services in respect of which the contested mark is app lied for.
(2) The parties shall be granted, at their joint request, a per iod 
of up to 90 working days from the date of the notification by t he Office 
of the opposition to the applicant in order to allow for the po ssibility of 
a friendly settlement between the  opposing party and the applic ant.
(3) The Minister may make regulations in respect of all aspects  
relevant to the opposition procedure.
Non-use as defence 
in opposition proceedings.51. (1) In opposition proceedings pursuant to article 50, 
where at the filing date or date of priority of the later trade mark, the 
five-year period within which the earlier trademark must have b een 
28 [CAP. 597. TRADEMARKS
put to genuine use as provided for in article 26 had expired, a t the 
request of the applicant, the proprietor of the earlier tradema rk who 
has given notice of opposition shall furnish proof that the ear lier 
trademark has been put to genuine use as provided for in articl e 26 
during the five-year period prece ding the filing date or date o f priority 
of the later trademark, or tha t proper reasons for non-use exis ted. In 
the absence of proof to this eff ect, the opposition shall be re jected.
(2) If the earlier trademark has been used in relation to only part 
of the goods or services for which  it is registered, it shall, for the 
purpose of the examination of the opposition as provided for in  sub-
article (1), be deemed to be reg istered in respect of that part  of the 
goods or services only.
(3) Sub-articles (1) and (2) shall also apply where the earlier  
trademark is an EU trademark. In such a case, the genuine use o f the 
EU trademark shall be determined in accordance with Article 18 of 
Regulation (EU) No. 2017/1001 .
Procedure for 
revocation or 
declaration of 
invalidity.52. (1) Without prejudice to the right of the parties to seek 
recourse to the courts, the revocation or declaration of invali dity of a 
registered trademark may be brought before the Comptroller as provided for under this Act or by sworn application to be filed  in the 
First Hall of t he Civil Court:
Provided that invalid ity and revocation p roceedings may only 
be initiated before the Comptroller as from 14th January 2023 o r any 
date before as may be pres cribed by the Minister.
(2) An action for revocation of a r egistered trademark shall be 
brought on any one or more of the grounds provided for in artic les 29 
and 30 .
(3) An action for declaration of invalidity of a registered 
trademark shall be brought on:
(a) any one or more of the grounds provided for in 
article 5; and, or
(b) any one or more of the grounds provided for in 
article 6:
Provided that it shall only be possible to bring an action for 
declaration of invalidity of a registered trademark before the Comptroller on any one or more of the grounds of article 5 and article 
6(1) to (3).
(4) An action for revocation or  for a declaration of invalidity  of 
a registered trademark before the Comptroller may only be filed:
(a) in the case of sub-articles (2) and (3)(a), by any 
natural or legal person and any group or body set up for the 
      
TRADEMARKS [CAP. 597. 29
purpose of representing the interests of manufacturers, 
producers, suppliers of servi ces, traders or consumers, and 
which, under the terms of the law  governing it, has the capacit y 
to sue in its own name and to be sued;
(b) in the case of sub-article (3)(b), by the proprietor 
of an earlier trademark as referr ed to in article 6(2) and arti cle 
6(3)(a), and the person authorised under the relevant law to 
exercise the rights arising from  a protected designation of ori gin 
or geographical indication as ref erred to in article 6(3)(c).
(5) An action for revocation or for a declaration of invalidity  
may be directed against a part or the totality of the goods or services in 
respect of which the contested mark is registered.
(6) An action for a declaration of invalidity may be filed on t he 
basis of one or more earlier rights, provided they all belong t o the 
same proprietor.
(7) If an action for invalidity or revocation has been brought 
before the Comptroller, it shall not be possible to file for an  action on 
the same grounds before the First Hall of the Civil Court after the 
proceedings before the Comp troller have been concluded :
Provided that, when a person brings an action for invalidity 
or revocation before the Comptroller , at any stage before the 
proceedings  are concluded,  that person may bring an action for 
invalidity or revocation on the same grounds before the First Hall of 
the Civil Court as a result of which the proceedings before the 
Comptroller will discontinue:
Provided further that if an action for invalidity or revocation  
has been brought before the Firs t Hall of the Civil Court, it s hall not be 
possible to file for an action on the same grounds before the Comptroller.
Non-use as a 
defence in 
proceedings 
seeking a 
declaration of invalidity.53. ( 1 )  I n  p r o c e e d i n g s  f o r  a  d e c l a r a t i o n  o f  i n v a l i d i t y  b a s e d  
on a registered trademark with an earlier filing date or priori ty date, if 
the proprietor of the later trade mark so requests, the propriet or of the 
earlier trademark shall furnish proof that, during the five-yea r period 
preceding the date of the action for a declaration of invalidit y, the 
earlier trademark has been put to genuine use, as provided for in article 
26, in connection with the goods or services in respect of whic h it is 
registered and which are cited a s justification for the action,  or that 
there are proper reasons for non-use, provided that the registr ation 
process of the earlier trademark has at the date of the action for a 
declaration of invalidity been com pleted for not less than five  years.
(2) Where, at the filing date or date of priority of the later 
trademark, the five-year period within which the earlier tradem ark was 
to have been put to ge nuine use, as provided  for in article 26,  had 
30 [CAP. 597. TRADEMARKS
expired, the proprietor of the e arlier trademark shall, in addi tion to the 
proof required under sub-article (1), furnish proof that the tr ademark 
was put to genuine use during th e five-year period preceding th e filing 
date or date of priority, or tha t proper reasons for non-use ex isted.
(3) In the absence of the proof referred to in sub-articles (1)  and 
(2), an action for a declaration of invalidity on the basis of an earlier 
trademark shall be rejected.
(4) If the earlier trademark has been used in accordance with 
article 26 in relation to only part of the goods or services fo r which it is 
registered, it shall, for the purpose of the examination of the  action for 
a declaration of invalidity, be deemed to be registered in resp ect of that 
part of the goods o r services only.
(5) Sub-articles (1) to (4) shall also apply where the earlier 
trademark is an EU trademark. In  such a case, genuine use of th e EU 
trademark shall be determined in accordance with Article 18 of 
Regulation (EU) No. 2017/1001 .
Consequences of 
revocation and invalidity.54. (1) A registered trademark shall be deemed not to have 
had, as from the date of the ac tion for revocation, the effects  specified 
in this Act, to the extent that the rights of the proprietor ha ve been 
revoked. An earlier date, on which one of the grounds for revoc ation 
occurred, may be fixed in the d ecision on the action for revoca tion, at 
the request of one of the parties.
(2) A registered trademark shall be deemed not to have had, as 
from the outset, the effects speci fied in this Act, to the exte nt that the 
trademark has been declared invalid.
Communications 
with the 
Comptroller.55. Parties to the proceedings or, where appointed, their 
representatives, shall designate an official address for all of ficial 
communications with the Comptroller and shall have an official address to be situated in the European Economic Area.
Registration. 56. (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 a fter he 
accepted the application, tha t it was accepted in error. 
(2) A trademark shall not be regi stered and the application sha ll 
be deemed to be withdrawn unless any fee prescribed in respect of any 
action taken before the registration is paid within the prescri bed 
period.
(3) A trademark when registered shall be registered as of the 
date of filing of the application for registration, and that da te shall be 
deemed for the purposes of this A ct to be the date of registrat ion.
( 4 )  O n  t h e  r e g i s t r a t i o n  o f  a  t rademark the Comptroller shall 
publish the registration in the prescribed manner and issue to the 
      
TRADEMARKS [CAP. 597. 31
applicant a certific ate of registration:
Provided that when an opposition has been received within 
the prescribed time the Comptroller shall only publish such registration in the event the  said opposition has been rejected :
Provided further that if more than one opposition has been 
received and one or more oppositions have been accepted, such publication shall not take place.
(5) Notwithstanding sub-article (4) above the Comptroller shall  
publish the registration of a trademark where an agreement has been 
reached following an opposition that there shall be an amendmen t to 
the goods or services in respect of which the trademark applied  for is 
to be registered: 
Provided that such registrati on shall take place only when 
such amendment has been eff ected by the applicant. 
Duration of 
registration.57. (1) A trademark shall be registered for a period of 10 
years from the date of f iling of the application.
(2) Registration may be renewed in accordance with article 58 
for further 10-year periods.
Renewal. 58. (1) Registration of a trademark shall be renewed at the 
request of the proprietor of the trademark or of any person aut horised 
to do so by law or by contract, provided that the renewal fees have 
been paid not earlier than six m onths before the date of expiry .
(2) The Comptroller shall inform the proprietor of the 
trademark of the expiry of the registration at least six months  before 
the said expiry. The Comptroller shall not be held liable for f ailure to 
give such information.
(3) The request for renewal shall be submitted and the renewal 
fees shall be paid within a period of not more than six months immediately preceding the expiry of the registration or of the subsequent renewal thereof. Fa iling that, the request may be su bmitted 
within a further period of six months immediately following the  expiry 
of the registration or of the su bsequent renewal thereof. The r enewal 
fees and an additional fee shall be paid within that further pe riod.
 (4) Renewal shall take effect from the day following the date on 
which the existing registration expires. The renewal shall be r ecorded 
in the register.
(5) If the registration is not renewed in accordance with the 
above provisions, the Comptroller shall remove the trademark fr om 
the register.
(6) Provision may be made by rules for the restoration of the 
32 [CAP. 597. TRADEMARKS
registration of a trademark which has been removed from the reg ister, 
subject to such conditions (if  any) as may be prescribed.
(7) The renewal or restoration of  the registration of a tradema rk 
shall be published in t he prescribed manner.
Alteration of a 
registered 
trademark.59. (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 wher e the 
mark includes the proprietor’s name or address and the alterati on 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 clai ming to 
be affected by it.
Surrender of a 
registered 
trademark.60.  (1) A registered trademark may be surrendered by the 
proprietor in respect of any or all of the goods or services fo r 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.
Definitions of 
certification marks and collective 
marks.61. For the purposes of this Act, the following definitions apply:
 (a) "certification mark" means a trademark which is 
described as such when the mark is applied for and is capable o f 
distinguishing goods or services which are certified by the proprietor of the mark in res pect of material, mode of 
manufacture of goods or performance of services, quality, accuracy or other characteris tics, from goods and services 
which are not so certified;
(b) "collective mark" means a trademark which is 
described as such when the mark is applied for and is capable o f 
distinguishing the goods or services of members of an association which is the proprietor of the mark from the goods or services of other undertakings.
General 
disposition.62. The provisions of this Act apply to certification marks 
subject to the following provisions which may, by regulations, be 
amended by the Minister.
Signs of which a 
certification mark 
may consist.63. In relation to a certification mark the reference in the 
definition of "trademark" in article 4 (2)(a) to distinguishing  goods or 
      
TRADEMARKS [CAP. 597. 33
services of one undertaking from those of other undertakings sh all be 
construed as a reference to distinguishing goods or services wh ich are 
certified from those which are not.
Certification 
marks.64. (1) Any natural or legal person, including institutions, 
authorities and bodies governed by public law, may apply for certification marks pr ovided that such person does not carry on  a 
business involving the supply of goods or services of the kind certified.
Indication of 
geographical origin.(2) Signs or indications which may serve, in trade, to designat e 
the geographical origin of the goods or services may constitute  
certification marks. Such a certification mark shall not entitl e the 
proprietor to prohibit a third party from using in the course o f trade 
such signs or indications, provided that third party uses them in 
accordance with honest practices  in industrial or commercial ma tters. 
In particular, such a mark may not  be invoked against a third p arty 
who is entitled to use a  geographical name.
(3) The requirements laid down in article 26 shall be satisfied  
where genuine use of a certification mark in accordance with ar ticle 26 
is made by any person who ha s the authority to use it.
Nature of 
proprietor’s 
business.65. A certification mark shall not be registered if the proprietor 
carries on a business involving the supply of goods or services  of the 
kind certified.
Mark not to be 
misleading as to 
character or significance.66. (1) A certification mark shall not be registered if the 
public is liable to be misled as regards the character or signi ficance of 
the mark, in particular if it is likely to be taken to be somet hing other 
than a certification mark.
(2) The Comptroller may accordingly require that a mark in 
respect of which application is made for registration includes some 
indication that it is a certification mark, and notwithstanding  the 
provisions of article 49(2), an application may be amended so a s to 
comply with any such requirement.
Regulations 
governing use of certification mark.67. An applicant for registration of a certification mark must 
file with the Comptroller regulations governing the use of the mark 
specifying the person authorised to use the mark, the character istics to 
be certified by the mark, how the certifying body is to test th ose 
characteristics and to supervise the use of the mark, the fees (if any) to 
be paid in connection with the operation of the mark and the 
procedures for resolving disputes and any further requirements with 
which the regulations have to comply as may be established by a ny 
rule made by the Minister.
Approval of 
regulations, etc.68. (1) A certification mark sha ll not be registered unless -
(a) the regulations governi ng the use of the mark -
34 [CAP. 597. TRADEMARKS
(i) comply with article 67 and any further 
requirements imposed by rules; and
(ii) are not contrary to public policy or to 
accepted principles of morality; and
(b) the applicant is competent to certify the goods or 
services for which the m ark is to be registered.
(2) The application shall be deemed to be withdrawn if before 
the end of any period as may be prescribed after the date of th e 
application for registration of a certification mark, the appli cant fails 
to file the regulations with the  Comptroller and pay the prescr ibed fee.
Requirements. 69. (1) The Comptroller shall consider whether the 
requirements mentioned in  article 68(1) are met.
(2) If it appears to the Comptro ller that those requirements ar e 
not met, he shall inform the applicant and give him an opportun ity, 
within such period as the Comptroller may specify, to make representations or to f ile amended regulations.
(3) If the applicant fails to satisfy the Comptroller that those  
requirements are met, or to file regulations amended so as to m eet 
them, or fails to respond before the end of the specified perio d, the 
Comptroller shall refuse the application.
(4) If it appears to the Comptroller that those requirements, a nd 
the requirements for registration are met, he shall accept the application and shall proceed in accordance with article 56.
Regulations to be 
open to inspection. 70. The regulations governing the use of a registered 
certification mark shall be open to public inspection in the sa me way 
as the register.
Amendment of 
regulations.71. A n  a m e n d m e n t  o f  t h e  r e g u l a t i o n s  g o v e r n i n g  t h e  u s e  o f  a  
registered collective mark is not effective unless and until th e amended 
regulations are filed with the C omptroller and accepted by him.
Consent to 
assignment of 
registered certification mark.72. The assignment or other transmission of a registered 
certification mark is not effect ive without the consent of the 
Comptroller.
Infringement: right 
of authorised users73. The provisions of sub-article (7) of article 12 and of sub-
article (2) of article 24 apply in relation to an authorized us er of a 
registered certificate mark as in  relation to a licensee of a t rademark.
Infringement 
proceedings.74. In infringement proceedings brought by the proprietor of a 
registered certification mark, any loss suffered or likely to b e suffered 
by authorised users shall be taken into account by the Court wh ich 
shall give such directions as it thinks fit with regard to the disposal and 
distribution of any sum awarded as a remedy for infringement.
      
TRADEMARKS [CAP. 597. 35
Grounds for 
revocation of registration – 
certification mark.75. Apart from the grounds of revocation provided for in article 
29, the registration of a cert ification mark may be revoked on any of 
the following grounds:
(a) that the proprietor has begun to carry out such a 
business in contrave ntion of article 65;
(b) that the manner in which the mark has been used 
by the proprietor has caused it to become liable to mislead the  
public in the manner referred to in article 66(1);
(c) that the proprietor has failed to observe, or to 
secure the observance of the re gulations governing the use of 
the mark;
(d) that an amendment of the regulations has been 
made so that the regulations -
(i) no longer comply with article 67; or(ii) are contrary to public policy or to accepted 
principles of morality;
(e) that the proprietor is no longer competent to 
certify the goods or services for  which the mark is registered.
Grounds for 
invalidity of 
registration - 
certification marks.76. Apart from the grounds of invalidity provided for in articles 
5 and 6, the registration of a certification mark may be declar ed invalid 
on the grounds that the mark was registered in breach of the pr ovisions 
of articles 65, 66(1) or 68(1).
General 
dispositions– 
collective marks.77. The provisions of this Act apply to collective marks subject 
to the following provisions, which may, by regulations, be amen ded by 
the Minister.
Signs of which a 
collective mark may consist.
 78. In relation to a collective mark the reference in the 
definition of "trademark" in article 4(2)(a) to distinguishing goods or 
services of one undertaking from those of other undertakings sh all be 
construed as a reference to distinguishing goods or services of  
members of the association which is the proprietor of the mark from 
those of other undertakings.
Capacity of 
Associations to 
accomplish legal acts – Collective 
Marks.79. (1) Associations of manufactu rers, producers, suppliers of 
services or traders, which, under the terms of the law governin g them, 
have the capacity in their own name to have rights and obligati ons, to 
make contracts or accomplish other legal acts, and to sue and b e sued, 
as well as legal persons governed by public law, may apply for collective marks.
(2) Signs or indications which may serve, in trade, to designat e 
the geographical origin of the goods or services may constitute  
collective marks. Such a collec tive mark shall not entitle the proprietor 
36 [CAP. 597. TRADEMARKS
to prohibit a third party from using, in the course of trade, s uch signs 
or indications, provided that th ird party uses them in accordan ce with 
honest practices in industrial or  commercial matters. In partic ular, such 
a mark may not be invoked against a third party who is entitled  to use 
a geographical name.
Collective mark 
not to be misleading as to 
character or 
significance.80. (1) A collective mark shall not  be registered if the public 
is liable to be misled as regards  the character or significance  of the 
mark, in particular if it is likely to be construed as somethin g other 
than a collective mark.
(2) The Comptroller may accordingly require that a mark in 
respect of which application is made for registration includes some 
indication that it is a collective mark; and notwithstanding th e 
provisions of article 49(2), an a pplication may be amended so a s to 
comply with any such requirement.
Regulations 
governing use of a 
collective mark.81. (1) An applicant for a collective mark shall submit the 
regulations governing its use to the Comptroller.
(2) The regulations governing us e shall specify at least the 
persons authorised to use the mark, the conditions of membershi p of 
the association and the conditions  of use of the mark, includin g 
sanctions. The regulations gover ning use of a mark referred to in 
article 79(1) shall authorise an y person whose goods or service s 
originate in the geographical ar ea concerned to become a member  of 
the association which is the proprietor of the mark, provided t hat the 
person fulfils all the other c onditions of the regulations.
Approval of 
regulations by 
Comptroller.82. (1) A collective mark shall not be registered unless the 
regulations governing th e use of the mark -
(a) comply with article 81(2) and any further 
requirements imposed by rules; and
(b) are not contrary to public policy or to accepted 
principles of morality.
(2) The application shall be deemed to be withdrawn if before 
the end of any period as may be prescribed after the date of th e 
application for registration of a  collective mark, the applican t fails to 
file the regulations with the Com ptroller and pay the prescribe d fee.
Comptroller to 
consider requirements.83. (1) The Comptroller shall consider whether the 
requirements mentioned in  article 82(1) are met.
(2) If it appears to the Comptro ller that those requirements ar e 
not met, he shall inform the applicant and give him an opportun ity, 
within such period as the Comptroller may specify, to make representations or to f ile amended regulations.
(3) If the applicant fails to satisfy the Comptroller that thos e 
      
TRADEMARKS [CAP. 597. 37
requirements are met, or to file  regulations amended so as to m eet 
them, or fails to respond before  the end of the specified perio d, the 
Comptroller shall re fuse the application.
(4) If it appears to the Comptroller that those requirements, a nd 
the other requirements for regis tration, are met, he shall acce pt the 
application and sha ll proceed in accordance with article 56.
Regulations to be 
open to inspection.84. The regulations governing the use of a registered collective 
mark shall be open to public inspe ction in the same way as the register.
Refusal of an 
application for a 
collective mark.85. (1) In addition to the grounds for refusal of a trademark 
application provided for in article 5, where appropriate with t he 
exception of article 5(1)(c) concerning signs or indications wh ich may 
serve, in trade, to designate the geographical origin of the go ods or 
services, and article 6, and without prejudice to the right of the Office 
not to undertake examination ex officio  of relative grounds, an 
application for a collective mark shall be refused where the pr ovisions 
of article 61(b), article 79 or a rticle 81 are not satisfied, o r where the 
regulations governing use of tha t collective mark are contrary to public 
policy or to accepted principles of morality.
(2) An application for a collective mark shall also be refused if 
the public is liable to be misled as regards the character or t he 
significance of the mark, in particular if it is likely to be t aken to be 
something other than a collective mark.
(3) An application shall not be refused if the applicant, as a 
result of amendment of the regulations governing use of the col lective 
mark, meets the requirements refe rred to in sub-articles (1) an d (2).
Use of collective 
marks.86. The requirements of article 26 shall be satisfied where 
genuine use of a collective mark  in accordance with that articl e is 
made by any person who has authority to use it.
Amendments to the 
regulations governing use of a 
collective mark.87. (1) The proprietor of a collective mark shall submit to 
the Comptroller any amended regulations governing use.
(2) Amendments to the regulations governing use shall be 
mentioned in the register unless the amended regulations do not  satisfy 
the requirements of article 81 or involve one of the grounds fo r refusal 
referred to in article 85.
(3) For the purposes of this Act, amendments to the regulations  
governing use shall take effect only from the date of entry of the 
mention of those amendments in the register.
Persons entitled to 
bring an action for infringement.88. (1) Article 39(5) and (6) shall apply to every person who has 
the authority to use a collective mark.
(2) The proprietor of a collec tive mark shall be entitled to cl aim 
compensation on behalf of persons who have authority to use the  
38 [CAP. 597. TRADEMARKS
collective mark where those person s have sustained damage as a result 
of unauthorised use of the collective mark.
Additional grounds 
for revocation – collective marks. 89. In addition to the grounds for the revocation provided for in 
articles 29 and 30, the rights of the proprietor of a collectiv e mark shall 
be revoked on any of the following grounds :
(a) the proprietor does not take reasonable steps to 
prevent the mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use, including any ame ndments thereto mentioned in 
the register; 
(b) the manner in which the mark has been used by 
authorised persons has caused it to become liable to mislead th e 
public in the manner refe rred to in article 85(2);
(c) an amendment to the regulations governing use of 
the mark has been mentioned in the register in breach of articl e 
87(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that article.
Additional grounds 
for invalidity.90.  In addition to the grounds for invalidity provided for in 
article 5, where appropriate with the exception of article 5(1) (c) 
concerning signs or indications which may serve, in trade, to d esignate 
the geographical origin of the goods or services, and article 6 , a 
collective mark which is registered in breach of article 85 sha ll be 
declared invalid unless the proprietor of the mark, by amending  the 
regulations governing use, complies with the requirements of ar ticle 
85.
PART III  - ADMINISTRATIVE AND OTHER 
SUPPLEMENTARY PROVISIONS
Maintenance and 
content of register.91. (1) (a) The Comptroller shall maintain a register of 
trademarks.
(b) References in this Act to "the register" are to 
that register; and references to registration, in particular, i n the 
expression "registered trademark ", are, unless the context othe rwise 
requires, to registration in that register.
(2) There shall be entered in th e register in accordance with t his 
Act -
(a) registered trademarks;
(b) such particulars as may be prescribed of 
registrable transactions affectin g a registered trademark; and
(c) such other matters relating to registered 
      
TRADEMARKS [CAP. 597. 39
trademarks as may be prescribed.
(3) The register shall be kept in such manner as may be 
prescribed, and provision sha ll in particular be made for -
(a) public inspection of the register; and
(b) the supply of certified or uncertified copies, or 
extracts, of entries in the register.
Rectification or 
correction of the 
register.92. (1) Any person having a sufficient interest may apply for 
the rectification of an error or omission in the register:
Provided that an application for rectification may not be 
made in respect of a matter affecting the validity of the regis tration of 
a trademark.
(2) An application for rectification may be made either to the 
Comptroller or to the Court:
Provided that if proceedings concerning the trademarks in 
question are pending before the Court -
(a) the application must b e made to the Court; and
(b) if the application is made to the Comptroller, he 
may at any stage of the proceeding s refer the application to th e 
Court.
(3) Except where the Comptroller or the Court directs otherwise  
the effect of rectification of the register is that the error o r omission in 
question shall be deemed never to have been made.
(4) The Comptroller may, on request made in the prescribed 
manner by the proprietor of a reg istered trademark, or a licens ee, enter 
any change in his name or addres s as recorded in the register.
(5) The Comptroller may remove from the register any matter 
appearing to him to have ceased to have effect.
(6) The applicant or proprietor may divide a national trademark  
application or registration into  two or more sep arate applicati ons or 
registrations by sending a declaration to the Office and indica ting for 
each divisional application or registration the goods or servic es 
covered by the original application or registration which are t o be 
covered by the divisional app lications or registrations.
Adaptation of 
entries to new 
classification.93. (1) The Minister may by regulations make rules 
empowering the Comptroller to do such things as may be necessar y to 
implement any amended or substitu ted classification of goods or  
services for the purposes of the registration of trademarks, an d without 
prejudice to the generality of the aforesaid provision may in p articular 
40 [CAP. 597. TRADEMARKS
be made for the amendment of existing entries on the register s o as to 
accord with the new classification.
(2) Any such power of amendment shall not be exercised so as 
to extend the rights conferred by the registration, except wher e it 
appears to the Comptroller that compliance with this requiremen t 
would involve undue complexity and that any extension would not  be 
substantial and would not advers ely affect the right of any per son.
(3) The rules may moreover empower the Comptroller -
(a) to require the proprietor of a registered 
trademark, within such time as may be prescribed, to file a proposal for amendment of the register; and
(b) to cancel or refuse to re new the registration of the 
trademark in the event of his failing to do so.
(4) Any such proposal shall be a dvertised, and may be opposed, 
in such manner as may be prescribed.
Power to require 
use forms.94. The Comptroller may require the use of such forms as he 
may direct for any purpose relating to the registration of a tr ademark 
or any other proceeding be fore him under this Act.
Information about 
applications and registered 
trademarks.95. (1) Subject to such restrictions as the Minister may by 
regulations impose after publica tion of the registration of a t rademark, 
the Comptroller shall on request provide a person with such information and permit him to ins pect such documents relating t o the 
registered trademark, as may b e specified in the request.
Any such request must be made in such manner and be 
accompanied by such fee as may be prescribed.
(2) Before publication of registration of a trademark, 
documents or information constituting or relating to the applic ation 
shall not be published by the Comptroller or communicated by hi m to 
any person except -
(a) in such cases and to such extent as may be 
prescribed; or
(b) with the consent of the applicant.
Exclusion of 
liability in respect 
of official acts.96. (1) The Comptroller shall not be taken to warrant the 
validity of the registration of a trademark under this Act or u nder any 
treaty, convention, arrangement or engagement to which Malta is  a 
party.
(2) The Comptroller is not subject to any liability by reason o f, 
or in connection with, any examin ation required or authorised b y this 
Act, or any such treaty, convention, arrangement or engagement,  or 
      
TRADEMARKS [CAP. 597. 41
any report or other proceedings  consequent on such examination.
(3) No action shall lie against an Officer of the Comptroller i n 
respect of any matter for which, by virtue of this article, the  
Comptroller is not liable.
Registration to be 
prima facie 
evidence of 
validity.97. In all legal proceedings relating to a registered trademark 
(including proceedings for rectif ication of the register) the r egistration 
of a person as proprietor of a trademark shall be prima facie  evidence 
of the validity of the original registration and of any subsequ ent 
assignment or other transmission of it.
Certification of 
validity of 
contested registration.98. (1) If in proceedings before the Court the validity of the 
registration of a trademark is contested and it is found by the  Court 
that the trademark is validly reg istered, the Court shall give judgement 
accordingly.
(2) Where the Court has given such a judgement and in 
subsequent proceedings –
(a) the validity of the registration is again 
questioned; and
(b) the proprietor obtains a final order or judgement 
in his favour, 
the proprietor shall be entitled  to his costs unless the Court directs 
otherwise.
Comptroller’s 
appearance in proceedings 
involving the 
register.99. (1) In proceedings before the Court involving a demand 
for-
(a) the revocation of the reg istration of a trademark;
(b) a declaration of the invalidity of the registration 
of a trademark; or
(c) the rectification of the register, 
the Comptroller shall be notifie d with the proceedings and shal l be 
entitled to appear and to be heard if so directed by the Court.
(2) Unless otherwise directed by the Court, the Comptroller 
may, instead of appearing, file in the record of the case a sta tement in 
writing signed by him, giving particulars of -
(a) any proceedings before him in relation to the 
matter in issue;
(b) the grounds of any decision given by him 
affecting it;
(c) the practice of the O ffice in like cases; or
42 [CAP. 597. TRADEMARKS
(d) such matters relevant to the issues and within his 
knowledge as Comptrolle r as he thinks fit, 
and the statement shall be deemed to form part of the evidence in the 
proceedings.
Appeals from the 
Comptroller’s 
decision.
Cap. 12.100. (1) Any decision of the Comptroller under this Act, may be 
appealed from, before the Court of Appeal composed in the manne r 
provided in sub-article (9) of article 41 of the Code of Organization 
and Civil Procedure  by application within fifteen days of service of the 
Comptroller’s decision.
(2) For the purposes of sub-article (1) "decision" means any ac t, 
other than such acts as may by regulations be prescribed, done by the 
Comptroller in exercise of a discretion vested in him by or und er this 
Act.
(3) The Minister may make rules governing appeals to the 
Court of Appeal under this Act, and presenting a scale of costs  and 
fees in relation to such appeals.
Power of Minister 
to make rules.101. (1) The Minister responsible for the protection of 
industrial property may make regulations for the better adminis tration 
of this Act, making such rules a s are required by any provision s of this 
Act, prescribing anything authorised or required by any provisi on of 
this Act to be prescribed, and generally for regulating practic e and 
procedure under this Act, and in particular provision may be ma de -
(a) with regard to the manner of filing of applications 
and other documents;
(b) for the submission of documents and the filing 
and authentication of any translation; 
(c) with regard to the service of documents;
(d) authorising the rectification of irregularities of 
procedure;
(e) prescribing time limits for anything required to be 
done in connection with any p roceeding under this Act;
(f) for the extension of any time limit so prescribed, 
or specified by the Comptroller whether or not such time limit has already expired;
(g) for the division of a national trademark 
application or registration by the applicant or proprietor, int o 
two or more separate appli cations or registrations;
(h) providing for the possibility of multi-class 
applications and registrations;
      
TRADEMARKS [CAP. 597. 43
(i) in the case of multi class registration, for the 
possibility of a renewal of registration in respect of only tho se 
goods and services for which a submission of a request for renewal has been received and fo r which a payment of fees has 
been effected;
(j) to align legislation following amendment to the 
Directive (EU) 2015/2436 of the  European Parliament and of 
the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks.
Fees. 102. (1) There shall be paid in respect of applications and other 
matters under this Act such fees as may be prescribed.
(2) Provision may be made by rules as to -
(a) the payment of a single fee in respect of two or 
more matters;
(b) the circumstances, if any , in which a fee may be 
repaid or remitted;
(c) prescribing an additional fee for each class of 
goods and services beyond the firs t class, for the application 
and renewal of a trademark;
(d) circumstances where different fees may be 
charged or may not be charged at all.
Hours of business 
and business days.103. (1) The Comptroller may give directions specifying the 
hours of business of the Industrial Property Office for the pur pose of 
the transaction by the public of business under this Act, and t he days 
which are business da ys for that purpose.
(2) Business done on any day after the specified hours of 
business, or on a day which is not a business day, shall be dee med to 
have been done on the next bus iness day; and where the time for  doing 
anything under this Act expires o n a day which is not a busines s day, 
that time shall be extende d to the next business day.
(3) Directions under this article may make different provisions  
for different classes of business and shall be published in the  
prescribed manner.
Recognition of 
trademark agents.104. Except as may otherwise be prescribed, any act required or 
authorised by this Act to be done by or in respect of a person in 
connection with the registration of a trademark, or any procedu re 
relating to a registered trademark, may be done by or in respec t of an 
agent authorised by th at person in writing.
The register of 
trademark agents/
attorneys.105. (1) The Minister may make rules requiring the keeping 
of a register of persons who act as agent for the purpose of ap plying 
44 [CAP. 597. TRADEMARKS
for or obtaining the registration of trademarks; and in this Ac t a 
"registered trademark agent" means a person whose name is enter ed in 
the register kept under this article.
(2) The Minister may make rules regulating the registration of 
persons as registered trademark  agents, and may in particular -
( a ) r e q u i r e  t h e  p a y m e n t  o f  s u c h  f e e s  i n  c o n n e c t i o n  
with such registration as  may be prescribed; and
(b) authorise in such cases as shall be specified the 
erasure from the register of the name of any person registered as a registered trademark agent or the suspension of such a registration.
(3) Only registered persons may -
(a) carry on a business under any name or other 
description which contains the  w o r d s  " r e g i s t e r e d  t r a d e m a r k  
agent"; or
(b) in the course of a business otherwise describe or 
hold himself out, or permit themselves to be described or held out, as registered trademark agents.
Privilege for 
communication with registered 
trademark agents.

Cap. 12.106. The provisions of article 588 of the Code of Organization 
and Civil Procedure  shall apply with regard to registered trademark 
agents as they apply with respect  to advocates and legal procur ators.
Power to 
Comptroller to refuse to deal with 
certain agents.107. The Comptroller may, in accordance with such rules as may 
be prescribed, refuse to recognize as agent in respect of any b usiness 
under this Act -
(a) a person who not being a registered trademark 
agent shall have falsely posed as such;
(b) a person whose name has been erased from and 
not restored to, or who is suspended from, the register of trademark agents on the grounds of misconduct;
(c) a partnership or body corporate of which one of 
the partners or directors is a person whom the Comptroller could refuse to rec ognize under paragraph (a) or (b) above.
      
TRADEMARKS [CAP. 597. 45
PART IV - CRIMINAL OFFENCES
Unauthorised use 
of trademark, etc., 
in relation to goods.108. (1) Any person who with a view to gain for himself or 
another, or with intent to cause loss to another, and without t he consent 
of the proprietor -
(a) applies to goods or their packaging a sign 
identical to, or likely to be mistaken for, a registered tradem ark; 
or
(b) sells or lets for hire, offers or exposes for sale or 
hire or distributes goods which bear, or the packaging of which  
bears, such a sign; or
(c) has in his possession, custody or control in the 
course of a business any such goods with a view to the doing of  
anything, by himself or another, which would be an offence under paragraph (b); or
(d) applies a sign identical to, or likely to be mistaken 
for, a registered trademark to m aterial intended to be used -
(i) for labelling or packaging goods;
(ii) as a business paper in relation to goods; or
(iii) for advertising goods; or
(e) uses, in the course of a business material bearing 
such a sign for labelling or pac kaging goods, or as a business 
paper in relation to goods, o r for advertising goods; or
(f) has in his possession, custody or control in the 
course of a business any such material with a view to the doing  
of anything, by himself or another, which would be an offence under paragraph (e); or
(g) (i) makes an article specifically designed or 
adapted for making copies of a sign of or to make a sign likely  
to be mistaken for, a registered trademark; or
(ii) has such an article in his possession, 
custody or control in the  course of a business, 
knowing or having reason to believe that it has been, or is to be, used 
to produce goods, or material for labelling or packaging goods,  as a 
business paper in relation to goods, or for advertising goods, 
shall be guilty of an offen ce against this article.
(2) A person does not commit an offence against this article 
unless -
46 [CAP. 597. TRADEMARKS
(a) the goods to which the of fence refers are goods in 
respect of which the trademark is registered; or
(b) the trademark has a reputation in Malta and the 
use of the sign takes or would take unfair advantage of, or is or 
would be detrimental to, the distinctive character or the reput e 
of the trademark.
(3) It is a defence for a person charged with an offence agains t 
this article to show that he be lieved on reasonable grounds tha t the use 
of the sign in the manner in which it was used, or was to be us ed, was 
not an infringement of th e registered trademark. 
(4) A person guilty of an offence under this article shall be 
liable on conviction to imprisonm ent for a term not exceeding t hree 
years or to a fine ( multa ) of not more than twe nty-three thousand and 
two hundred and ninety-five euro (€23,295) or to both such fine  and 
imprisonment.
Falsification of 
register, etc.109. (1) Any person who knowing or having reason to believe 
that it is false:-
(a) makes, or causes to be made, a false entry in the 
register of trademarks; or
(b) makes, or causes to be made, anything falsely 
purporting to be a copy of an entry in the register; or
(c) produces or tenders or causes to be produced or 
tendered in evidence any such thing, 
shall be guilty of an offen ce against this article.
(2) A person guilty of an offence against this article shall be  
liable on conviction to imprisonment for a term not exceeding t wo 
years or a fine ( multa ) of not more than eleven thousand and six 
hundred and fifty euro (€11,650) or to both such fine and imprisonment.
Falsely 
representing trademark as 
registered.110. (1) It shall be an offence against this article for a person -
(a) to falsely represent a trademark as a registered 
trademark; or
(b) to make a false representation as to the goods or 
services for which a t rademark is registered, knowing or having  
reason to believe that the representation is false.
(2) For the purposes of this article, the use in Malta in relat ion 
to a trademark -
(a) of the word "registered"; or
      
TRADEMARKS [CAP. 597. 47
(b) of any other word or symbol importing a 
reference, express or implied, t o registration, shall be deemed  to 
be a representation as to regist ration under this Act unless it  is 
shown that the reference is to registration elsewhere than in M a l t a  a n d  t h a t  t h e  t r a d e m a r k  i s  i n  f a c t  s o  r e g i s t e r e d  f o r  t h e  goods or services in question.
(3) A person guilty of an offence against this article shall be  
liable on conviction to a fine ( multa ) of not more than eleven thousand 
and six hundred and fifty euro (€11,650).
Unauthorised use 
of certain devices, 
emblems, etc.111. (1) A person shall not without the authority of the 
President use in connection with any business any device, emble m or 
title in such a manner as to be c alculated to lead to the belie f that he is 
employed by, or supplies goods or services to, the President.
(2) Any person who contravenes the provisions of sub-article (1 ) 
shall be guilty of an offence against this article and shall on  conviction 
be liable to a fine ( multa ) of not more than six thousand and nine 
hundred and ninety euro (€6,990).
Delivery up of 
infringing articles, 
etc.112. The Court may, moreover, in th e cases referred to in article 
109, on the demand of the prosecution, order that the machinery  or 
other industrial means or contrivances used in contravention of  the 
rights of the proprietors of the  trademarks, the infringing art icles, and 
the apparatus destined for the ir production, be forfeited, whol ly or in 
part, and delivered to the hold er of the trademark, without pre judice to 
any other right to r elief under this Act.
Powers of 
Magistrates.113. Pending any proceedings for  any one of the offences 
referred to in this Part, any Magistrate, if he is satisfied by  information 
on oath that there is reasonable cause to suspect that any good s or 
things by means of, or in relation to which the offence has bee n 
committed, are in any house or premises of the accused, or are in his 
possession or under his control in any other place, may, by a w arrant 
under his hand, direct any Officer of the Police to be named in  the 
warrant, to enter any house, premises or place, also to be name d 
therein, and there to search for, seize, and remove such goods or 
things.
Where owner of 
goods is unknown.114. If the owner of any goods or things, which, if he were 
convicted of any of the offences  referred to in this Part, woul d be 
liable to forfeiture, is unknown or cannot be found, any Magist rate 
may in the like manner and in the  circumstances required in the  last 
preceding article, issue the said warrant.
Forfeiture of things 
seized.115. The goods and things so seized s hall be produced before the 
Court of Magistrates sitting as a court of criminal judicature,  and such 
Court shall determine whether th ey are liable to forfeiture und er this 
Act. 
48 [CAP. 597. TRADEMARKS
Procedure where 
owner is unknown.116.  (1) In the case referred to in article 114, the Court shall 
order the issue of banns which shall be published twice, with a n 
interval of at least eight days , in the Gazette, and posted up at the 
entrance of the building wherein the Court sits, and in any oth er place 
which the court may deem fit, stating that the goods or things seized 
shall be forfeited, unless at the time and place named in the b anns the 
owner of such goods or things or other person interested in suc h goods 
or things attends before the Court at the time and place indica ted in the 
banns and shows cause to the contrary.
(2) If the owner or any person on his behalf, or other person 
interested in the said goods or things, fails to attend at the time and 
place named in the banns to show  cause to the contrary, it shal l be 
lawful for the Court to direct that such goods or things or any  of them 
be forfeited.
Award of 
compensation to 
parties in good faith.117. The Court may direct that the goods or things so forfeited be 
destroyed or disposed of, after the trademarks or other trade descriptions have been obliterated from them, and may also dire ct that, 
out of the net proceeds which ma y be realized by the disposal o f such 
goods or things and up to the amount thereof, any persons who, being 
in good faith, were injured by th e forfeiture, be awarded compe nsation 
for any loss caused to them. 
Limitation of 
criminal actions.118. Criminal actions under this Act shall be barred by the lapse 
of three years from the day on wh ich the act constituting the o ffence 
was committed, if the person to whose prejudice the act was committed, had no previous knowle dge thereof; in all other case s the 
period of limitation shall be one year from the day on which su ch 
person became aware of that act.
Use of forged 
marks.119. The provisions relating to the use of forged marks shall not 
apply to the use of any mark of manufacture or description used  in 
trade to indicate goods of a par ticular class, or the manufactu re thereof 
by any particular method, where, at the time of the promulgatio n of 
this Act, such mark of manufacture or description was lawfully and 
generally applied for the above-mentioned purpose:
Provided that where such mark of manufacture or 
description includes the name of  a place or country and the goo ds are 
not produced in the place or cou ntry indicated in the mark of 
manufacture or description so used, the provisions of this arti cle shall 
not apply, unless there is added to the mark of manufacture or 
description, immediately before or after the name of the said p lace or 
country, in an equally conspicuous manner, the name of the plac e or 
country in which the goods were actually made or produced, and unless there is also stated that the goods were made or produce d in that 
place or country.
      
TRADEMARKS [CAP. 597. 49
Person falsely 
representing himself as a 
registered 
trademark agent.120. Any person who falsely claims t o be a registered trademark 
agent when he is not so register ed in accordance with article 1 05, shall 
be guilty of an offence against this article and shall on convi ction be 
liable to a fine ( multa ) of not more than one thousand and one hundred 
and sixty-five euro (€1,165).
Right to damages 
not affected.121. The provisions of this Part shall apply without prejudice to 
the right of any person to claim damages in consequence of any Act 
constituting an offence.
Employer and 
employee.122. No proceedings shall be institute d against any person in the 
service of another person, if, he shows that in good faith, he acted in 
obedience to the instructions of his employer, and, on being qu estioned 
by the Police, gives full information relating to his employer and of the 
facts of the case as known to him.
PART V - MISCELLANEOUS ON CIVIL PROCEEDINGS AND 
ACTIONS
Burden of proving 
use of trademark.123. In any civil proceedings under this Act if a question arises 
as to the use to which a registered trademark has been put, the  burden 
of proof that a particular use h as been made shall lie on the p roprietor.
Limitations of civil 
actions.124. Civil actions under this Act shall be barred by the lapse of 
five years in all cases in which no other period within which s uch 
actions may be brought is fixed in this Act.
PART VI - INTERNATIONAL MATTERS
SECTION 1
The Paris Convention
The Paris 
Convention.125. (1) In this Part – 
(a) "Convention country" means a country, other than 
Malta, which is a party t o that Convention; and 
(b) "the Paris Convention" means the Paris 
Convention for the Protection of Industrial Property of 20 March 1883, as revised or  amended from time to time.
(2) The Minister may make regulations to make provision, as 
appear to him appropriate in consequence of any revision or amendment of the Paris Conventio n after the passing of this Act  to 
enable Malta to comply with any provisions of such amendment, a nd 
such regulations may in particul ar provide that any of the prov isions of 
Part II of this Act shall no longer apply or shall apply with s uch 
amendments as may be required.
Protection of well-
known trademarks: 
Article 6 bis.126. (1) References in this Act to a trademark which is 
entitled to protection under the Paris Convention as a well-kno wn 
trademark are to a mark which is well-known in Malta as being t he 
50 [CAP. 597. TRADEMARKS
mark of a person who is a national of a Convention country, or is 
domiciled in, or has a real and e ffective industrial or commerc ial 
establishment in a Convention country, whether or not that pers on 
carries on business, or has any goodwill, in Malta, and referen ce to the 
proprietor of such a mark sha ll be construed accordingly.
(2) Subject to the provisions of  article 11, the proprietor of a 
trademark which is entitled to protection under the Paris Conve ntion 
as a well-known trademark is ent itled to restrain by injunction  the use 
in Malta of a trademark which, o r the essential part of which, is 
identical or similar to his mark, in relation to identical or s imilar goods 
or services, where the use i s likely to cause confusion.


Cap. 416.(3) Nothing in sub-article (2) shall affect the continuation of  
any bona fide  use of a trademark begun before the coming into force of 
the Trademarks Act .
National emblems, 
etc., of Convention 
countries: Article 
6ter.127. (1) A trademark which consists  of or contains the flag of 
a Convention country shall not be registered without the author isation 
of the competent authorities of that country, unless it appears  to the 
Comptroller that use of the flag in the manner proposed is perm itted 
without such authorisation.
(2 )  A  t r a d e m a r k  w h i c h  c o n s i s t s  o f  o r  c o n t a i n s  t h e  a r m o r i a l  
bearing or any other State emblem of a Convention country which  is 
protected under the Paris Convention shall not be registered wi thout 
the authorisation of the compete nt authorities of that country.
(3) A trademark which consists of or contains an official sign or 
hallmark indicating control and warranty adopted by a Conventio n 
country shall not, where the sign or hall mark is protected und er the 
Paris Convention, be registered in relation to goods or service s of the 
same, or a similar kind, as those in relation to which it indic ates 
control and warranty, without the authorisation of the competen t 
authorities of the country concerned.
(4) The provisions of this article relative to national flags a nd 
other State emblems, and official signs or hallmarks apply equa lly to 
anything which from a heraldic poi nt of view imitates any such flag or 
other emblem, or sign or hallmark.
(5) Nothing in this article prevents the registration of a 
trademark on the application of  a national of a country who is 
authorised to make use of a State emblem or official sign or ha llmark, 
of that country, notwithstanding that it is similar to that of another 
country.
(6) Where by virtue of this article the authorisation of the 
competent authorities of a Convention country is or would be re quired 
for the registration of a trademark, those authorities are enti tled to 
restrain any use of the mark in  Malta without their authorisati on.
      
TRADEMARKS [CAP. 597. 51
Emblems, etc., of 
certain international 
organisations: 
Article 6 ter.128. (1) This article applies to the  armorial bearing, flags or 
other emblems, and the names an d their abbreviations, of intern ational 
intergovernmental organisations of which one or more Convention  
countries are members.
(2) A trademark which consists of or contains any such 
emblem, abbreviation or name whic h is protected under the Paris  
Convention shall not be registered without the authorisation of  the 
international organisation concerned, unless it appears to the Comptroller that the use of the emblem, abbreviation or name in  the 
manner proposed -
(a) is not such as suggests to the public that a 
connection exists between the organisation and the trademark; or
(b) is not likely to mislead the public as to the 
existence of a connection between the user and the organisation.
(3) The provisions of this article relative to emblems of an 
international organisation apply equally to anything which from  a 
heraldic point of view imitates any such emblem.
(4) Where by virtue of this article the authorisation of an 
international organisation is or would be required for the regi stration 
of a trademark, that organisation is entitled to restrain any u se of the 
mark in Malta without its authorisation.
(5) Nothing in this article affects the right of a person whose  bona 
fide use of the trademark in questi on began before 1st January 2000 .
Notification under 
Article 6 ter of the 
Convention.129. (1) For the purposes of article 127 State emblems of a 
Convention country (other than the national flag), and official  signs or 
hallmarks, shall be regarded as protected under the Paris Conve ntion 
only if, or to the extent that –
(a) the country in question has notified Malta in 
accordance with Article 6 ter (3) of the Convention that it 
desires to protect that emblem, sign or hallmark;
(b) the notification re mains in force; and
(c) Malta has not objected to it in accordance with 
Article 6 ter (4) or any such objection has been withdrawn.
(2) For the purposes of article 128 the emblems, abbreviations 
and names of an international organisation shall be regarded as  
protected under the Paris Conven tion only if, or to the extent that -
(a) the organisation in que stion has notified Malta in 
accordance with Article 6 ter (3) of the Convention that it 
52 [CAP. 597. TRADEMARKS
desires to protect that emblem, abbreviation or name;
(b) the notification remains in force; and(c) Malta has not objected to it in accordance with 
Article 6 ter (4) or any such objection has been withdrawn.
(3) Notification under Article 6 ter (3) of the Paris Convention 
shall have effect only in relation to applications for registra tion made 
more than two months after the  receipt of the notification.
(4) The Comptroller shall keep and make available for public 
inspection by any person, as pres cribed in the regulations, a l ist of the 
state emblems and official signs or hallmarks, and the emblems,  
abbreviations and names of inter national organisations, which a re for 
the time being protected under the Paris Convention by virtue o f 
notification under Article 6 ter (3).
Acts of agent or 
representative: 
Article 6 septies .130. (1) The following provisions apply where an application 
for registration of a trademark is made by a person who is an a gent or 
representative of a person who is the proprietor of the mark in  a 
Convention country.
(2) The proprietor may by sworn application before the First 
Hall of the Civil Court -
(i) demand a declaration of invalidity of the 
registration; or
(ii) demand the rectification of the register so 
as to substitute his name as the proprietor of the registered trademark.
(3) The proprietor may restrain any use of the trademark in 
Malta which is not authorised by him.
(4) Sub-articles (2) and (3) shall not apply if, or to the exte nt 
that, the agent or representativ e shows that his actions were a uthorised 
by the proprietor.
(5) An application under sub-article (2) must be made within 
three years of the proprietor becoming aware of the registratio n; and 
no injunction shall be granted under sub-article (3) in respect  of a use 
in which the proprietor has acquiesced for a continuous period of three 
years or more.
      
TRADEMARKS [CAP. 597. 53
SECTION 2
The Madrid System fo r the International 
Registration of Trademarks
The Madrid 
Protocol.131. In this Part –
"basic application" means an app lication for registration of a mark, 
filed with the Comptroller under this Act, and which is used as  a basis 
for the filing of an international application under the Madrid  Protocol;
"basic registration" means a mark registered by the Comptroller  
under this Act, and which is used as the basis for the filing o f an 
international application under the Madrid Protocol;
"Common Regulations" means the Common Regulations under the 
Madrid Agreement and Madrid Protocol;
"international application" mea ns an application to obtain 
registration of a mark under the Madrid Protocol;
"the International Bureau" means the International Bureau of th e 
World Intellectual Property Organisation;
"international trademark (Malta )" means a trademark which is 
entitled to protection in Malta under that Protocol;
"International Register" means the official collection of data 
concerning international registrations of marks maintained by t he 
International Bureau;
"Madrid agreement" means the Ma drid Agreement concerning the 
international Registration of Marks of April 14, 1891;
"the Madrid Protocol" means the Protocol relating to the Madrid  
Agreement concerning the Interna tional Registration of Marks ad opted 
at Madrid on 27 June, 1989.
Power to make 
provision giving effect to Madrid 
Protocol.132. (1) The Minister may by Order make such provisions as 
may be necessary for giving effe ct in Malta to t he provisions o f the 
Madrid Protocol or any other regional or international registra tion 
systems concerning trademarks and without prejudice to the gene rality 
of the foregoing.
(2) 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 the Office of origin;
(b) the procedures to be followed where the basic 
Malta application or registratio n fails or ceases to be in forc e;
54 [CAP. 597. TRADEMARKS
(c) the procedures to be followed where the 
Industrial Property Office rec eives from the International 
Bureau a request for extensi on 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 int o 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.
Infringements; 
criminal provisions(3) Without prejudice to the generality of sub-article (1), 
provision may be made by regulations under this article applyin g in 
relation to "an international trademark (Malta)" the provisions  of 
article 25 and of articles 108 to 122.
PART VIII - TRANSITORY PROVISIONS
Interpretation. 133. (1) In this Part -

Cap. 416."existing registered mark" means  a trademark, registered under the 
Ordinance and under the Trademarks Act  immediately before the 
commencement of this Act;
Cap. 416. "former register" means the register kept under the Trademarks 
Act;
"new register" means the reg ister kept under this Act.
(2) For the purpos es of this Part -
(a) an application shall be treated as pending on the 
commencement of this Act if it was made but not finally determined before commencement; and


Cap. 416.(b) the date on which it was made shall be taken to be 
the date of filing under the Trademarks Act .
Existing registered 
marks.134. (1) Existing registered marks shall, on the 
commencement of this Act, be transferred to the new register an d 
subject to the provisions of this Part, shall have effect as if  they were 
registered under this Act.
(2) Existing registered marks reg istered as a series under arti cle 
91(2) and (3) of the Ordinance and which are still valid before  the 
coming into force of this Act, shall be similarly registered in  the new 
      
TRADEMARKS [CAP. 597. 55
register.
Proceedings under 
the old law.135.  (1) Proceedings which are pending on the 
commencement of this Act shall be dealt with under the legislat ion 
under which they were instituted and any necessary alteration p ursuant 
to such proceedings shall be  made to the new register.
(2) A disclaimer or limitation entered on the former register i n 
relation to an existing registered mark immediately before the commencement of this Act shall be transferred to the new regist er and 
have effect as if entered on the  register in pursuance of artic le 18.
Effects of 
registration 
infringement.136. (1) Upon the coming into force of this Act, articles 12 to 
17 shall apply in relation to an existing registered mark and s ubject to 
sub-article (2) hereof, article 19 shall apply in relation to a ny 
infringement of an existing registered mark committed after the  
commencement of this Act.





Cap. 416.(2) After the coming into force of this Act, it shall not be an  
infringement of an existing registered mark to continue with an y use 
which did not amount to infringement of the existing registered  
trademark under the Or dinance and under the Trademarks Act . 
Infringing goods, 
material or articles.137. Article 21 shall apply to infringing goods, material or 
articles whether made before or a fter the commencement of this Act.
Rights and 
remedies of 
licensee or authorised user.138. Article 41 shall also apply to licences granted and to 
infringements committed before the  commencement of this Act.
Applicability of 
article 34 regarding assignment.

Cap. 416.139. The obligations under article 34 shall apply to transactions 
and events occurring after the commencement of the Trademarks Act
in relation to an existing registered trademark and the Ordinan ce shall 
continue to apply in relation to  transactions and events which occurred 
before the commencement of said Act.
Applicability of 
articles 39 and 40 
(2) regarding licensing.

Cap. 416140. Articles 39 and 40(2) shall apply only in relation to licences 
granted after the commencement of the Trademarks Act .
Pending 
applications for 
registration. 
Cap. 416141. (1) An application for registration of a mark under the 
Trademarks Act  which is pending on the commencement of this Act 
shall be dealt with under the Trademarks Act  subject to the other 
provisions of this article, and, when registered, the mark shal l be 
treated for the purposes of this Part as an existing registered  mark.
(2) The power of the Minister un der article 101 to make rules 
regulating practice and procedur e, and in relation to the matte rs 
mentioned in sub-article (2) of t hat article, is exercisable in  
relation to such an application; and different provision may be  
made for such applications from that made for other 
56 [CAP. 597. TRADEMARKS
applications.
Conversion of 
pending application.142. (1) In the case of a pending application for registration for 
which the applicant or his represe ntative has not received any 
communication from the Office relating to the registrability of  the 
application  before the commencement of t his Act, the applicant may 
give notice to the Comptroller claiming to have the registrabil ity of the 
mark determined in accordance w ith the provisions of this Act.
(2) The notice must be in the prescribed form, be accompanied 
by the appropriate fee and be given no later than six months af ter the 
commencement of this Act.
(3) Notice duly given shall be irrevocable and shall have the 
effect that the application sha ll be treated as if made immedia tely after 
the commencement of this Act.
Repeal and 
Savings. 
Cap. 416.143. (1) The Trademarks Act , hereinafter referred to as "the 
repealed Act", is hereby repealed , and any references in any la w to the 
repealed Act shall be construe d as references to this Act.
(2) Notwithstanding the prov isions of sub-article (1):
(a) the repealed Act shall remain in force for the 
purpose of any act, decision,  action or proceedings 
taken in respect of any breach of the repealed Act that occurred or were instituted prior to the coming into force of this Act; and
(b) any subsidiary legislation made under the 
provisions of the repealed Act shall, until other provision is made under or by virtue of this Act, continue in force and have effect as if it was made under this Act.