‘Design’ is a term used to describe the appearance of the whole or a part of a product with special characteristics in its lines, contours, colours, shape, texture and/or materials of the product itself, and/or its ornamentation.
The Maltese law which regulates the protection of designs and which grants them their status as a property right is the design and Designs Act.
The Act provides that designs shall be protected by registration, by means of which exclusive rights shall be conferred upon their holders.
The law provides that a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
Two of the sine qua non characteristics of design registration are novelty and individuality.
A design is considered to be new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, before the date of priority.
A design is considered to have individual character if the overall impression it has on the informed user differs from the overall impression produced by any other design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, before the priority date.
A design is considered as having been made available to the public if it has been published, exhibited, used in trade or otherwise disclosed, unless it can be shown that the design could have reasonably become known, before the filing date or where priority is claimed, before the priority date, in the normal course of business to the circles specialised in the sector concerned.
A design right cannot be obtained for:
features of appearance of a product which are solely dictated by its technical function;
features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to allow the product, in which the design is incorporated or to which the design is applied, to function;
a design serving the purpose of allowing multiple assembly or connection of multiple interchangeable products within a modular system.
a design which is contrary to public policy or accepted principles of morality;
a design which consists of the national flag of Malta, or contains Presidential or Episcopal arms or principal armorial bearings or representation of flags
Scope of Protection
The protection of a design right extends to any design which does not give a different overall impression on the informed user.
A design right is protected for a period of five years from the date of filing of the application and is renewable for one or more periods of five years each up to a total term of 25 years.
The registration of a design may be renewed at the request of the proprietor, accompanied by the prescribed fee. A late renewal can be effected up to six months after the date of expiry. If the registration is not renewed it shall be removed from the register.
Exclusive rights conferred by the design right
The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The rights of the proprietor have effect from the date of registration but no infringement proceedings may be initiated before the date on which the design is in fact registered.
The proprietor of a registered design is not entitled to prohibit the use of a product in which the design is incorporated or to which the design is applied when the product has been put on the market by the proprietor or with his consent.
Transmission of a registered design
A registered design is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property. A transmission may be partial and limited so that the use of the design applies in a particular manner or a particular locality. Such transmissions are to be recorded in Malta.
Upon filing of the applicable application, the official date of filing would be the date of submission of the completed application form to the Office.
In order to claim priority of another application in a Convention County, one is to file the Maltese application within 6 months from the date of first filing.
The Comptroller shall examine the application in order to ascertain that it complies with the requirements of the law. If any of these requirements are missing the Comptroller will inform the applicant and invite him to make the necessary amendments. If the necessary amendments are not made the Comptroller shall refuse the application.
Withdrawal or amendment of application
The applicant may withdraw his application at any time. An application may be amended only is so far as the amendment relates to corrections of the name and address of the applicant, errors of wording and obvious mistakes. Such a correction should not substantially affect the identity of the design
Registration
On the registration of a design the registration certificate shall be issued and a notice shall be published in the Government Gazette stating that the design has been registered and that it is available to be viewed by the public at the Office.
Grounds for invalidity of registration
The registration of a design may be declared invalid on the grounds that it is not novel, it does not have individual character or it has been disclosed or in any way made available to the public.
Effect of acquiescence
An action for invalidity may not be initiated when the person bringing action is aware of the use of the registered design in Malta and has acquiesced for a continuous period of five years to such use.
Action for Infringement
Infringement proceedings shall be brought before the Civil Court, First Hall and shall not be instituted after five years from the date when the injured party has obtained knowledge of the infringement and of the identity of the alleged infringer.
