Trademarks Act elapses in January 2006

Time-Frames for Compliance

Official correspondence which require a reply and/or the submission of evidence will be given sixty (60) days time frame from date of letter for compliance.

Such letters will include the actions which will be taken by the Office if the requirements are not submitted within this stipulated time frame.

We advise our associates and clients to communicate with us should there be difficulty in obtaining such evidence or carrying out such action within the time-frame provided. Our IP Unit will then take the necessary action and communicate with the IP Department on the matter.

Trademarks Act, 2001

Non-Use: 5 YEARS

The new Maltese Trademarks Act, Act XVI of 2000, came into force on 1 January 2001.

With this Act, new provisions regulating situations of non-use of a TM came into force. These new sections provide that registration may be revoked on various grounds, one of which is non-use.

If within the period of five years following the date of completion of the registration procedure,

• a trademark has not been put to genuine use in Malta, by the proprietor or
  with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for such non-use; or
• use has been suspended for an uninterrupted period of five years, and there are no proper reasons for such non-use; or
• in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered,

then such TM may be revoked by an application for revocation may be made by writ of summons before the First Hall, Civil Court by any person.

The law provides that use of a trademark includes the use in a form differing in such elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Malta includes affixing the trademark to goods or to the packaging of goods in Malta solely for export purposes.

Since the Act came into force in 2001, the period of ‘non-use’ of any trademarks registered before that date would have commenced on the entry into force of the Act and the 5 years will elapse in January 2006.

Our IP Division would like to advice associates and TM owners that if they are not satisfying this new ‘5-year use’ requirement in Malta, their TM could be revoked by any interested party.