TRADEMARKS ġ CAP. 416.  1
CHAPTER 416
TRADEMARKS ACT
To regulate Trademarks
1st January, 2001
ACT XVI of 2000, as amended by Act IX of 2003.
PART I
PRELIMINARY
Short title.
Interpretation.
Amended by:
IX. 2003.102.
2. In this Act, unless the context otherwise requires - 
“business” includes a trade or profession;
“Comptroller” means the Comptroller of Industrial Property and
includes any other person appointed to exercise all or any of the
powers and perform all or any of the duties of the Comptroller;
“European Union” means the European Union referred to in the
Treaty;
“infringement proceedings” in relation to a registered trademark,
includes proceedings under article 16;
“Member State” means a state which is a member of the
European Union;
“Minister” means the Minister responsible for the protection of
Industrial Property;
“Paris Convention” means the convention referred to in article
49 of this Act;
“prescribed” means prescribed by this Act or by any regulations
made thereunder;
“publish” means make available to the public, and references to
publication in relation to registration, are to publication under
article 37(4);
Cap. 29.
“register” means the register of trademarks kept under this Act
and includes the register of trademarks kept under the Industrial
Property (Protection) Ordinance, partly repealed by this Act;
“trade” includes any business or profession;
“trademark” means any sign capable of being represented
graphically which is capable of distinguishing goods or services of
one undertaking from those of other undertakings. A trademark
may, in particular, consist of words (including personal names),
figurative element, letters, numerals or the shape of goods or their
packaging:
Provided that for the purpose of this Act “any sign capable
of being represented graphically” includes any sign capable of
being put down in words;
Cap. 460.
“the Treaty” has the same meaning assigned to it by the
European Union Act.
2 ġ CAP. 416. TRADEMARKS
(2) ( a ) References in this Act to a trademark include, unless
the context otherwise requires, reference to a collective
mark or certification mark referred to respectively in
articles 45 and 46.
( b ) References in this Act to use (or any particular
description of use) of a trademark or of a sign identical
with, similar to or likely to be mistaken for a
trademark, include use (or that description of use)
otherwise than by means of a graphic representation.
PART II 
REGISTERED TRADEMARKS
Introductory
Property right. 3. A registered trademark is a property right obtained by the
registration of the trademark under this Act. The proprietor of a
registered trademark has the rights and remedies provided by this
Act.
Grounds for refusal of registration
Absolute ground 
for refusal.
4. (1) The following shall not be registered as trademarks -
( a ) signs which do not fall within the definition of
trademarks in article 2;
( b ) trademarks which are devoid of any distinctive
character;
( c ) trademarks which consist exclusively of signs or
indications which may serve, in trade, to designate the
kind, quality, intended purpose, value, geographical
origin, the time of production of goods or of rendering
of services, or other characteristics of goods or
services;
( d ) trademarks which consist exclusively of signs or
indications which have become customary in the
current language or in the  bona fide  and established
practices of the trade:
Provided that a trademark shall not be refused registration
by virtue of paragraph ( b ), ( c ) or ( d ) above if, before the date of
application for registration, it has in fact acquired a distinctive
character as a result of the use made of it in Malta.
(2) A sign shall not be registered as a trademark if it consists
exclusively of -
( a ) the shape which results from the nature of the goods
themselves,
( b ) the shape of goods which is necessary to obtain a
technical result, or
( c ) the shape which gives substantial value to the goods.
(3) A trademark shall not be registered if it is -
( a ) contrary to public policy or to accepted principles of
morality, or
TRADEMARKS ġ CAP. 416.  3
( b ) of such a nature as to deceive the public or likely to
deceive the public as to the nature, quality or
geographical origin of the goods or service or in any
other manner.
(4) A trademark shall not be registered if or to the extent that
its use is prohibited in Malta by any enactment or rule of law.
(5) A trademark shall not be registered in the cases specified,
or referred to, in article 5.
(6) A trademark shall not be registered if, or to the extent that,
the application is made in bad faith.
Specially protected 
emblems.
5. (1) A trademark which consists of or contains -
( a ) the arms, or any of the principal armorial bearings of
the arms appertaining to the President or the Roman
Catholic Archbishop of Malta, or any insignia or
device so nearly resembling such arms or any such
armorial bearing as to be likely to be mistaken for
them or it,
( b ) a representation of the Presidential or Episcopal flags,
( c ) a representation of the President or the Archbishop, or
any colourable imitation thereof, or
( d ) words, letters or devices likely to lead persons to think
that the applicant either has or recently has had
Presidential or Episcopal patronage or authorization,
shall not be registered unless it appears to the Comptroller that
consent has been given by or on behalf of the President or the
Archbishop.
(2) A trademark which consists of a representation of the
national flag of Malta shall not be registered.
(3) A trademark which contains a representation of the
national flag of Malta shall not be registered if it appears to the
Comptroller that the use of the trademark would be misleading or
grossly offensive.
(4) A trademark shall not be registered in the cases specified in
article 51 or article 52:
Provided that the Minister may by regulation extend the
applicability of the provisions of this subarticle to apply  mutatis
mutandis  in respect of religions other than the Roman Catholic
Apostolic Religion.
Relative grounds 
for refusal of 
registration.
6. (1) A trademark shall not be registered if it is identical
with an earlier trademark and the goods or services for which the
trademark is applied for are identical with the goods or services for
which the earlier trademark is protected.
(2) A trademark shall not be registered if because it is either
identical with an earlier trademark and is to be registered for goods
or services similar to those for which the earlier trademark is
protected, or it is similar to an earlier trademark and is to be
registered for goods or services identical with or similar to those
4 ġ CAP. 416. TRADEMARKS
for which the earlier trademark is protected, there exists a
likelihood of confusion on the part of the public, including the
likelihood of association by the public with the earlier trademark:
Provided that the mere association without the likelihood
of confusion shall not prevent a mark from being registered.
(3) A trademark which -
( a ) is identical with or similar to an earlier trademark, and
( b ) is to be registered for goods or services which are not
similar to those for which the earlier trademark is
protected,
shall not be registered if, or to the extent that, the earlier trademark
has reputation in Malta and the use of the later mark without due
cause would take unfair advantage of, or be detrimental to, the
distinctive character or the repute of the earlier trademark.
(4) A trademark shall not be registered if, or to the extent that,
its use in Malta is liable to be prevented -
( a ) by virtue of any rule of law protecting an unregistered
trademark or other sign used in the course of trade, or
( b ) by virtue of an earlier right other than those referred to
in paragraph ( a ) hereof or in subarticles (1) to (3) in
particular by virtue of the law of copyright, or
registered designs.
A person thus entitled to prevent the use of a trademark is
referred to in this Act as “the proprietor of an earlier right” in
relation to the trademark.
(5) Nothing in this article prevents the registration of a
trademark where the proprietor of the earlier trademark or the
proprietor of an earlier right consents to the registration.
Meaning of 
“earlier 
trademark”.
7. (1) In this Act an “earlier trademark” means -
( a ) a registered trademark, which has a date of application
for registration earlier than that of the trademark in
question, taking account, where appropriate, of the
priorities claimed in respect of the trademarks,
( b ) a trademark which, at the date of application for
registration of the trademark in question or (where
appropriate) of the priority claimed in respect of the
application, was entitled to protection under the Paris
Convention as a well-known trademark.
(2) Subject to its being so registered, references in this Act to
an earlier trademark includes a trademark in respect of which an
application for registration has been made and which, if registered,
would be an earlier trademark by virtue of subarticle 1( a ).
(3) A trademark as is referred to in subarticle (1)( a ) whose
registration expires shall continue to be taken into account in
determining the registrability of a later mark for a period of one
year after the expiry thereof. However, if the Comptroller is
satisfied that there was no  bona fide  use of the mark during the two
TRADEMARKS ġ CAP. 416.  5
years immediately preceding the expiry no account shall be taken
of the expired mark.
Power to remove 
relative grounds 
for refusal of 
registration.
8. (1) The Minister may make regulations providing that a
trademark shall not be refused registration on a ground mentioned
in article 6.
(2) Such regulations may make such consequential provision
as appears to the Minister appropriate with respect to -
( a ) the carrying out by the Comptroller of searches of
earlier trademarks, and
( b ) the persons by whom an application for declaration of
invalidity may be made on the grounds specified in
article 43(2).
(3) Regulations making such provision as is mentioned in
subarticle (2)( a ) may direct that the provisions of article 35 in so
far as they require a search to be carried out shall not have effect.
(4) Regulations making such provision as is mentioned in
subarticle (2)( b ) may provide that article 43(3) in so far as it
provides that any person may make an application for a declaration
of invalidity shall have effect subject to the provisions of the order.
(5) Regulations under this article may contain such transitory
provisions as appear to the Minister to be appropriate.
Effects of a registered trademark
Rights conferred 
by a registered 
trademark.
9. (1) The proprietor of a registered trademark has exclusive
rights in the trademark. Such rights are infringed by such use of the
trademark in Malta as is specified in article 10 without the consent
of the proprietor.
(2) Any reference in this Act to the infringement of a
registered trademark shall be deemed to be a reference to any such
infringement of the rights of the proprietor.
(3) The rights of the proprietor have effect from the date of
registration reckoned in accordance with article 37(3):
Provided that -
( a ) no infringement proceedings may be begun before the
date on which the trademark is in fact registered; and
( b ) no offence under article 72 shall be committed by
anything done before the date of publication of the
registration.
Infringement of a 
registered 
trademark.
10. (1) A person infringes a registered trademark if he uses in
the course of trade a sign which is identical with the trademark in
relation to goods or services which are identical with those for
which it is registered.
(2) A person infringes a registered trademark if he uses in the
course of trade a sign where because -
( a ) the sign is identical with the trademark and is used in
relation to goods or services similar to those for which
6 ġ CAP. 416. TRADEMARKS
the trademark is registered, or
( b ) the sign is similar to the trademark and is used in
relation to goods or services identical with or similar
to those for which the trademark is registered,
there exists a likelihood of confusion on the part of the public,
including the likelihood of association with the trademark:
Provided that the mere association without the likelihood
of confusion shall not be considered as constituting an
infringement.
(3) A person infringes a registered trademark if he uses in the
course of trade a sign which -
( a ) is identical with or similar to the trademark, and
( b ) is used in relation to goods or services which are not
similar to those for which the trademark is registered,
where the trademark has a reputation in Malta and the use of the
sign, being without due cause, takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the
trademark.
(4) For the purposes of this article a person uses a sign if, in
particular, he -
( a ) affixes it to the goods or the packaging thereof;
( b ) offers or exposes goods for sale, puts them on the
market or stocks them for those purposes under the
sign, or offers or supplies services under the sign;
( c ) imports or exports goods under the sign; or
( d ) uses the sign on business papers or in advertising.
(5) A person who applies a registered trademark to material
intended to be used for labelling or packaging goods, as a business
paper, or for advertising goods or services, shall be treated as a
party to any use of the material which infringes the registered
trademark if when he applied the mark he knew or had reason to
believe that the application of the mark was not duly authorised by
the proprietor or a licensee.
(6) Nothing in the preceding provisions of this article shall be
construed as preventing the use of a registered trademark by any
person for the purpose of identifying goods or services as those of
the proprietor or a licensee.
However, any such use otherwise than in accordance with honest
practices in industrial or commercial matters shall be treated as
infringing the registered trademark if the use without due cause
takes unfair advantage of, or is detrimental to, the distinctive
character or repute of the trademark.
Limits on effect of 
a registered 
trademark.
11. (1) A registered trademark is not infringed by the use of
another registered trademark in relation to goods or services for
which the latter is registered.
(2) A registered trademark is not infringed by -
TRADEMARKS ġ CAP. 416.  7
( a ) the use by a person of his own name or address,
( b ) the use of indications concerning the kind, quality,
quantity, intended purpose, value, geographical origin,
the time of production of goods or of rendering of
services, or other characteristics of goods or services,
or
( c ) the use of the trademark where it is necessary to
indicate the intended purpose of a product or service,
in particular as accessories or spare parts:
Provided the use is in accordance with honest practices in
industrial or commercial matters.
(3) ( a ) A registered trademark is not infringed by the use in
the course of trade in Malta of an earlier right.
( b ) For the purposes of this subarticle an “earlier right”
means an unregistered trademark or other sign
continuously used in relation to goods or services by a
person or his predecessor in title from a date prior to
whichever is the earlier of -
(i) the use of the first-mentioned trademark in
relation to those goods or services by the
proprietor or his predecessor in title, or
(ii) the registration of the first-mentioned trademark
in respect of those goods or services in the name
of the proprietor or his predecessor in title; and
(iii) an earlier right shall be regarded as applying if,
or to the extent that, its use is protected by virtue
of any rule of law.
Proprietor may not 
prohibit use.
Substituted by:
IX. 2003.103.
12. (1) A trademark shall not entitle the proprietor to prohibit
its use in relation to goods bearing that trademark which have been
put on the market by the proprietor or with his consent.
(2) The provisions of subarticle (1) shall not apply where there
is legitimate reasons for the proprietor to oppose further
commercialisation of the goods particularly where the condition fo
the goods is changed or impaired after they have been put on the
market.
(3) For the purposes of this article “market” means the market
in Malta and as from the 1st May 2004, the market in any Member
State.
Registration 
subject to 
disclaimer or 
limitation.
13. (1) An applicant for registration of a trademark, or the
proprietor of a registered trademark, may - 
( a ) disclaim any right to the exclusive use of any specified
element of the trademark, or
( b )  agree that the rights conferred by the registration shall
be subject to a specified territorial or other limitation.
(2) The Comptroller may disclaim any right to the exclusive
use of any specified element of the trademark.
(3) The Minister may make rules providing for the publication
8 ġ CAP. 416. TRADEMARKS
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 9 shall be
restricted accordingly.
Infringement proceedings
Action for 
infringement.
14. (1) Subject to the provisions of articles 28 and 29, an
infringement of a registered trademark is actionable by the
proprietor of the trademark by writ of summons to be filed in the
First Hall of the Civil Court.
(2) In an action for infringement all such relief as is available
in respect of the infringement of any other property right shall be
available to the plaintiff.
Order for erasure, 
etc., of offending 
sign.
15. (1) Where a person is found to have infringed a registered
trademark, the Court may make an order requiring him - 
( a ) to cause the offending sign to be erased, removed or
obliterated from any infringing goods, material or
articles in his possession, custody or control, or
( b ) if it is not reasonably practicable for the offending sign
to be erased, removed or obliterated, to secure the
destruction of the infringing goods, material or articles
in question.
(2) If an order under subarticle (1) is not complied with, or it
appears likely to the Court that such an order would not be
complied with, the Court may order that the infringing goods,
material or articles be delivered to such person as the Court may
direct for erasure, removal or obliteration of the sign, or for
destruction, as the case may be.
Order for delivery 
up of infringing 
goods, material or 
articles.
16. (1) The proprietor of a registered trademark may apply to
the Court for an order for the delivery up to him, or such other
person as the Court may direct, of any infringing goods, material or
articles which a person has in his possession, custody or control in
the course of a business.
(2) An application shall not be made after the end of the period
specified in article 18; and no order shall be made unless the Court
also makes, or it appears to the Court that there are grounds for
making, an order under article 19.
(3) A person to whom any infringing goods, material or
articles are delivered up in pursuance of an order under this article
shall, retain them pending the decision of the Court under article
19.
(4) Nothing in this article affects any other power of the Court.
Meaning of 
“infringing goods, 
material of 
articles”.
17. (1) In this Act the expressions “infringing goods”,
“infringing material” and “infringing articles” shall be construed in
accordance with the following subarticles 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 -
TRADEMARKS ġ CAP. 416.  9
( a ) the application of the sign to the goods or their
packaging is an infringement of the registered
trademark, or
( b ) the goods are proposed to be imported into Malta and
the application in Malta, of the sign, to them or their
packaging would be an infringement of the registered
trademark, or
( c ) the sign has otherwise been used in relation to the
goods in such a way as to infringe the registered
trademark.
(3) Material is “infringing material”, in relation to a registered
trademark, if it bears a sign identical or similar to that mark and -
( a ) it is used for labelling or packaging goods, as a
business paper, or for advertising goods or services, in
such a way as to infringe the registered trademark, or
( b ) it is intended to be so used and such use would infringe
the registered trademark.
(4) “Infringing articles”, in relation to a registered trademark,
means articles -
( a ) which are specifically designed or adapted for making
copies of a sign identical or similar to that mark, and
( b ) which a person has in his possession, custody or
control, knowing or having reason to believe that they
have been used or are to be used to produce infringing
goods or material.
Period after which 
remedy of delivery 
up not available.
18. (1) An application for an order under article 16 may not be
made after the end of the period of six years from -
( a ) in the case of infringing goods, the date on which the
trademark was applied to the goods or their packaging,
( b ) in the case of infringing material, the date on which
the trademark was applied to the material, or
( c ) in the case of infringing articles, the date on which
they were made,
except as provided in the following subarticle.
(2) If during the whole or part of that period the proprietor of
the registered trademark is prevented by fraud or concealment from
discovering the facts entitling him to apply for an order, an
application may be made at any time before the end of the period of
six years from the date on which he could with reasonable diligence
have discovered those facts.
Order as to 
disposal of 
infringing goods, 
material or articles.
19. (1) Where infringing goods, material or articles have been
delivered up in pursuance of an order under article 16, an action by
writ of summon may be brought before the Court by any party
interested -
( a ) for an order that they be destroyed or forfeited to such
person as the Court may think fit, or
( b ) for a decision that no such order should be made.
10 ġ CAP. 416. TRADEMARKS
(2) In considering its decision, the Court shall consider
whether other remedies available in an action for infringement of
the registered trademark would be adequate to compensate the
proprietor and any licensee to protect their interests.
(3) The Court shall order the service of the writ on persons
having an interest in the goods, material or articles, and any person
having an interest shall be entitled - 
( a ) to appear in proceedings for an order under this article,
whether or not he was served with a notice, and
( b ) to appeal against any order made, whether or not he
appeared at first instance, and any such order shall not
take effect until the end of the period within which an
appeal may be filed or, if before the end of that period
an appeal is so filed, until the final determination or
abandonment of the proceedings on the appeal.
(4) Where there is more than one person interested in the
goods, material or articles, the Court shall make such order as it
thinks fit.
(5) If the Court decides that no order should be made under this
article, the person in whose possession, custody or control the
goods, material or articles were before being delivered up is
entitled to their return.
Remedy for 
groundless threats 
of infringement 
proceedings.
20. (1) Where a person threatens another with proceedings for
infringement of a registered trademark other than -
( a ) use of the mark on goods or their packaging,
( b ) the importation of goods to which, or to the packaging
of which, the mark has been applied, or
( c ) the supply of services under the mark,
any person aggrieved may bring proceedings for relief under this
article by writ of summons before the Civil Court, First Hall.
(2) The relief which may be applied for is any of the
following-
( a ) a declaration that the threats are unjustified,
( b ) an injunction against the continuance of the threats,
( c ) damages in respect of any loss he may have sustained
by the threats,
and the plaintiff is entitled to such relief unless the defendant
shows that the acts in respect of which proceedings were threatened
constitute, or if done would constitute, an infringement of the
registered trademark concerned.
(3) Where the defendant shows that the acts in respect of
which proceedings were threatened constitute or would constitute
an infringement of the registered trademark, the plaintiff shall
nevertheless be entitled to relief if he shows that the registration of
the trademark is invalid or liable to be revoked.
(4) The mere notification that a trademark is registered, or that
an application for registration has been made, does not constitute a
TRADEMARKS ġ CAP. 416.  11
threat of proceedings for the purposes of this article.
Registered trademark as object of property
Nature of a 
registered 
trademark.
21. A registered trademark is the personal property of its
owner .
Co-ownership of a 
registered 
trademark.
22. (1) Where a registered trademark is granted to two or
more persons jointly, each of them is entitled, subject to any
agreement to the contrary, to an equal undivided share in the
registered trademark.
(2) The following provisions apply where two or more persons
are co-proprietors of a registered trademark, by virtue of subarticle
(1) or otherwise.
(3) Subject to any agreement to the contrary, each co-
proprietor is entitled, personally or through his agents, to do for his
own benefit and without the consent of or the need to account to
any other co-proprietor, any act which would otherwise amount to
an infringement of the registered trademark.
(4) Notwithstanding the provisions of subarticle (3) a co-
proprietor may not without the consent of the other or others - 
(a) grant a licence to use the registered trademark, or
( b ) assign or cede control of his share in the registered
trademark.
(5) Infringement proceedings may be brought by any co-
proprietor, but a co-proprietor may not, without the leave of the
Court, proceed with the action unless the other, or each of the other
co-proprietors, is joined in the suit.
A co-proprietor who is thus joined in the suit shall not be liable
for any costs in the action.
Nothing in this subarticle affects the making of any
precautionary warrant on the application of a single co-proprietor.
(6) Nothing in this article affects the rights and obligations of
trustees or personal representatives, or their rights and obligations
as such.
Transmission of a 
registered 
trademark.
23. (1) A registered trademark is transmissible by assignment,
testamentary disposition or operation of law in the same way as
other personal or moveable property.
It is so transmissible either in connection with the goodwill of a
business or independently.
(2) An assignment or other transmission of a registered
trademark may be partial and limited so as to apply - 
( a ) in relation to some but not all of the goods or services
for which the trademark is registered, or
( b ) in relation to the use of the trademark in a particular
manner or a particular locality.
(3) An assignment of a registered trademark is not effective
unless it is in writing signed by or on behalf of the assignor or, as
12 ġ CAP. 416. TRADEMARKS
the case may be a personal representative.
(4) Nothing in this Act shall be construed as affecting the
assignment or other transmission of an unregistered trademark as
part of the goodwill of a business.
Registration of 
transactions 
affecting a 
registered 
trademark.
24. (1) On application being made to the Comptroller by -
( a ) a person claiming to be entitled to an interest in or
under a registered trademark by virtue of a registrable
transaction, or
( b ) any other person claiming to be affected by such a
transaction,
the prescribed particulars of the transaction shall be entered in the
register.
(2) The following are registrable transactions -
( a ) an assignment of a registered trademark or any right in
it;
( b ) the grant of a licence under a registered trademark;
( c ) the transfer of a registered trademark by testamentary
disposition;
( d ) an order of a Court or other competent authority
transferring a registered trademark or any right in or
under it.
(3) Until an application has been made for registration of the
prescribed particulars of a registrable transaction -
( a ) the transaction is ineffective as against a person
acquiring in good faith a conflicting interest in the
registered trademark, and
( b ) a person claiming to be a licensee by virtue of the
transaction shall not have the   protection of article 28
or 29.
(4) Where a person becomes the proprietor or a licensee of a
registered trademark by virtue of a registrable transaction, he shall
not be entitled to damages or an account of profits in respect of any
infringement of the registered trademark occurring after the date of
the registrable transaction and before the prescribed particulars of
the transaction are registered, unless: 
( a ) an application for registration of the prescribed
particulars of the transaction is made before the end of
the period of six months beginning with the date of the
transaction, or
( b ) the Court is satisfied that it was not practicable for
such an application to be made before the end of that
period and that an application was made as soon as
practicable thereafter.
(5) The Minister may make regulations prescribing rules as
to-
( a ) amendment of registered particulars relating to a
licence so as to reflect any alteration of the terms of
TRADEMARKS ġ CAP. 416.  13
the licence, and
( b ) the removal of such particulars from the register -
(i) where it appears from the registered particulars
that the licence was granted for a fixed period
and that period has expired;
(ii) where no such period is indicated and, after such
period as may be prescribed, and after the
Comptroller has notified the parties of his
intention to remove the particulars from the
register and the parties have not indicated their
agreement that such particulars should not be
removed for such period as the parties shall have
agreed and indicated to the Comptroller;
( c ) the amendment or removal from the register of
particulars relating to a security interest on the
application of, or with the consent of, the person
entitled to the benefit of that interest.
Application for 
registration of a 
trademark as an 
object of property.
25. The provisions of article 21 to 24 apply  mutatis mutandis
in relation to an application for the registration of a trademark in
the same manner in relation to a registered trademark.
Licensing of a 
registered 
trademark.
26. (1) A licence to use a registered trademark may be general
or limited. A limited licence may in particular, apply -
( a ) in relation to some but not all the goods or services for
which the trademark is registered, or
( b ) in relation to use of the trademark in a particular
manner or a particular locality.
(2) Unless the licence provides otherwise, it is binding on a
successor in title to the grantor’s interest, and references in this Act
to doing anything with, or without, the consent of the proprietor of
a registered trademark shall be construed accordingly.
(3) Where the licence so provides, a sub-licence may be
granted by the licensee; and references in this Act to a licence or
licensee include a sub-licence or sub-licensee.
Exclusive licences.
(whether general or limited) authorising the licensee to the
exclusion of all other persons, including the person granting the
licence, to use a registered trademark in the manner authorised by
the licence.
(2) An exclusive licensee has the same rights against a
successor in title who is bound by the licence as he has against the
person granting the licence.
General provisions 
as to the rights of 
licensees in case of 
infringement.
28. (1) The provisions of this article shall apply with respect
to the rights of a licensee in relation to infringement of a registered
trademark:
Provided that they shall not apply where or to the extent
that, in accordance with article 29(1) an exclusive licensee has a
right to bring proceedings in his own name.
14 ġ CAP. 416. TRADEMARKS
(2) A licensee is entitled, unless his licence provides
otherwise, to call on the proprietor of the registered trademark to
take infringement proceedings in respect of any matter which
affects his interests.
(3) If the proprietor -
( a ) refuses to do so, or
( b ) fails to do so within two months after being called upon, 
the licensee may bring the proceedings in his own name as if he
were the proprietor.
(4) Where infringement proceedings are brought by a licensee
by virtue of this article, the proprietor shall be joined in the suit.
(5) In infringement proceedings brought by the proprietor of a
registered trademark any loss suffered or likely to be suffered by
licensees shall be taken into account by the Court which shall give
such directions as it thinks fit with regard to the disposal and
distribution of any sum awarded as a remedy for the infringement.
Exclusive licensee 
having right and 
remedies of 
assignee.
29. (1) An exclusive licence may provide that the licensee
shall have, to such extent as may be provided by the licence, the
same rights and remedies in respect of matters occurring after the
grant of the licence as if the licence had been an assignment.
Where or to the extent that such provision is made, the licensee
shall be entitled, subject to the provisions of the licence and to the
following provisions of this article, to bring infringement
proceedings in his own name against any person other than the
proprietor.
(2) The rights and remedies of an exclusive licensee are
concurrent with those of the proprietor of the registered trademark;
and references in this Act to the proprietor of a registered
trademark relating to infringement shall be construed accordingly.
(3) In an action brought by an exclusive licensee under this
article a defendant may avail himself of any defence which would
have been available to him if the action had been brought by the
proprietor of the registered trademark.
(4) Where proceedings for infringement of a registered
trademark are brought by the proprietor or by the exclusive licensee
relating to an infringement in respect of which they have
concurrent right of action, the proprietor or, as the case may be, the
exclusive licensee who are not the plaintiff shall be joined in the
suit.
(5) ( a ) Where an action for infringement of a registered
trademark relating to an infringement in respect of
which the proprietor and an exclusive licensee have
concurrent right of action is brought -
(i) the Court shall in assessing damages take into
account -
(1) the terms of the licence, and
(2) any pecuniary remedy already awarded or
available to either of them in respect of the
TRADEMARKS ġ CAP. 416.  15
infringement;
(ii) no account of profits shall be ordered to be made
if an award of damages has been made, or an
account of profits has been ordered, in favour of
either of them in respect of the infringement;
and
(iii) the Court shall, if an account of profits has been
ordered, apportion subject to any agreement
between them, the profits between them as the
Court considers just.
( b ) The provisions of this subarticle apply whether action
is brought by the proprietor alone, or it is brought by
the proprietor and the exclusive licensee; and if they
are not both parties the Court may give such directions
as it deems fit with regard to the disposal and
distribution of any sum awarded as remedy for the
infringement.
(6) The proprietor of a registered trademark shall notify any
exclusive licensee who has a concurrent right of action before
applying for an order under article 16; and the Court may on the
application of the licensee make such order under that article as it
thinks fit having regard to the terms of the licensee.
(7) The provisions of subarticles (4) to (6) shall be without
prejudice to any agreement to the contrary between the exclusive
licensee and the proprietor.
Application for a registered trademark
Application for 
registration.
30. An application for registration of a trademark shall be
made to the Comptroller in such manner as may be prescribed.
Date of filing.
trademark is the date on which the prescribed elements are
furnished to the Comptroller by the applicant:
Provided that where the elements are furnished on different
days, the date of filing shall be the date on which the last element is
so furnished.
(2) References in this Act to the date of application for
registration shall be construed as a reference to the date of filing of
the application.
Classification of 
trademarks.
32. (1) Goods and services shall be classified for the purposes
of the registration of trademarks according to such system of
classification as may be prescribed.
(2) Any question arising as to the class within which any
goods or services fall shall be determined by the Comptroller,
whose decision shall be final.
Priority
Claim to priority of 
Convention 
application.
33. (1) A person who has duly filed an application for
protection of a trademark in a country which is a member of the
World Trade Organisation or a party to the Paris Convention,
hereinafter in this Act referred to as a “Convention application”, or
16 ġ CAP. 416. TRADEMARKS
his successor in title, has a right to priority, for the purposes of
registering the same trademark under this Act for any or all of the
same goods or services for which such an application has been
filed, for a period of six months from the date of filing of the first
such application.
(2) If the application for registration under this Act is made
within such six-month period -
( a ) the relevant date for the purposes of establishing
which rights take precedence shall be the date of filing
of the first Convention application, and
( b ) the registrability of the trademark shall not be affected
by any use of the mark in Malta in the period between
that date and the date of the application under this Act.
(3) ( a ) Any filing which in a country which is a member of the
World Trade Organisation or is a party to the Paris
Convention is under its legislation or any international
agreement to which such country is a party, treated as
if it were a regular national filing, shall be treated as
giving rise to the right of priority.
( b ) For the purposes of this subarticle “regular national
filing” means a filing which is adequate to establish
the date on which the application was filed in that
country, whatever may be the subsequent application.
(4) A subsequent application concerning the same goods or
services as the first Convention application, filed in the same
Convention country, shall be considered the first Convention
application (the filing date of which is the starting date of the
period of priority), if at the time of the subsequent application -
( a ) the previous application has been withdrawn,
abandoned or refused, without having been laid open
to public inspection and without leaving any rights
outstanding, and 
( b ) it has not yet served as a basis for claiming a right of
priority,
and the previous application may not thereafter serve as a basis for
claiming a right of priority.
(5) Provision may be made by rules as to the manner of
claiming a right to priority on the basis of a Convention
application.
(6) A right to priority arising as a result of a Convention
application may be assigned or otherwise transmitted, either with
the application or independently.
Claim to priority 
from other relevant 
overseas 
application.
34. (1) The Minister may make regulations conferring on a
person who has duly filed an application for protection of a
trademark in a country or territory in relation to which the Maltese
Government is a party to a treaty, convention, arrangement or
engagement for the reciprocal protection of trademarks, a right to
priority, for the purpose of registering the same trademark under
TRADEMARKS ġ CAP. 416.  17
this Act for any or all of the same goods or services, for a such
period as may be specified in the application from the date of filing
of that application.
(2) Such regulations may make provisions similar to those
contained in article 33 in relation to Convention applications or
such other provision as appears to the Minister to be appropriate.
Registration procedure
Examination of 
application.
35. (1) The Comptroller shall examine whether an application
for registration of a trademark satisfies the requirements of this Act
and for that purpose he shall carry out a search, to such extent as he
considers necessary, of earlier trademarks.
(2) If it appears to the Comptroller that the requirements for
registration are not met, he shall inform the applicant and give him
an opportunity to make representations or to amend the application
within such period as the Comptroller may specify.
(3) If the applicant fails to satisfy the Comptroller that those
requirements are met, or to amend the application so as to meet
them, or fails to respond before the end of the specified period, the
Comptroller shall refuse the application.
(4) If it appears to the Comptroller that the requirements for
registration are met, he shall accept the application as eligible for
registration.
Withdrawal, 
restriction or 
amendment of 
application.
36. (1) The applicant may at any time withdraw his
application or restrict the goods or services covered by the
application.
(2) Save as provided in subarticle (1), an application may be
amended, at the request of the applicant, only by correcting -
(a) the name or address of the applicant,
( b ) errors of wording or of copying, or
( c ) obvious mistakes,
and then only where the correction does not substantially affect the
identity of the trademark or extend the goods or services covered
by the application.
Registration.
registration, the Comptroller shall register the trademark, unless it
appears to him having regard to matters coming to his notice after
he accepted the application that it was accepted in error.
(2) A trademark shall not be registered and the application
shall be deemed to be withdrawn unless any fee prescribed in
respect of any action taken before the registration is paid within the
prescribed period.
(3) A trademark when registered shall be registered as of the
date of filing of the application for registration, and that date shall
be deemed for the purposes of this Act to be the date of
registration.
(4) On the registration of a trademark the Comptroller shall
publish the registration in the prescribed manner and issue to the
18 ġ CAP. 416. TRADEMARKS
applicant a certificate of registration.
Duration, renewal and alteration of registered trademark
Duration of 
registration.
38. (1) A trademark shall be registered for a period of ten
years from the date of registration.
(2) Registration may be renewed in accordance with article 39
for further periods of ten years.
Renewal of 
registration.
39. (1) The registration of a trademark may be renewed at the
request of the proprietor, subject to the payment of the prescribed
renewal fee not more than 6 months before the date of expiry.
(2) The Minister may by regulation make rules providing that
the Comptroller informs the proprietor of a registered trademark,
before the expiry of the registration, of the date of expiry and the
manner in which the registration may be renewed.
(3) Without prejudice to subarticle (1) a request for renewal
must be made, before the expiry of the registration:
Provided that, the request may be made and the fee paid
within such further period as may be prescribed, in which case a
prescribed additional renewal fee must also be paid within that
period.
(4) Renewal shall take effect from the expiry of the previous
registration.
(5) If the registration is not renewed in accordance with the
above provisions, the Comptroller shall remove the trademark from
the register.
(6) Provision may be made by rules for the restoration of the
registration of a trademark which has been removed from the
register, subject to such conditions (if any) as may be prescribed.
(7) The renewal or restoration of the registration of a trademark
shall be published in the prescribed manner.
Alteration of a 
registered 
trademark.
40. (1) A registered trademark shall not be altered in the
register, during the period of registration or on renewal.
(2) Nevertheless, the Comptroller may, at the request of the
proprietor, allow the alteration of a registered trademark where the
mark includes the proprietor’s name or address and the alteration is
limited to the alteration of that name or address and does not
substantially affect the identity of the mark.
(3) Provision shall be made by rules for the publication of any
such alteration and the making of objections by any person
claiming to be affected by it.
Surrender, revocation and invalidity
Surrender of a 
registered 
trademark.
41. (1) A registered trademark may be surrendered by the
proprietor in respect of any or all of the goods or services for which
it is registered.
(2) Provision may be made by rules - 
( a ) as to the manner and effect of a surrender, and
TRADEMARKS ġ CAP. 416.  19
( b ) for protecting the interests of other persons having a
right in the registered trademark.
Revocation of 
registration.
42. (1) The registration of a trademark may be revoked on any
of the following grounds - 
( a ) that within the period of five years following the date
of completion of the registration procedure it has not
been put to genuine use in Malta, by the proprietor 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;
( b ) that such use has been suspended for an uninterrupted
period of five years, and there are no proper reasons
for such non-use;
( c ) that, in consequence of acts or inactivity of the
proprietor, it has become the common name in the
trade for a product or service for which it is registered;
( d ) that in consequence of the use made of it by the
proprietor or with his consent, it is liable to mislead
the public in relation to the goods or services for
which it is registered, particularly as to the nature,
quality or geographical origin of those goods or
services.
(2) For the purposes of subarticle (1) use of a trademark
includes the use in a form differing in such elements which do not
alter the distinctive character of the mark in the form in which it
was registered, and use in Malta includes affixing the trademark to
goods or to the packaging of goods in Malta solely for export
purposes.
(3) The registration of a trademark shall not be revoked on the
ground mentioned in paragraphs ( a ) or ( b ) of subarticle (1) if such
use as is referred to in those paragraphs is commenced or resumed
after the expiry of the five-year period and before the application
for revocation is made:
Provided that, any such commencement or resumption of
use after the expire of the five-year period but within the period of
three months before the making of the application shall be
disregarded unless preparations for the commencement or
resumption began before the proprietor became aware that the
application is likely to be made.
(4) An application for revocation may be made by writ of
summons before the First Hall, Civil Court by any person.
(5) Where grounds for revocation exist in respect of only some
of the goods or services for which the trademark is registered,
revocation shall be limited to those goods or services.
(6) Where the registration of a trademark is revoked to any
extent, the rights of the proprietor shall be deemed to have ceased
to that extent as from - 
( a ) the date of the application for revocation, or
20 ġ CAP. 416. TRADEMARKS
( b ) if grounds for revocation existed at an earlier date,
such earlier date.
Grounds for 
invalidity of 
registration.
43. (1) The registration of a trademark may be declared
invalid on the ground that the trademark was registered in breach of
article 4 or any of the provisions referred to in that article.
Where the trademark was registered in breach of subarticle
(1)( b ), ( c ) or ( d ) of that article, it shall not be declared invalid if, in
consequence of the use which has been made of it, it has after
registration acquired a distinctive character in relation to the goods
or services for which it is registered.
(2) The registration of a trademark may, unless the proprietor
of that earlier trademark or other earlier right has consented to the
registration, be declared invalid on the ground -
( a ) that there is an earlier trademark in relation to which
the conditions set out in article 6 (1), (2) or (3) obtain,
or
( b ) that there is an earlier right in relation to which the
condition set out in article 6(4) is satisfied.
(3) An application for a declaration of invalidity may be made
by any person, by writ of summons before the First Hall of the
Civil Court.
(4) In the case of bad faith in the registration of a trademark,
the Comptroller himself may apply to the Court for a declaration of
the invalidity of the registration.
(5) Where the grounds of invalidity exist in respect of only
some of the goods or services for which the trademark is registered,
the trademark shall be declared invalid with regard to those goods
or services only.
(6) Where the registration of a trademark is declared invalid to
any extent, the registration shall to that extent be deemed never to
have been made:
Provided that this shall not affect transactions past and
closed.
Effect of 
acquiescence.
44. (1) Where the proprietor of an earlier trademark or other
earlier right being aware of the use of a registered trademark in
Malta, has acquiesced to such use for a continuous period of five
years, he shall cease to be entitled to any right on the basis of that
earlier trademark or other right -
( a ) to apply for a declaration that the registration of the
later trademark is invalid, or
( b ) to oppose the use of the later trademark in relation to
the goods or services in relation to which it has been
so used,
unless the registration of the later trademark was applied for in bad
faith.
(2) In the cases referred to in subarticle (1), the proprietor of
the later trademark is not entitled to oppose the use of the earlier
TRADEMARKS ġ CAP. 416.  21
trademark or, as the case may be, the exploitation of the earlier
right, notwithstanding that the earlier trademark or right may no
longer be invoked against his later trademark.
Collective marks
Collective marks.
or services of members of an association which is the proprietor of
the mark from those of other undertakings.
(2) The provisions of this Act apply to collective marks
subject to the provisions of the First Schedule to this Act.
Certification marks
Certification 
marks.
46. (1) A certification mark is a mark indicating that the
goods or services in connection with which it is used are certified
by the proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality, accuracy
or other characteristics.
(2) the provisions of this Act apply to certification marks
subject to the provisions of the Second Schedule.
PART III 
INTERNATIONAL MATTERS
International registration
The Madrid 
Protocol.
47. In this Part -
“the Madrid Protocol” means the Protocol relating to the Madrid
Agreement concerning the International Registration of Marks
adopted at Madrid on 27 June, 1989;
“the International Bureau” has the meaning given by Article 2(1)
of that Protocol; and
“international trademark (Malta)” means a trademark which is
entitled to protection in Malta under that Protocol.
Power to make 
provision giving 
effect to Madrid 
Protocol.
48. (1) The Minister may by Order make such provisions as
may be necessary for giving effect in Malta to the provisions of the
Madrid Protocol or any other regional or international registration
systems concerning trademarks and without prejudice to the
generality of the foregoing.
The Order may, in particular, be made with respect to -
( a ) the making of applications for international
registrations by way of the Industrial Property Office
as office of origin;
( b ) the procedures to be followed where the basic Malta
application or registration fails or ceases to be in
force;
( c ) the procedures to be followed where the Industrial
Property Office receives from the International Bureau
a request for extension of protection to Malta;
( d ) the effects of a successful request for extension of
protection to Malta;
22 ġ CAP. 416. TRADEMARKS
( e ) the transformation of an application for an
international registration, or an international
registration, into a national application for
registration;
( f ) the communication of information to the International
Bureau;
( g ) the payment of fees and amounts prescribed in respect
of applications for international registrations,
extensions of protection and renewals.
(2) Without prejudice to the generality of subarticle (1),
provision may be made by regulations under this article applying in
relation to “an international trademark (Malta)” the provisions of
article 20 and of articles 72 to 86 of this Act.
The Paris Convention
The Paris 
Convention.
49. (1) In this Part -
( a ) “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, and
( b ) “Convention country” means a country, other than
Malta, which is a party to that Convention.
(2) The Minister may make regulations to make provision, as
appear to him appropriate in consequence of any revision or
amendment of the Paris Convention after the passing of this Act to
enable Malta to comply with any provisions of such amendment,
and such regulations may in particular provide that any of the
provisions of Part II of this Act shall no longer apply or shall apply
with such amendments as may be required.
Protection of well-
known trademarks: 
Article 6  bis.
50. (1) References in this Act to a trademark which is entitled
to protection under the Paris Convention as a well-known
trademark are to a mark which is well-known in Malta as being the
mark of a person who is a national of a Convention country, or is
domiciled in, or has a real and effective industrial or commercial
establishment in a Convention country, whether or not that person
carries on business, or has any goodwill, in Malta, and reference to
the proprietor of such a mark shall be construed accordingly.
(2) Subject to the provisions of article 44, the proprietor of a
trademark which is entitled to protection under the Paris
Convention as a well-known trademark is entitled to restrain by
injunction the use in Malta of a trademark which, or the essential
part of which, is identical or similar to his mark, in relation to
identical or similar goods or services, where the use is likely to
cause confusion.
(3) Nothing in subarticle (2) shall affect the continuation of
any  bona fide  use of a trademark begun before the coming into
force of this article.
National emblems, 
etc., of Convention 
countries: 
Article 6 ter.
51. (1) A trademark which consists of or contains the flag of a
Convention country shall not be registered without the
authorisation of the competent authorities of that country, unless it
TRADEMARKS ġ CAP. 416.  23
appears to the Comptroller that use of the flag in the manner
proposed is permitted without such authorisation.
(2) A trademark which consists of or contains the armorial
bearing or any other State emblem of a Convention country which
is protected under the Paris Convention shall not be registered
without the authorisation of the competent authorities of that
country.
(3) A trademark which consists of or contains an official sign
or hallmark indicating control and warranty adopted by a
Convention country shall not, where the sign or hall mark is
protected under the Paris Convention, be registered in relation to
goods or services of the same, or a similar kind, as those in relation
to which it indicates control and warranty, without the
authorisation of the competent authorities of the country
concerned.
(4) The provisions of this article relative to national flags and
other State emblems, and official signs or hallmarks apply equally
to anything which from a heraldic point 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
hallmark, 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
required for the registration of a trademark, those authorities are
entitled to restrain any use of the mark in Malta without their
authorisation.
Emblems, etc., of 
certain 
international 
organisations: 
Article 6 ter.
52. (1) This article applies to the armorial bearing, flags or
other emblems, and the names and their abbreviations, of
international 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 which 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
registration of a trademark, that organisation is entitled to restrain
24 ġ CAP. 416. TRADEMARKS
any use 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 question began before 1 January
2000.
Notification under 
Article 6 ter  of the 
Convention.
53. (1) For the purposes of article 51 State emblems of a
Convention country (other than the national flag), and official signs
or hallmarks, shall be regarded as protected under the Paris
Convention 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 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.
(2) For the purposes of article 52 the emblems, abbreviations
and names of an international organisation shall be regarded as
protected under the Paris Convention only if, or to the extent that -
( a ) the organisation in question has notified Malta in
accordance with Article 6 ter (3) of the Convention that
it 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 registration
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 prescribed in the regulations, a list of
the state emblems and official signs or hallmarks, and the emblems,
abbreviations and names of international organisations, which are
for the time being protected under the Paris Convention by virtue of
notification under Article 6 ter  (3).
Acts of agent or 
representative: 
Article 6 septies.
54. (1) The following provisions apply where an application
for registration of a trademark is made by a person who is an agent
or representative of a person who is the proprietor of the mark in a
Convention country.
(2) The proprietor may by writ of summons 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.
TRADEMARKS ġ CAP. 416.  25
(4) Subarticles (2) and (3) shall not apply if, or to the extent
that, the agent or representative shows that his actions were
authorised by the proprietor.
(5) An application under subarticle (2) must be made within
three years of the proprietor becoming aware of the registration;
and no injunction shall be granted under subarticle (3) in respect of
a use in which the proprietor has acquiesced for a continuous
period of three years or more.
PART IV
ADMINISTRATIVE AND OTHER SUPPLEMENTARY 
PROVISIONS
The register
Maintenance and 
content of register.
55. (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, in
the expression “registered trademark”, are, unless the
context otherwise requires, to registration in that
register.
(2) There shall be entered in the register in accordance with
this Act -
( a ) registered trademarks,
( b ) such particulars as may be prescribed of registrable
transactions affecting a registered trademark, and
( c ) such other matters relating to registered trademarks as
may be prescribed.
(3) The register shall be kept in such manner as may be
prescribed, and provision shall 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.
56. (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 registration
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 be made to the Court; and
( b ) if the application is made to the Comptroller, he may
at any stage of the proceedings refer the application to
the Court.
(3) Except where the Comptroller or the Court directs
26 ġ CAP. 416. TRADEMARKS
otherwise the effect of rectification of the register is that the error
or 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 registered trademark, or a licensee,
enter any change in his name or address as recorded in the register.
(5) The Comptroller may remove from the register any matter
appearing to him to have ceased to have effect.
Adaptation of 
entries to new 
classification.
57. (1) The Minister may by regulations make rules
empowering the Comptroller to do such things as may be necessary
to implement any amended or substituted classification of goods or
services for the purposes of the registration of trademarks, and
without prejudice to the generality of the aforesaid provision may
in particular be made for the amendment of existing entries on the
register so 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 where it
appears to the Comptroller that compliance with this requirement
would involve undue complexity and that any extension would not
be substantial and would not adversely affect the right of any
person.
(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 renew the registration of the
trademark in the event of his failing to do so.
(4) Any such proposal shall be advertised, and may be opposed,
in such manner as may be prescribed.
Powers and duties of the Comptroller
Power to require 
use forms.
58. The Comptroller may require the use of such forms as he
may direct for any purpose relating to the registration of a
trademark or any other proceeding before him under this Act.
Information about 
applications and 
registered 
trademarks.
59. (1) Subject to such restrictions as the Minister may by
regulations impose after publication of the registration of a
trademark, the Comptroller shall on request provide a person with
such information and permit him to inspect such documents
relating to the registered trademark, as may be 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 application
shall not be published by the Comptroller or communicated by him
to any person except -
( a ) in such cases and to such extent as may be prescribed,
or
( b ) with the consent of the applicant.
TRADEMARKS ġ CAP. 416.  27
Exclusion of 
liability in respect 
of official acts.
60. (1) The Comptroller shall not be taken to warrant the
validity of the registration of a trademark under this Act or under
any treaty, convention, arrangement or engagement to which Malta
is a party.
(2) The Comptroller is not subject to any liability by reason of,
or in connection with, any examination required or authorised by
this Act, or any such treaty, convention, arrangement or
engagement, or any report or other proceedings consequent on such
examination.
(3) No action shall lie against an officer of the Comptroller in
respect of any matter for which, by virtue of this article, the
Comptroller is not liable.
Legal proceedings and appeals
Registration to be 
prima facie 
evidence of 
validity.
61. In all legal proceedings relating to a registered trademark
(including proceedings for rectification of the register) the
registration of a person as proprietor of a trademark shall be  prima
facie  evidence of the validity of the original registration and of any
subsequent assignment or other transmission of it.
Certification of 
validity of 
contested 
registration.
62. (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 registered, 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, he shall be entitled to his costs unless the
Court directs otherwise.
Comptroller’s 
appearance in 
proceedings 
involving the 
register.
63. (1) In proceedings before the Court involving a demand
for -
( a ) the revocation of the registration 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 notified with the proceedings and shall 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 statement
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 Industrial Property Office in like
cases, or
( d ) such matters relevant to the issues and within his
knowledge as Comptroller as he thinks fit;
28 ġ CAP. 416. TRADEMARKS
and the statement shall be deemed to form part of the evidence in
the proceedings.
Appeals from the 
Comptroller’s 
decision.
64. (1) Any decision of the Comptroller under this Act, may
be appealed from, before the Court of Appeal composed in the
manner provided in subarticle (6) 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 subarticle (1) of this article “decision”
means any act, other than such acts as may by regulations be
prescribed, done by the Comptroller in exercise of a discretion
vested in him by or under 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.
Rules, fees, hours of business, etc.
Power of Minister 
to make rules.
65. (1) The Minister responsible for the protection of
industrial property may make regulations for the better
administration of this Act, making such rules as are required by any
provisions of this Act, prescribing anything authorised or required
by any provision of this Act to be prescribed, and generally for
regulating practice and procedure under this Act, and in particular
provision may be made -
( a ) with regard to the manner of filing of applications and
other documents;
( b ) requiring and regulating the translation 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 proceeding under this
Act;
( f ) providing for the extension of any time limit so
prescribed, or specified by the Comptroller whether or
not such time limit has already expired.
Fees. 66. (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, and
( b ) the circumstances, if any, in which a fee may be repaid
or remitted.
Hours of business 
and business days.
67. (1) The Comptroller may give directions specifying the
hours of business of the Industrial Property Office for the purpose
of the transaction by the public of business under this Act, and the
days which are business days for that purpose.
TRADEMARKS ġ CAP. 416.  29
(2) Business done on any day after the specified hours of
business, or on a day which is not a business day, shall be deemed
to have been done on the next business day; and where the time for
doing anything under this Act expires on a day which is not a
business day, that time shall be extended to the next business day.
(3) Directions under this article may make different provision
for different classes of business and shall be published in the
prescribed manner.
Trademark agents
Recognition of 
agents.
68. 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 procedure
relating to a registered trademark, may be done by or in respect of
an agent authorised by that person in writing.
The register of 
trademark agents/
attorneys.
69. (1) The Minister may make rules requiring the keeping of
a register of persons who act as agent for the purpose of applying
for or obtaining the registration of trademarks; and in this Act a
“registered trademark agent” means a person whose name is
entered 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 ) require the payment of such fees in connection 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 words “registered
trademark 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.
70. The provisions of article 588 of the Code of Organization
and Civil Procedure shall apply with regard to registered trademark
agents as it applies with respect to Advocates and legal procurators.
Power to 
Comptroller to 
refuse to deal with 
certain agents.
71. The Comptroller may, in accordance with such rules as
may be prescribed refuse to recognize as agent in respect of any
business 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 agent on the ground of misconduct;
( c ) a person who is found to have been guilty of such
30 ġ CAP. 416. TRADEMARKS
conduct as would, in the case of an individual
registered in the register of trademark agents, render
him liable to have his name erased from the register on
the ground of misconduct;
( d ) a partnership or body corporate of which one of the
partners or directors is a person whom the registrar
could refuse to recognize under paragraph ( a ), ( b ) or
( c ) above.
PART V
CRIMINAL OFFENCES
Offences
Unauthorised use 
of trademark, etc., 
in relation to 
goods.
72. (1) Any person who with a view to gain for himself or
another, or with intent to cause loss to another, and without the
consent of the proprietor -
( a ) applies to goods or their packaging a sign identical to,
or likely to be mistaken for, a registered trademark, 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 material 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 packaging goods, or as a
business paper in relation to goods, or 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 offence against this article.
TRADEMARKS ġ CAP. 416.  31
(2) A person does not commit an offence against this article
unless -
( a ) the goods to which the offence 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 repute of the trademark.
(3) It is a defence for a person charged with an offence against
this article to show that he believed on reasonable grounds that the
use of the sign in the manner in which it was used, or was to be
used, was not an infringement of the registered trademark.
(4) A person guilty of an offence under this article shall be
liable on conviction to imprisonment for a term not exceeding three
years or to a fine ( multa ) of not more than ten thousand liri or to
both such fine and imprisonment.
Falsification of 
register, etc.
73. (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 offence 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 two
years or a fine ( multa ) of not more than five thousand liri or to both
such fine and imprisonment.
Falsely 
representing 
trademark as 
registered.
74. (1) It shall be an offence against this article for a person - 
( a ) falsely to represent that a mark is a registered
trademark, or
( b ) to make a false representation as to the goods or
services for which a trademark 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 relation
to a trademark -
( a ) of the word “registered”, or
( b ) of any other word or symbol importing a reference,
express or implied, to registration,
shall be deemed to be a representation as to registration under this
Act unless it is shown that the reference is to registration elsewhere
than in Malta and that the trademark is in fact so registered for the
goods or services in question.
(3) A person guilty of an offence against this article shall be
32 ġ CAP. 416. TRADEMARKS
liable on conviction to a fine ( multa ) of not more than five
thousand liri.
Unauthorised use 
of certain devices, 
emblems, etc.
75. (1) A person shall not without the authority of the
President use in connection with any business any device, emblem
or title in such a manner as to be calculated to lead to the belief that
he is employed by, or supplies goods or services to, the President.
(2) Any person who contravenes the provisions of subarticle
(1) of this article shall be guilty of an offence against this article
and shall on conviction be liable to a fine ( multa ) of not more than
three thousand liri.
Delivery up to 
infringing articles, 
etc.
76. The Court may, moreover, in the cases referred to in article
73, 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 articles,
and the apparatus destined for their production, be forfeited, wholly
or in part, and delivered to the holder of the trademark, without
prejudice to any other right to relief under this Act.
Powers of 
Magistrates.
77. 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 goods or things by means of, or in relation to which the offence
has been 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 warrant 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 named therein, and there to search for, seize, and remove such
goods or things.
Where owner of 
goods is unknown.
78. If the owner of any goods or things, which, if he were
convicted of any of the offences referred to in this Part, would be
liable to forfeiture, is unknown or cannot be found, any Magistrate
may in the like manner and in the circumstances required in the last
preceding article, issue the said warrant.
Forfeiture of things 
seized.
79. The goods and things so seized shall be produced before
the Court of Magistrates sitting as a court of criminal judicature,
and such Court shall determine whether they are liable to forfeiture
under this Act.
Procedure where 
owner in unknown.
80. (1) In the case referred to in article 78, the Court shall
order the issue of banns which shall be published twice, with an
interval of at least eight days, in the Government Gazette, and
posted up at the entrance of the building wherein the Court sits, and
in any other 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 banns the owner of such goods or things or
other person interested in such goods or things attends before the
Court at the time and place indicated 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 shall be
lawful for the Court to direct that such goods or things or any of
TRADEMARKS ġ CAP. 416.  33
them be forfeited.
Award of 
compensation to 
parties in good 
faith.
81. 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 direct
that, out of the net proceeds which may be realized by the disposal
of such goods or things and up to the amount thereof, any persons
who, being in good faith, were injured by the forfeiture, be awarded
compensation for any loss caused to them.
Limitation of 
criminal actions.
82. Criminal actions under this Act shall be barred by the lapse
of three years from the day on which the act constituting the
offence was committed, if the person to whose prejudice the act
was committed, had no previous knowledge thereof, in all other
cases the period of limitation shall be one year from the day on
which such person became aware of that act.
Use of forged 
marks.
83. 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 particular class, or the manufacture
thereof by any particular method, where, at the time of the
promulgation 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 goods
are not produced in the place or country indicated in the mark of
manufacture or description so used, the provisions of this article
shall not apply, unless there is added to the mark of manufacture or
description, immediately before or after the name of the said place
or country, in an equally conspicuous manner, the name of the
place or country in which the goods were actually made or
produced, and unless there is also stated that the goods were made
or produced in that place or country.
Person falsely 
representing 
himself as a 
registered 
trademark agent.
84. Any person who falsely claims to be a registered trademark
agent when he is not so registered in accordance with article 69 of
this Act, shall be guilty of an offence against this article and shall
in conviction be liable to a fine ( multa ) of not more than five
hundred liri.
Right to damages 
not affected.
85. 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.
86. No proceedings shall be instituted 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
questioned by the Police, gives full information relating to his
employer and of the facts of the case as known to him.
PART VI
GENERAL PROVISIONS
Burden of proving 
use of trademark.
87. 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 has been made shall lie on the
34 ġ CAP. 416. TRADEMARKS
proprietor.
Limitations of civil 
action.
88. Civil actions under this Act shall be barred by the lapse of
five years in all cases in which no other period within which such
actions may be brought is fixed in this Act 
PART VII 
TRANSITORY PROVISIONS
Interpretation. 89. (1) In this Part -
Cap. 29.
“existing registered mark” means a trademark, registered under
the Industrial Property (Protection) Ordinance immediately before
the commencement of this Act;
“former register” means the register kept under the Old Law;
“new register” means the register kept under this Act;
“Old Law” means the Industrial Property (Protection) Ordinance
and any other enactment or rule of law applying to existing
registered marks immediately before the commencement of this
Act.
(2) For the purposes 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
( b ) the date on which it was made shall be taken to be the
date of filing under the Old Law.
Existing registered 
marks.
90. (1) Existing registered marks shall, on the commencement
of this Act, be transferred to the new register and subject to the
provisions of this Part, shall have effect as if they were registered
under this Act.
(2) Existing registered marks registered as a series under
article 91(2) and 91(3) of the Ordinance shall be similarly
registered in the new register 
(3) In any other case notes indicating that existing registered
marks are associated with other marks shall cease to have effect on
the commencement of this Act 
Proceedings under 
the Old Law.
91. (1) Proceedings under the Old Law which are pending on
the commencement of this Act shall be dealt with under the Old
Law and any necessary alteration pursuant to such proceedings
shall be made to the new register.
(2) A disclaimer or limitation entered on the former register in
relation to an existing registered mark immediately before the
commencement of this Act shall be transferred to the new register
and have effect as if entered on the register in pursuance of article
13 of this Act. 
Effects of 
registration 
infringement.
92. (1) Upon the coming into force of this Act articles 9 to 12
of this Act shall apply in relation to an existing registered mark and
subject to subarticle (2) hereof, article 14 of this Act shall apply in
relation to any infringement of an existing registered mark
TRADEMARKS ġ CAP. 416.  35
committed after the commencement of this Act.
(2) After the coming into force of this Act, it shall not be an
infringement of -
( a ) an existing registered mark, or
( b ) a registered trademark of which the distinctive
elements are the same or substantially the same as
those of an existing registered mark and which is
registered for the same goods or services,
to continue with any use which did not amount to infringement of
the existing registered mark under the Old Law.
Infringing goods, 
material or articles.
93. Article 16 of this Act shall apply to infringing goods,
material or articles whether made before or after the
commencement of this Act.
Rights and 
remedies of 
licensee or 
authorised user.
94. (1) Article 28 of this Act shall apply to licences granted
before the commencement of this Act, but only in relation to
infringements committed after its commencement.
(2) Paragraph 12 of the Second Schedule of this Act shall apply
only in relation to infringements committed after the
commencement of this Act.
Co-ownership of a 
registered mark.
95. The provisions of article 22 of this Act shall apply as from
the commencement of this Act to an existing registered mark of
which two or more persons were immediately before the
commencement of this Act registered as joint proprietors.
Assignment, etc., 
of a registered 
mark.
96. (1) Article 23 of this Act shall apply to transactions and
events occurring after the commencement of this Act in relation to
an existing registered mark; and the Old Law shall continue to
apply in relation to transactions and events occurring before its
commencement.
Cap. 29.
Property (Protection) Ordinance shall be transferred on the
commencement of this Act to the new register and have effect as if
made under article 24 of this Act.
(3) An application for registration of an assignment under
articles 98 and 100 of the Industrial Property (Protection)
Ordinance which is pending before the Comptroller on the
commencement of this Act shall be treated as an application for
registration of an assignment under article 24 of this Act and shall
be acted upon accordingly:
Provided that the Comptroller may require the applicant to
amend his application so as to conform with the requirements of
this Act.
(4) An application for registration of an assignment under
articles 98 and 100 of the Industrial Property (Protection)
Ordinance which has been determined by the Comptroller but not
finalised before the commencement of this Act shall be dealt with
under the Old Law; and sub-paragraph (2) above shall apply in
relation to any resulting entry in the register.
(5) Where, before the commencement of this Act, a person has
36 ġ CAP. 416. TRADEMARKS
become entitled by assignment or transmission to an existing
registered mark but has not registered his title, any application for
registration of an assignment after its commencement shall be made
under article 24 of this Act.
Licensing of a 
registered mark.
97. Articles 26 and 27(2) of this Act shall apply only in
relation to licences granted after the commencement of this Act.
Pending 
applications for 
registration.
98. (1) An application for registration of a mark under the Old
Law which is pending on the commencement of this Act shall be
dealt with under the Old Law, subject to the other provisions of this
article, and, when registered, the mark shall be treated for the
purposes of this Part as an existing registered mark.
(2) The power of the Minister under article 65 of this Act to
make rules regulating practice and procedure, and in relation to the
matters mentioned in subarticle (2) of that article, is exercisable in
relation to such an application; and different provision may be
made for such applications from that made for other applications.
Conversion of 
pending 
application.
99. (1) In the case of a pending application for registration
which has not been advertised under article 87 of the Industrial
Property (Protection) Ordinance before the commencement of this
Act, the applicant may give notice to the Comptroller claiming to
have the registrability of the mark determined in accordance with
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 after
the commencement of this Act.
(3) Notice duly given shall be irrevocable and shall have the
effect that the application shall be treated as if made immediately
after the commencement of this Act.
Trademarks 
registered 
according to old 
classification.
100. The Comptroller may exercise the powers conferred by
rules under article 57 of this Act to ensure that any existing
registered marks which do not conform to the system of
classification prescribed under article 32 of this Act are brought in
conformity with such system.
Claim to priority 
from overseas 
application.
101. Article 33 of this Act shall apply to an application for
registration under this Act made after the commencement of this
Act notwithstanding that the Convention application was made
before commencement.
Duration and 
renewal of 
registration.
102. (1) Article 38(1) of this Act applies in relation to the
registration of a mark in pursuance of an application made after the
commencement of this Act; and the Old Law shall continue to
apply in any other case.
(2) Articles 38(2) and 39 of this Act shall apply where the
renewal falls due on or after 1st January, 2001; and the Old Law
shall continue to apply in any other case.
(3) In either case the date of payment of the fee shall be
immaterial.
TRADEMARKS ġ CAP. 416.  37
FIRST SCHEDULE 
COLLECTIVE MARKS
General
1. The provisions of this Act apply to collective marks
subject to the following provisions which may, by regulations, be
amended by the Minister.
Signs of which a collective mark may consist
2. In relation to a collective mark the reference in the
definition of “trademark” in article 2 to distinguishing goods or
services of one undertaking from those of other undertakings shall
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.
Indication of geographical origin
3. Notwithstanding article 4(1)( c ), a collective mark which
consists of signs or indications which may serve, in trade, to
designate the geographical origin of the goods or services may be
registered:
Provided that the proprietor of such a mark shall not be
entitled to prohibit the use of the signs or indications in accordance
with honest practices in industrial or commercial matters
particularly by a person who is entitled to use a geographical name.
Mark not to be misleading as to character or significance
4. (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 something 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 the
provisions of article 36(2), an application may be amended so as to
comply with any such requirement.
Regulations governing use of collective mark
5. An applicant for registration of a collective mark must file
with the Comptroller regulations governing the use of the mark
specifying the persons authorised to use the mark, the conditions of
membership of the association and, where they exist, the conditions
for the use of the mark, as well as any sanctions against misuse and
any further requirements with which the regulations have to comply
as may be established by any rule made by the Minister.
Approval of regulations by Comptroller
6. (1) A collective mark shall not be registered unless the
regulations governing the use of the mark -
( a ) comply with paragraph 5(2) and any further
requirements imposed by rules, and
38 ġ CAP. 416. TRADEMARKS
( 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 the
application for registration of a collective mark, the applicant fails
to file the regulations with the Comptroller and pay the prescribed
fee.
7. (1) The Comptroller shall consider whether the
requirements mentioned in paragraph 6(1) are met.
(2) If it appears to the Comptroller that those requirements are
not met, he shall inform the applicant and give him an opportunity,
within such period as the Comptroller may specify, to make
representations or to file amended regulations.
(3) If the applicant fails to satisfy the Comptroller that those
requirements are met, or to file regulations amended so as to meet
them, or fails to respond before the end of the specified period, the
Comptroller shall refuse the application.
(4) If it appears to the Comptroller that those requirements,
and the other requirements for registration, are met, he shall accept
the application and shall proceed in accordance with article 37.
Regulations to be open to inspection
8. The regulations governing the use of a registered collective
mark shall be open to public inspection in the same way as the
register.
Amendment of regulations
9. An amendment of the regulations governing the use of a
registered collective mark is not effective unless and until the
amended regulations are filed with the Comptroller and accepted by
him.
Infringement: rights of authorised users
10. The provisions of subarticle (6) of article 10 and of
subarticle (2) of article 19 apply in relation to an authorised user of
a registered collective mark as in relation to a licensee of a
trademark.
11. (1) The following provisions have effect as regards the
rights of an authorised user in relation to infringement of a
registered collective mark.
(2) An authorised user is entitled, subject to any agreement to
the contrary between him and the proprietor, to call on the
proprietor to take infringement proceedings in respect of any matter
which affects his interests.
(3) If the proprietor refuses to do so, or fails to do so within
two months after being called upon, the authorised user may bring
the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought by virtue of
this paragraph, the authorised user may not, without the leave of
TRADEMARKS ġ CAP. 416.  39
the Court, proceed with the action unless the proprietor is joined in
the suit.
(5) In infringement proceedings brought by the proprietor of a
registered collective mark any loss suffered or likely to be suffered
by authorised users shall be taken into account by the Court which
shall give such directions as it thinks fit with regard to the disposal
and distribution of any sum awarded as a remedy for infringement.
Grounds for revocation of registration
12. Apart from the grounds of revocation provided for in
article 42, the registration of a collective mark may be revoked on
the ground - 
( a ) 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 paragraph 4(1),
or
( b ) that the proprietor has failed to observe, or to secure
the observance of, the regulations governing the use of
the mark, or
( c ) that an amendment of the regulations has been made so
that the regulations - 
(i) no longer comply with paragraph 5, or
(ii) are contrary to public policy or to accepted
principles of morality.
Grounds for invalidity of registration
13. Apart from the grounds of invalidity provided for in article
43, the registration of a collective mark may be declared invalid on
the ground that the mark was registered in breach of the provisions
of paragraph 4(1) or 6(1) of this Schedule.
SECOND SCHEDULE
CERTIFICATION MARKS
General
1. 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
2. In relation to a certification mark the reference in the
definition of “trademark” in article 2 to distinguishing goods or
services of one undertaking from those of other undertakings shall
be construed as a reference to distinguishing goods or services
which are certified from those which are not.
Indication of geographical origin
3. Notwithstanding article 4(1)( c ), a certification mark which
consists of signs or indications which may serve, in trade, to
designate the geographical origin of the goods or services may be
40 ġ CAP. 416. TRADEMARKS
registered:
Provided that the proprietor of such a mark is not entitled
to prohibit the use of the signs or indications in accordance with
honest practices in industrial or commercial matters (in particular,
by a person who is entitled to use a geographical name).
Nature of proprietor’s business
4. 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
5. (1) A certification 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 taken to be something
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 36(2), an application may be amended so as to
comply with any such requirement.
Regulations governing use of certification mark
6. 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 characteristics
to be certified by the mark, how the certifying body is to test those
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
any rule made by the Minister.
Approval of regulations, etc.
7. (1) A certification mark shall not be registered unless -
( a ) the regulations governing the use of the mark -
(i) comply with paragraph 6(2) 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 mark 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 the
application for registration of a certification mark, the applicant
fails to file the regulations with the Comptroller and pay the
prescribed fee.
8. (1) The Comptroller shall consider whether the
requirements mentioned in paragraph 7(1) are met.
TRADEMARKS ġ CAP. 416.  41
(2) If it appears to the Comptroller that those requirements are
not met, he shall inform the applicant and give him an opportunity,
within such period as the Comptroller may specify, to make
representations or to file amended regulations.
(3) If the applicant fails to satisfy the Comptroller that those
requirements are met, or to file regulations amended so as to need
them, or fails to respond before the end of the specified period, the
Comptroller shall refuse the application.
(4) If it appears to the Comptroller that those requirements,
and the requirements for registration are met, he shall accept the
application and shall proceed in accordance with article 37.
Regulations to be open to inspection
9. The regulations governing the use of a registered
certification mark shall be open to public inspection in the same
way as the register.
Amendment of regulations
10. An amendment of the regulations governing the use of a
registered certification mark is not effective unless and until the
amended regulations are filed with the Comptroller and accepted by
him.
Consent to assignment of registered certification mark
11. The assignment or other transmission of a registered
certification mark is not effective without the consent of the
Comptroller.
Infringement: right of authorised users
12. The provisions of subarticle (6) of article 10 and of
subarticle (2) of article 19 apply in relation to an authorized user of
a registered certificate mark as in relation to a licensee of a
trademark.
13. In infringement proceedings brought by the proprietor of a
registered certification mark any loss suffered or likely to be
suffered by authorised users shall be taken into account by the
Court which shall give such directions as it thinks fit with regard to
the disposal and distribution of any sum awarded as a remedy for
infringement.
Grounds for revocation of registration
14. Apart from the grounds of revocation provided for in
article 42, the registration of a certification mark may be revoked
on the ground -
( a ) that the proprietor has begun to carry on such a
business in contravention of paragraph 4,
( 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 paragraph 5(1),
( c ) that the proprietor has failed to observe, or to secure
the observance of the regulations governing the use of
the mark,
42 ġ CAP. 416. TRADEMARKS
( d ) that an amendment of the regulations has been made so
that the regulations -
(i) no longer comply with paragraph 6, 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
15. Apart from the grounds of invalidity provided for in article
43, the registration of a certification mark may be declared invalid
on the ground that the mark was registered in breach of the
provisions of paragraph 4, 5(1) or 7(1) of this Schedule.
