WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IP/N/IIMLT/TIl 
18 May 2000 
(00-2040) 
Original: Englishl 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
MALTA 
The present document reproduces the textl of the Draft of the Trademarks Act, 2000, as 
notified by Malta under Article 63.2 of the Agreement (see document IP/N/lIMLT/l). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
MALTE 
Le present document contient le textel du projet de Loi sur les marques de fabrique ou de 
commerce, 2000, notifie par Malte au titre de l'article 63:2 de l'Accord (voir le 
document IP/N/lIMLTIl). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIP ALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO 2 DEL ARTicULO 63 DEL ACUERDO 
MALTA 
En el presente documento se reproduce el textol del proyecto de la Ley de Marcas de Fabrica 
ode Comercio, 2000, notificado por Malta en virtud del parrafo 2 del articulo 63 del Acuerdo (vease 
el documento IP/N/1/MLT/l). 
1 In English only'/En angiais seuiement.!En ingies soiamente. IP/N/1/MLT/T/l 
Page 2 
A BILL 
entitled 
AN ACT to regulate Trademarks 
BE IT ENACTED by the President, by and with the advice and 
consent of the House of Representatives, in this present Parliament 
assembled, and by the authority of the same, as follows:-
PART I : PRELIMINARY 
1. This Act may be cited as the Trademarks Act, 2000, and shall Short title and 'f h d h M' , 'bl f h commencement. come mto orce on suc ate as t e mIster responsI e or t e 
protection of Industrial Propelty may by notice in the Gazette establish 
and different dates may be so established for different provisions and 
different purposes thereof. 
2. (l) In this Act, unless the context otherwise requires: 
"business" includes a trade or profession; 
"Comptroller" means the Comptroller of Industrial Property 
and includes any other person appointed to exercise all or any of 
the powers and perform all or any of the duties of the Comptroller; 
"infringement proceedings" in relation to a registered 
trademark, includes proceedings under section 16; 
"Minister" means the Minister responsible for the protection 
of Industrial Property; 
"Paris Convention" means the convention referred to in 
section 49 of this Act; Interpretation, Cap. 29. 
Property right. 
Absolute grounds 
for refusal. IP/N/1/MLT/TIl 
Page 3 
"prescribed" means prescribed by this Act or by any 
regulations made thereunder; 
"publish" means make available to the public, and references 
to publication in relation to registration, are to publication under 
section 37(4); 
"register" means the register of trademarks kept under this 
Act and includes the register of trademarks kept under the Industrial 
Property (Protection) Ordinance, partly repealed by this Act; 
"trade" includes any business or profession; 
"trademark" means any sign capable of being represented 
graphically which is capable of distinguishing goods or services 
of one undertaking from those of other undertakings. A trademark 
may, in particular, consist of words (including personal names), 
figurative element, letters, numerals or the shape of goods or their 
packaging; 
(2) (a) References in this Act to a trademark include, 
unless the context otherwise requires, reference to a collective mark 
or certification mark referred to respectively in sections 45 and 
46. 
(b) References in this Act to use (or any particular 
description of use) of a trademark or of a sign identical with, similar 
to or likely to be mistaken for a trademark, include use (or that 
description of use) otherwise than by means of a graphic 
representation. 
PART II : REGISTERED TRADEMARKS 
Introductory 
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 
4. (1) The following shall not be registered as trademarks -
(a) signs which do not fall within the definition of 
trademarks in section 2; IP/N/1/MLT/TIl 
Page 4 
(b) trademarks which are devoid of any distinctive character; 
(c) trademarks which consist exclusively of signs or 
indications which may serve, in trade, to designate the kind, quality, 
intended purpose, value, geographical origin, the time of production 
of goods or of rendering of services, or other characteristics of 
goods or services; 
(d) trademarks which consist exclusively of signs or 
indications which have become customary in the current language 
or in the bona fide and established practices of the trade: 
Provided that a trademark shall not be refused registration by virtue 
of paragraph (b), (c) or (d) above if, before the date of application for 
registration, it has in fact acquired a distinctive character as a result of 
the use made of it. 
(2) A sign shall not be registered as a trademark if it consists 
exclusively of-
(a) the shape which results from the nature of the goods 
themselves, 
(b) the shape of goods which is necessary to obtain a 
technical result, or . 
(c) the shape which gives substantial value to the goods. 
(3) A trademark shall not be registered if it is -
(a) contrary to public policy or to accepted principles of 
morality, or 
(b) of such a nature as to deceive the public or likely to 
deceive the public as to the nature, quality or geographical origin 
of the goods or service or in any other manner. 
(4) A trademark shall not be registered if or to the extent 
that its use is prohibited in Malta by any enactment or rule of law. 
(5) A trademark shall not be registered in the cases specified, 
or referred to, in section 5. 
(6) A trademark shall not be registered if, or to the extent 
that, the application is made in bad faith. Specially protected 
emblems. 
Relative grounds for 
refusal of 
registration. IP/N/1/MLT/T/1 
Page 5 
5. (1) A trademark which consists of or contains -
(a) the arms, or any of the principal armorial bearings of 
the arms appeltaining 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 
Episcopalpatronage or authorization, 
shall not be registered unless it appears to the Comptroller that consent 
has been given by or on behalf of the President or the Archbishop. 
(2) A trademark which consists of a representation of the 
national flag of Malta shall not be registered. 
(3) A trademark which contains a representation of the 
national flag of Malta shall not be registered if it appears to the 
Comptroller that the use of the trademark would be misleading or grossly 
offensive. 
(4) A trademark shall not be registered in the cases specified 
in section 51 or section 52: 
Provided that the Minister may by regulation extend the 
applicability of the provisions of this subsection to apply mutatis 
mutandis in respect of religions other than the Roman Catholic Apostolic 
Religion. 
6. (1) A trademark shall not be registered if it is identical with 
an earlier trademar~ and the goods or services for which the trademark 
is applied for are identical with the goods or services for which the 
earlier trademark is protected. 
(2) A trademark shall not be registered if because it is either 
identical with an earlier trademark and is to be registered for goods or 
services similar to those for which the earlier trademark is protected, or 
it is similar to an earlier trademark and is to be registered for goods or 
services identical with or similar to those for which the earlier trademark 
is protected, there exists a likelihood of confusion on the part of the 
public, including the likelihood of association by the public with the 
earlier trademark: IP /Nil /ML TIT 11 
Page 6 
Provided that the mere association without the likelihood of 
confusion shall not prevent a mark from being registered. 
(3) A trademark which-
Ca) is identical with or similar to an earlier trademark, and 
Cb) 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 -
Ca) 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 subsections (1) to (3) in particular by 
virtue of the law of copyright, or registered designs. 
A person thus entitled to prevent the use of a trademark is referred 
to in this Act as "the proprietor of an earlier right" in relation to the 
trademark. 
(5) Nothing in this section prevents the registration of a 
trademark where the proprietor of the earlier trademark or the proprietor 
of an earlier right consents to the registration. 
7. (1) In this Act an "earlier trademark" means -
Ca) 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, 
Cb) 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. Meaning of "earlier 
trademark", Power to remove 
relative grounds for 
refusal of 
registration. 
Rights conferred by 
a registered 
trademark. IP/N/1/MLT/TIl 
Page 7 
(2) Subject to its being so registered, references in this Act 
to an earlier trademark includes a trademark in respect of which an 
application for registration has been made and which, if registered, would 
be an earlier trademark by virtue of subsection lea). 
(3) A trademark as is referred to in subsection (l)(a) whose 
registration expires shall continue to be taken into account in determining 
the registrability of a later mark for a period of one year after the expiry 
thereof. However, if the Comptroller is satisfied that there was no bona 
fide use of the mark during the two years immediately preceding the 
expiry no account shall be taken of the expired mark. 
8. (1) The Minister may make regulations providing that a 
trademark shall not be refused registration on a ground mentioned in 
section 6. 
(2) Such regulations may make such consequential 
provision as appears to the Minister appropriate with respect to -
(a) the carrying out by the Comptroller of searches of earlier 
trademarks, and 
(b) the persons by whom an application for declaration of 
invalidity may be made on the grounds specified in section 43(2). 
(3) Regulations making such provision as is mentioned in 
subsection (2)(a) may direct that the provisions of section 35 in so far 
as they require a search to be carried out shall not have effect. 
(4) Regulations making such provision as is mentioned in 
subsection (2)(b) may provide that section 43(3) in so far as it provides 
that any person may make an application for a declaration of invalidity 
shall have effect subject to the provisions of the order. 
(5) Regulations under this section may contain such 
transitional provisions as appear to the Minister to be appropriate. 
Effects of a registered trademark 
9. (1) The proprietor of a registered trademark has exclusive 
rights in the trademark. Such rights are infringed by such use of the 
trademark in Malta as is specified in section 10 without the consent of 
the proprietor. 
(2) Any reference in this Act to the infringement of a 
registered trademark shall be deemed to be a reference to any such 
infringemer.t of the rights of the proprietor. JP /N/1/ML TIT /1 
PageS 
(3) The rights of the proprietor have effect from the date of 
registration reckoned in accordance with section 37(3): 
Provided that -
(a) no infringement proceedings may be begun before the 
date on which the trademark is in fact registered; and 
(b) no offence under section 72 shall be committed by 
anything done before the date of publication of the registration. 
10 (1) A . f' . d d k 'fh . Infringementofa . person In nnges a reglstere tra emar 1 e uses In registered 
the course of trade a sign which is identical with the trademark in relation trademark. 
to goods or services which are identical with those for which it is 
registered. 
(2) A person infringes a registered trademark if he uses in 
the course of trade a sign where because -
(a) the sign is identical with the trademark and is used in 
relation to goods or services similar to those for which the 
trademark is registered, or 
(b) the sign is similar to the trademark and is used in relation 
to goods or services identical with or similar to those for which 
the trademark is registered, 
there exists a likelihood of confusion on the part ofthe 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 
Cb) 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. Limits on effect of a 
registered 
trademark. IP/N/lIMLT/TIl 
Page 9 
C 4) For the purposes of this section a person uses a sign if, 
in particular, he -
Ca) affixes it to the goods or the packaging thereof; 
Cb) 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 
Cd) uses the sign on business papers or in advertising. 
(5) A person who applies a registered trademark to material 
intended to be used for labelling or packaging goods, as a business 
paper, or for advertising goods or services, shall be treated as a party to 
any use of the material which infringes the registered trademark if when 
he applied the mark he knew or had reason to believe that the application 
of the mark was not duly authorised by the proprietor or a licensee. 
(6) Nothing in the preceding provisions of this section shall 
be construed as preventing the use of a registered trademark by any 
person for the purpose of identifying goods or services as those of the 
proprietor or a licensee. 
However, any such use otherwise than in accordance with 
honest practices in industrial or commercial matters shall be treated as 
infringing the registered trademark if the use without due cause takes 
unfair advantage of, or is detrimental to, the distinctive character or 
repute of the trademark. 
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 -
Ca) the use by a person of his own name or address, 
Cb) 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 IP/N/IIMLT/TIl 
Page 10 
(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. 
Cb) For the purposes of this subsection an "earlier right" 
means an unregistered trademark or other sign continuously used 
in relation to goods or services by a person or his predecessor in 
title from a date prior to whichever is the earlier of -
Ci) the use of the first-mentioned trademark in relation 
to those goods or services by the proprietor or his predecessor 
in title, or 
Cii) the registration of the first-mentioned trademark 
in respect of those goods or services in the name of the 
proprietor or a predecessor in title of his; and 
(iii) an earlier right shall be regarded as applying if, or 
to the extent that, its use is protected by virtue of any rule of 
law. 
12. (1) A registered trademark is not infringed by the use of Exhaustion of rights 
h d k· l' d h' h h b h k' conferred by a tetra emar In re atlOn to goo s W IC ave een put on t e mar et III registered 
Malta under that trademark by the proprietor or with his consent. trademark. 
(2) Subsection (1) shall not apply where there exist 
legitimate reasons for the proprietor to oppose further dealings in the 
goods in particular but without prejudice to the generality hereof, where 
the condition of the goods has been changed or impaired after they 
have been put on the market. 
13. (1) An applicant for registration of a trademark, or the Reg!stra~ion subject 
. . to disclaImer or propnetor of a regIstered trademark, may - limitation. 
(a) disclaim any right to the exclusive use of any specified 
element of the trademark, or 
Cb) agree that the rights conferred by the registration shall 
be subject to a specified territorial or other limitation. Action for 
infringement. 
Order for erasure, 
etc. of offending 
sign. 
Order for delivery 
up of infringing 
goods, material or 
articles. IPfN/lIMLT/T/l 
Page 11 
(2) The Comptroller may disclaim any right to the exclusive 
use of any specified element of the trademark. 
(3) The Minister may make rules providing for the 
publication and entry in the register of a disclaimer or limitation. 
(4) Where the registration of a trademark is subject to a 
disclaimer or limitation, the rights conferred by section 9 shall be 
restricted accordingly. 
Infringement proceedings 
14. (1) Subject to the provisions of sections 28 and 29, an 
infringement of a registered trademark is actionable by the proprietor 
of the trademark by writ of summons to be filed in the First Hall of the 
Civil Court. 
(2) In an action for infringement all such relief as is available 
in respect of the infringement of any other property right shall be 
available to the plaintiff. 
15. (1) Where a person is found to have infringed a registered 
trademark, the Court may make an order requiring him-
(a) to cause the offending sign to be erased, removed or 
obliterated from any infringing goods, material or articles in his 
possession, custody or control, or 
(b) if it is not reasonably practicable for the offending sign 
to be erased, removed or obliterated, to secure the destruction of 
the infringing goods, material or articles in question. 
(2) If an order under subsection (1) is not complied with, or 
it appears likely to the Court that such an order would not be complied 
with, the Court may order that the infringing goods, material or articles 
be delivered to such person as the Court may direct for erasure, removal 
or obliteration of the sign, or for destruction, as the case may be. 
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. IP/N/1/MLT/T/l 
Page 12 
(2) An application shall not be made after the end of the 
period specified in section 18; and no order shall be made unless the 
Court also makes, or it appears to the Court that there are grounds for 
making, an order under section 19. 
(3) A person to whom any infringing goods, material or 
articles are delivered up in pursuance of an order under this section 
shall, retain them pending the decision of the Court under section 19. 
(4) Nothing in this section affects any other power of the 
Court. 
17. (1) In this Act the expressions "infringing goods", ~:;:;~~fn~fgOodS' 
"infringing material" and "infringing articles" shall be construed in material or articles". 
accordance with the following subsections of this section. 
(2) Goods are "infringing goods", in relation to a registered 
trademark, if they or their packaging bear a sign identical or similar to 
that mark and -
(a) the application of the sign to the goods or their packaging 
is an infringement of the registered trademark, or 
(b) the goods are proposed to be imported into Malta and 
the application in Malta, of the sign, to them or their packaging 
would be an infringement of the registered trademark, or 
(c) the sign has otherwise been used in relation to the goods 
in such a way as to infringe the registered trademark. 
(3) . Material is "infringing material", in relation to a 
registered trademark, if it bears a sign identical or similar to that mark 
and -
(a) it is used for labelling or packaging goods, as a business 
paper, or for advertising goods or services, in such a way as to 
infringe the registered trademark, or 
(b) it is intended to be so used and such use would infringe 
the registered trademark. 
(4) "Infringing articles", in relation to a registered 
trademark, means articles -Period after which 
remedy of delivery 
up not available. 
Order as to disposal 
of infringing goods. 
material or articles. IP/N/lIMLT/TIl 
Page l3 
(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. 
18. (1) An application for an order under section 16 may not 
be made after the end of the period of six years from -
(a) in the case of infringing goods, the date on which the 
trademark was applied to the goods or their packaging, 
(b) in the case of infringing material, the date on which the 
trademark was applied to the material, or 
(c) in the case of infringing articles, the date on which they 
were made, 
except as provided in the following subsection. 
(2) If during the whole or part of that period the proprietor 
of the registered trademark is prevented by fraud or concealment from 
discovering the facts entitling him to apply for an order, an application 
may be made at any time before the end of the period of six years from 
the date on which he could with reasonable diligence have discovered 
those facts. 
19. (1) Where infringing goods, material or articles have been 
delivered up in pursuance of an order under section 16, an action by 
writ of summon may be brought before the Court by any party 
interested -
Ca) for an order that they be destroyed or forfeited to such 
person as the Court may think fit, or 
(b) for a decision that no such order should be made. 
(2) In considering its decision, the Court shall consider 
whether other remedies available in an action for infringement of the 
registered trademark would be adequate to compensate the proprietor 
and any licensee to protect their interests. 
(3) The Court shall order the service of the writ on persons 
having an interest in the goods, material or articles, and any person 
having an interest shall be entitled -IP/N/1/MLT/TIl 
Page 14 
(a) to appear in proceedings for an order under this section, 
whether or not he was~served with a notice, and 
(b) to appeal against any order made, whether or not he 
appeared at first instance, and any such order shall not take effect 
until the end of the period within which an appeal may be filed or, 
if before the end of that period an appeal is so filed, until the final 
determination or abandonment of the proceedings on the appeal. 
(4) Where there is more than one person interested in the' 
goods, material or articles, the Court shall make such order as it thinks 
fit. 
(5) If the Court decides that no order should be made under 
this section, the person in whose possession, custody or control the 
goods, material or articles were before being delivered up is entitled to 
their return. 
20. (1) Where a person threatens another with proceedings for Remedy for 
• " groundless threats mfnngement of a regIstered trademark other than - of infringement 
proceedings. 
(a) use of the mark on goods or their packaging, 
Cb) the importation of goods to which, or to the packaging 
of which, the mark has been applied, or 
(c) the supply of services under the mark, 
any person aggrieved may bring proceedings for relief under this section 
by writ of summons before the Civil Court, First Hall. 
(2) The relief which may be applied for is any of the 
following -
(a) a declaration that the threats are unjustified, 
(b) an injunction against the continuance of the threats, 
(c) damages in respect of any loss he may have sustained 
by the threats, 
and the plaintiff is entitled to suc~ 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. Nature ofa 
registered rademark. 
Co-ownership of a 
registered 
trademark. IP/N/lIMLT/TIl 
Page 15 
(3) Where the defendant shows that the acts in respect of 
which proceedings were threatened constitute or would constitute an 
infringement of the registered trademark, the plaintiff shall nevertheless 
be entitled to relief if he shows that the registration of the trademark is 
invalid or liable to be revoked. 
(4) The mere notification that a trademark is registered, or 
that an application for registration has been made, does not constitute a 
threat of proceedings for the purposes of this section. 
Registered trademark as object of property 
21. A registered trademark is the personal property of its owner. 
22. (1) Where a registered trademark is granted to two or more 
persons jointly, each of them is entitled, subject to any agreement to the 
contrary, to an equal undivided share in the registered trademark. 
(2) The following provisions apply where two or more 
persons are co-proprietors of a registered trademark, by virtue of 
subsection (1) or otherwise. 
(3) Subject to any agreement to the contrary, each co­
proprietor is entitled, personally or through his agents, to do for his 
own benefit and without the consent of or the need to account to any 
other co-pruprietor, any act which would otherwise amount to an 
infringement of the registered trademark. 
(4) Notwithstanding the provisions of subsection (3) a co­
proprietor may not without the consent of the other or others -
(a) grant a licence to use the registered trademark, or 
Cb) assign or cede control of his share in the registered 
trademark. 
(5) Infringement proceedings may be brought by any co­
.proprietor, but a co-proprietor may not, without the leave of the Court, 
proceed with the action unless the other, or each of the other co­
proprietors, is joined in the suit. 
A co-proprietor who is thus joined in the suit shall not be liable for 
any costs in the action. 
Nothing in this subsection affects the making of any precautionary 
warrant on the application of a single co-proprietor. IP/N/1/MLT/TIl 
Page 16 
(6) Nothing in this section affects the rights and obligations 
of trustees or personal representatives, or their rights and obligations as 
such. 
23. (1) A registered trademark is transmissible by assignment, Transmission of a 
d· . . . f 1 . h h registered testamentary ISposltIon or operatIOn 0 aw In t e same way as ot er trademark. 
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 effecti ve 
unless it is in writing signed by or on behalf of the assignor or, as the 
case may be a personal representative. 
(4) Nothing in this Act shall be construed as affecting the 
assignment or other transmission of an unregistered trademark as part 
of the goodwill of a business. 
24. (1) On application being made to the Comptroller by -Registration of 
transactions 
affecting a 
(a) a person claiming to be entitled to an interest in or under rradegisteredk t emar. 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; IP/NI1/MLT/TI 1 
Page 17 
(d) an order of a Court or other competent authority 
transferring a,registered trademark or any right in or under it. 
(3) Until an application has been made for registration of 
the prescribed particulars of a registrable transaction -
(a) the transaction is ineffective as against a person acquiring 
in good faith a conflicting interest in the registered trademark, and 
(b) a person claiming to be a licensee by virtue of the 
transaction shall not have the protection of section 28 or 29. 
(4) Where a person becomes the proprietor or a licensee of 
a registered trademark by virtue of a registrable transaction, he shall 
not be entitled to damages or an account of profits in respect of any 
infringement of the registered trademark occurring after the date of the 
registrable transaction and before the prescribed particulars of the 
transaction are registered, unless: 
(a) an application for registration of the prescribed 
particulars of the transaction is made before the end of the period 
of six months beginning with the date of the transaction, or 
Cb) 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 toa licence 
so as to reflect any alteration of the terms of the licence, and 
(b) the removal of such particulars from the register -
(i) where it appears from the registered particulars that 
the licence was granted for a fixed period and that period has 
expired; 
Cii) 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; IP/N/1/MLT/T/l 
Page 18 
(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. 
25. The provisions of section 21 to 24 apply mutatis mutandis in Ap?lica:ion for 
1 . l' . ch' . f d k' h reglstrattonofa re atIOn to an app IcatIOn lor t e regIstratIOn 0 a tra emar In t e same trademark as an 
manner in relation to a registered trademark. object of property. 
26. (1) A licence to use a registered trademark may be general Licensing of a 
registered or limited. A limited licence may in particular, apply - trademark. 
(a) in relation to some but not all the goods or services for 
which the trademark is registered, or 
Cb) 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. 
27. (1) In· this Act an "exclusive licence" means a licence 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. 
28. (1) The provisions of this section shall apply with respect General p~ovisions 
h . h f l' . I' . f' f' d as to thenghts of to t e ng ts 0 a Icensee In re atlOn to In nngement 0 a regIstere licensees in case of 
trademark: infringement. 
Provided that they shall not apply where or to the extent that, in 
accordance with section 29(1) an exclusive licensee has a right to bring 
proceedings in his own name. 
(2) A licensee is entitled, unless his licence, provides 
otherwise, to call on the proprietor of the registered trademark to take 
infringement proceedings in respect of any matter which affects his 
interests. Exclusive licensee 
having right and 
remedies of 
assignee. (3) If the proprietor -
(a) refuses to do so, or IP/N/1/MLT/T/1 
Page 19 
(b) fails to do so within two months after being called upon, 
the licensee may bring the proceedings in his own name as if he were 
the proprietor. 
(4) Where infringement proceedings are brought by a 
licensee by virtue of this section, the proprietor shall be joined in the 
suit. 
(5) In infringement proceedings brought by the proprietor 
of a registered trademark any loss suffered or likely to be suffered by 
licensees shall be taken into account by the Court which shall give such 
directions as it thinks fit with regard to the disposal and distribution of 
any sum awarded as a remedy for the infringement. 
29. (1) An exclusive licence may provide that the licensee shall 
have, to such extent as may be provided by the licence, the same rights 
and remedies in respect of matters occurring after the grant of the licence 
as if the licence had been an assignment. 
Where or to the extent that such provision is made, the licensee 
shall be entitled, subject to the provisions of the licence and to the 
following provisions of this section, to bring infringement proceedings 
in his own name against any person other than the proprietor. 
(2) The rights and remedies of an exclusive licensee are 
concurrent with those of the proprietor of the registered trademark; and 
references in this Act to the proprietor of a registered trademark relating 
to infringement shall be construed accordingly. 
(3) In an action brought by an exclusive licensee under this 
section a defendant may avail himself of any defence which would have 
been available to him if the action had been brought by the proprietor 
of the registered trademark. 
(4) Where proceedings for infringement of a registered 
trademark are brought by the proprietor or by the exclusive licensee 
relating to an infringement in respect of which they have concurrent 
right of action, the proprietor or, as the case may be, the exclusive 
licensee who are not the plaintiff shall be joined in the suit. 
(5) (a) Where an action for infringement of a registered 
trademark relating to an infringement in respect of which the 
proprietor and an exclusive licensee have concurrent right of action 
is brought:-IP/N/lIMLT/T/l 
Page 20 
(i) the Court shall in assessing damages take into 
account-
(1) the terms of the licence, and 
(2) any pecuniary remedy already awarded or 
available to either of them in respect of the infringement; 
Cii) no account of profits shall be ordered to be made 
if an award of damages has been made, or an account of profits 
has been ordered, in favour of either of them in respect of the 
infringement; and 
(iii) the Court shall, if an account of profits has been 
ordered, apportion subject to any agreement between them, 
the profits between them as the Court considers just. 
(b) The provisions of this subsection apply whether action 
is brought by the proprietor alone, or it is brought by the proprietor 
and the exclusive licensee; and if they are not both parties the 
Court may give such directions as it deems fit with regard to the 
disposal and distribution of any sum awarded as remedy for the 
infringement. 
(6) The proprietor of a registered trademark shall notify any 
exclusive licensee who has a concurrent right of action before applying 
for an order under section 16; and the Court may on the application of 
the licensee make such order under that section as it thinks fit having 
regard to the tenns of the licensee. 
(7) The provisions of subsections (4) to (6) shall· be without 
prejudice to any agreement to the contrary between the exclusive licensee 
and the proprietor. 
Application for a registered trademark 
30. An application for registration of a trademark shall be made Applica~ion for 
h C 11' h b'b d regIstratlOn. to t e omptro er ill suc manner as may e prescn e . 
31. (1) The date of filing of an application for registration of a 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. Classification of 
trademarks. 
Claim to priority of 
Convention 
application. IP/N/lIMLT/T/1 
Page 21 
(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. 
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 
33. (1) A person who has duly filed an application for 
protection of a trademark in a country which is a member of the World 
Trade Organisation or a party to the Paris Convention, hereinafter in 
this Act referred to as a "Convention application", or his successor in 
title, has a right to priority, for the purposes of registering the same 
trademark under this Act for any or all of the same goods or services for 
which such an application has been filed, for a period of six months 
from the date of filing of the first such application. 
(2) lfthe application for registration under this Act is made 
within such six-month period-
(a) the relevant date for the purposes of establishing which 
rights take precedence shall be the date of filing of the first 
Convention application, and 
(b) the registrability of the trademark shall not be affected 
by any use of the mark in Malta in the period between that date 
and the date of the application under this Act. 
(3) (a) Any filing which in a country which is a member 
of the World Trade Organisation or is a party to the Paris Convention 
is under its legislation or any international agreement to which 
such country is a party, treated as if it were a regular national filing, 
shall be treated as giving rise to the right of priority. 
(b) For the purposes of this subsection "regular national 
filing" means a filing which is adequate to establish the date on 
which the application was filed in that country, whatever may be 
the subsequent application. IP/NIlIMLT/TIl 
Page 22 
(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, 
34. (1) The Minister may make regulations conferring on a Claim to priority 
h h d 1 f'l d 1" C 'f d k from other relevant person w 0 as u y 1 e an app lcatIOn lor protectIOn 0 a tra emar overseas 
in a country or territory in relation to which the Maltese Government is application. 
a party to a treaty, convention, arrangement or engagement for the 
reciprocal protection of trademarks, a right to priority, for the purpose 
of registering the same trademark under this Act for any or all of the 
same goods or services, for a such period as may be specified in the 
application from the date of filing of that application, 
(2) Such regulations may make provisions similar to those 
contained in section 33 in relation to Convention applications or such 
other provision as appears to the Minister to be appropriate, 
Registration procedure 
35. (1) The Comptroller shall examine whether an application Examination of 
for registration of a 'trademark satisfies the requirements of this Act and application. 
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. Withdrawal, 
restriction or 
amendment of 
application. 
Registration. IP /N/1/ML TIT /1 
Page 23 
(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 fo the Comptroller that the requirements 
for registration are met, he shall accept the application as eligible for 
registration. 
36. (1) The applicant may at any time withdraw his application 
or restrict the goods or services covered by the application. 
(2) . Save as provided in subsection (1), an application may 
be amended, at the request of the applicant, only by correcting -
(a) the name or address of the applicant, 
(b) errors of wording or of copying, or 
(c) obvious mistakes, 
and then only where the correction does not substantially affect the 
identity of the trademark or extend the goods or services covered by the 
application. 
37. (1) Where an application has been accepted as eligible 
for registration, the Comptroller shall register the trademark, unless it 
appears to him having regard to matters coming to his notice after he 
accepted the application that it was accepted in error. 
(2) A trademark shall not be registered and the application 
shall be deemed to be withdrawn unless any fee prescribed in respect of 
any action taken before the registration is paid within the prescribed 
period. 
(3) A trademark when registered shall be registered as of 
the date of filing of the application for registration, and that date shall 
be deemed for the purposes of this Act to be the date of registration. 
(4) On the registration of a trademark the Comptroller shall 
publish the registration in the prescribed manner and issue to the 
applicant a certificate of registration. IP/N/1/MLT/T/l 
Page 24 
Duration, renewal and alteration of registered trademark 
38. (1) A trademark shall be registered for a period of ten years Du:atio~ of ..' registration. from the date of regIstratIOn. 
(2) Registration may be renewed in accordance with section 
39 for further periods of ten years. 
39. (1) The registration of a trademark may be renewed at the Rc~cwa~ of 
f h . b· h f h ·b d 1 reglstra110n. request 0 t e propnetor, su ~ect to t e payment 0 t e prescn e renewa 
fee not more than 6 months before the date of expiry. 
(2) The Minister may by regulation make rules providing 
that the Comptroller informs the proprietor of a registered trademark, 
before the expiry of the registration, of the date of expiry and the manner 
in which the registration may be renewed. 
(3) Without prejudice to subsection (1) a request for renewal 
must be made, before the expiry of the registration: 
Provided that, the request may be made and the fee paid within 
such further period as may be prescribed, in which case a prescribed 
additional renewal fee must also be paid within that period. 
(4) Renewal shall take effect from the expiry of the previous 
registration. 
(5) If the registration is not renewed in accordance with the 
above provisions, the Comptroller shall remove the trademark from the 
register. 
(6) Provision may be made by rules for the restoration of 
the registration of a trademark which has been removed from the register, 
subject to such conditions (if any) as may be prescribed. 
(7) The renewal or restoration of the registration of a 
trademark shall be published in the prescribed manner. 
40. (1) A registered trademark shall not be altered in the Alterationofa 
. d· h . d f . . 1 registered regIster, unng t e'peno 0 regIstratIOn or on renew a . trademark. 
(2) Nevertheless, the Comptroller may, at the request ofthe 
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. Surrender of a 
registered 
trademark. 
Revocation of 
registration. IP/N/lIMLT/T/l 
Page 25 
(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 
41. (1) A registered trademark may be surrendered by the 
proprietor in respect of any or all of the goods or services for which it is 
registered. 
(2) Provision may be made by rules -
(a) as to the manner and effect of a surrender, and 
(b) for protecting the interests of other persons having a 
right in the registered trademark. 
42. (1) The registration of a trademark may be revoked on any 
of the following grounds -
(a) that within the period of five years following the date of 
completion of the registration procedure it has not been put to 
genuine use in Malta, by the proprietor of with his consent, in 
relation to the goods or services for which it is registered, and 
there are no proper reasons for such non-use; 
(b) that such use has been suspended for an uninterrupted 
period of five years, and there are no proper reasons for such non­
use; 
(c) that, in consequence of acts or inactivity of the proprietor, 
it has become the common name in the trade for a product or service 
for which it is registered; 
(d) that in consequence of the use made of it by the proprietor 
or with his consent, it is liable to mislead the public in relation to 
the goods or services for which it is registered, particularly as to 
the nature, quality or geographical origin of those goods or services. 
(2) For the purposes of subsection (1) use of a trademark 
includes the use in a form differing in such elements which do not alter 
the distinctive character of the mark in the form in which it was 
registered, and use in Malta includes affixing the trademark to goods or 
to the packaging of goods in Malta solely for export purposes. IP/NI1/MLT/TI 1 
Page 26 
(3) The registration of a trademark shall not be revoked on 
the ground mentioned in paragraphs (a) or (b) of subsection (1) if such 
use as is referred to in those paragraphs is commenced or resumed after 
the expiry of the five-year period and before the application for 
revocation is made: 
Provided that, any such commencement or resumption of use after 
the expire of the five-year period but within the period of three months 
before the making of the application shall be disregarded unless 
preparations for the commencement or resumption began before the 
proprietor became aware that the application is likely to be made. 
(4) An application for revocation may be made by writ of 
summons before the First Hall, Civil Court by any person. 
(5) Where grounds for revocation exist in respect of only 
some of the goods or services for which the trademark is registered, 
revocation shall be limited to those goods or services. 
(6) Where the registration of a trademark is revoked to any 
extent, the rights of the proprietor shall be deemed to have ceased to 
that extent as from -
(a) the date of the application for revocation, or 
(b) if grounds for revocation existed at an earlier date, such 
earlier date. 
43. (1) The registration of a trademark may be declared in valid Grounds for 
on the ground that the trademark was registered in breach of section 4 ~~~~:~:fo~: 
or any of the provisions referred to in that section. 
Where the trademark was registered in breach of subsection (1)(b), 
(c) or (d) of that section, it shall not be declared invalid if, in consequence 
of the use which has been made of it, it has after registration acquired a 
distinctive character in relation to the goods or services for which it is 
registered. 
(2) The registration of a trademark may, unless the proprietor 
of that earlier trademark or other earlier right has consented to the 
registration, be declared invalid on the ground -
(a) that there is an earlier trademark in relation to which the 
conditions set out in section 6 (1), (2) or (3) obtain, or Effect of 
acquiescence. IP/N/1/MLT/T/l 
Page 27 
(b) that there is an earlier right in relation to which the 
condition set out in section 6 (4) is satisfied. 
(3) An application for a declaration of invalidity may be 
made by any person, by writ of summons before the First Hall of the 
Civil Court. 
(4) In the case of bad faith in the registration of a trademark, 
the Comptroller himself may apply to the Court for a declaration of the 
invalidity of the registration. 
(5) Where the grounds of invalidity exist in respect of only 
some of the goods or services for which the trademark is registered, the 
trademark shall be declared invalid with regard to those goods or services 
only. 
(6) Where the registration of a trademark is declared invalid 
to any extent, the registration shall to that extent be deemed never to 
have been made: 
Provided that this shall not affect transactions past and closed. 
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 tra.demark was applied for in bad 
faith. 
(2) In the cases referred to in subsection (1), the proprietor 
of the later trademark is not entitled to oppose the use of the earlier 
trademark or, as the case may be, the exploitation of the earlier right, 
notwithstanding that the earlier trademark or right may no longer be 
invoked against his later trademark. 
Collective marks 
Collective marks. 45. (1) A collective mark is a mark distinguishing the goods 
or services of members of an association which is the proprietor of the 
mark from those of other undertakings. IP /N/1/ML T IT /1 
Page 28 
(2) The provisions of this Act apply to collective marks 
subject to the provisions of Schedule 1 to this Act. 
Certification marks 
46. (1) A certification mark is a mark indicating that the goods 
or services in connection with which it is used are certified by the 
proprietor of the mark in respect of origin, material, mode of manufacture 
of goods or performance of services, quality, accuracy or other 
characteristics. 
(2) the provisions of this Act apply to certification marks 
subject to the provisions of Schedule 2. 
PART III : INTERNATIONAL MATTERS 
International registration 
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. Certification marks. 
The Madrid 
Protocol. 
48. (1) The Minister may by Order make such provisions as Power to make 
may be necessary for giving effect in Malta to the provisions of the ~;~e~::~nJ~~~~~ 
Madrid Protocol and without prejudice to the generality of the foregoing. Protocol. 
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; The Paris 
Convention. 
Protection of well­
known trademarks: 
Article 6 his. IP/N/1/MLT/TIl 
Page 29 
(d) the effects of a successful request for extension of 
protection to Malta; 
(e) the transfonnation of an application for an international 
registration, or an international registration, into a national 
application for registration; 
(f) the communication of infonnation to the International 
Bureau; 
(g) the payment of fees and amounts prescribed in respect 
of applications for international registrations, extensions of 
protection and renewals. 
(2) Without prejudice to the generality of subsection (1), 
provision may be made by regulations under this section applying in 
relation to "an international trademark (Malta)" the provisions of section 
20 and of sections 72 to 86 of this Act. 
The Paris Convention 
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 11 of this Act shall no longer apply or shall apply with such 
amendments as may be required. 
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 effectl ve 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. IP/N/1/MLT/T/l 
Page 30 
(2) Subject to the provisions of section 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 subsection (2) shall affect the continuation 
of any bona fide use of a trademark begun before the coming into force 
of this section'. 
51. (1) A trademark which consists of or contains the flag of a National cmblcms, 
C· h 11 b . d' h h h" f etc.,ofConvcntion onventlOn country s a not e reglstere WIt out t e aut onsatlOn 0 countries: 
the competent authorities of that country, unless it appears to the Article 6ler. 
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 section 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 section 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 section 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 ler. 
Notification under 
Article 61er of the 
Convention. IP/NI1/MLT/TI 1 
Page 31 
52. (1) This section 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 section 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 section the authorisation of an 
international organisation is or would be required for the registration of 
a trademark, that organisation is entitled to restrain any use of the mark 
in Malta without its authorisation. 
(5) Nothing in this section affects the right of a person whose 
bona fide use of the trademark in question began before 1 January 2000. 
53. (1) For the purposes of section 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 6ter(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 
6ter(4) or any such objection has been withdrawn. 
(2) For the purposes of section 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 -IP/N/1/MLT/T/l 
Page 32 
(a) the organisation in question has notified Malta in 
accordance with Article 6ter(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 
6ter (4) or any such objection has been withdrawn. 
(3) Notification under Article 6ter (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 6ter (3). 
54. (l) The following provisions apply where an application Acts of age.nt or 
l' • • f d k . d b h . representatlve: 10r regIstratIOn 0 a tra emar IS ma e y a person w 0 IS an agent or Article 6septies. 
representative of a person who is the proprietor of the mark in a 
Convention country. 
(2) The proprietor may make an application by writ of 
summons before the First Hall of the Ci viI Court for a declaration of the 
invalidity of the registration, or may apply for the rectification of the register 
so as to substitute his name as the proprietor of the registered trademark. 
(3) The proprietor may restrain any use of the trademark in 
Malta which is not authorised by him. 
(4) Subsections (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 subsection (2) must be made within 
three years of the proprietor becoming aware of the registration; and no 
injunction shall be granted under subsection (3) in respect of a use in 
. which the proprietor has acquiesced for a continuous period of three 
years or more. Maintenance and 
content of register. 
Rectification or 
correction of the 
register. IP/NI 1 IMLT/TI 1 
Page 33 
PART IV : ADMINISTRATIVE AND OTHER 
SUPPLEMENTARY PROVISIONS 
The 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. 
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 applicat,ion 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 IP 1N/I1MLT rr /1 
Page 34 
(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 
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. 
57. (1) The Minister may by regulations make rules Adaptationof 
. . entries to new empowenng the Comptroller to do such thmgs as may be necessary to classification. 
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-
Ca) 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 
SS. The Comptroller may require the use of such forms as he Power to require use 
may direct for any purpose relating to the registration of a trademark or forms. 
any other proceeding before him under this Act. Infonnation about 
applications and 
registered 
trademarks. 
Exclusion of 
liability in respect 
of official acts. 
Registration to be 
prima facie 
evidence of validity. 
Certification of 
validity of contested 
registration. IP/N/1/MLT/T/l 
Page 35 
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 infonnation 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. 
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 section, the 
Comptroller is not liable. 
Legal proceedings and appeals 
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. 
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 -IP/N/1/MLT/TIl 
Page 36 
for -(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. 
63. (1) In proceedings before the Court involving an application Comptrolle~'s 
appearance In 
proceedings 
(a) the revocation of the registration of a trademark, involving the 
register. 
(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; 
and the statement shall be deemed to form part of the evidence in the 
proceedings. 
64. (1) Any decision of the Comptroller under this Act, may Appeals from the 
be appealed from, before the Court of Appeal composed in the manner ~~c~J:~.lIer·s 
provided in subsection (6) of section 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 subsection (1) of this section "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. Power of Minister 
to make rules. 
Fees. 
Hours of business 
and business days. IPINIlIMLT/TI1 
Page 37 
(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. 
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. 
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. 
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. IP/N/1/MLT/TIl 
Page 38 
(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 section may make different 
provision for different classes of business and shall be published in the 
prescribed manner. 
Trademark ageJJfs 
68. Except as may otherwise be prescribed, any act required or Recognition of 
authorised by this Act to be done by or in respect of a person in agents. 
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. 
69. (1) The Minister may make rules requiring the keeping of The register of 
. f h f f l' c trademark agents! a regIster 0 persons w 0 act as agent or the purpose 0 app ymg lor or attorneys. 
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 section, 
(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) c~rry 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. 
70. The provisions of section 588 of the Code of Organization Privilege for 
d C· '1 P d h 11 1 . h d . t d d k communication with an IVI roce ure s a app y wit regar to regIs ere tra emar registered trademark 
. agents as it applies with respect to Advocates and legal procurators. agents. Power of 
Comptroller to 
refuse to deal with 
certain agents. 
Unauthorised use of 
trademark, etc. in 
relation to goods. IP/N/lIMLT/T/l 
Page 39 
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 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 
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 
Cc) 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 
Cb), 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 IP/N/1/MLT/TIl 
Page 40 
(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 section. 
(2) A person does not commit an offence against this section 
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 section 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 section shall be 
liable on conviction to imprisonment for a term not exceeding three 
years or to a fine (multa) of not more than LMlO,OOO or to both such 
fine and imprisonment. 
73. (1) Any person who knowing or having reason to believe FaI~ification of , register, etc. that it is false:-Falsely representing 
trademark as 
registered. 
Unauthorised use of 
certain devices, 
emblems, etc. IP/N/1/MLT/T/1 
Page 41 
Ca) 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 section. 
(2) A person guilty of an offence against this section shall 
be liable on conviction to imprisonment for a term not exceeding two 
years or a fine (multa) of not more than Lm5,OOO or to both such fine 
and imprisonment. 
74. (1) It shall be an offence against this section for a 
person -
Ca) 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 section, 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 section shall 
be liable on conviction to a fine (multa) of not more than Lm5,OOO. 
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. IP/N/1/MLT/T/1 
Page 42 
(2) Any person who contravenes the provisions of 
subsection (1) of this section shall be guilty of an offence against this 
section and shall on conviction be liable to a fine (multa) of not more 
than Lm3,OOO. 
76. The Court may, moreover, in the cases referred to in section Delivery up of 
73, on the demand of the prosecution, order that the machinery or other intfringing articles, e c. 
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. 
77. Pending any proceedings for anyone 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. 
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 
section, issue the said warrant. 
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. 
80. (1) In the case referred to in section 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. Powers of 
magistrates. 
Where owner of 
goods is unknown. 
Forfeiture of things 
seized. 
Procedure where 
owner is unknown. Award of 
compensation to 
parties in good 
faith. 
Limitation of 
criminal actions. 
Use offorged 
marks. IP/N/1/MLT/TIl 
Page 43 
(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 them be 
forfeited. 
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. 
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. 
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 section 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 countly 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 84. Any person who falsely claims to be a registered trademark 
representing himself h h' . d . d . h . 69 f h' as a registered agent w en e IS not so regIstere III accor ance WIt sectIOn 0 t IS 
trademark agent. Act, shall be guilty of an offence against this section and shall in 
conviction be liable to a fine (multa) of not more than LM500. 
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. IP/N/1IMLT/TI1 
Page 44 
86. No proceedings shall be instituted against any person in the Employer and 
. f h 'f h h h' d f . h h d' Employee. SerVICe 0 anot er person, I, e sows t at m goo rut, e acte m 
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 
87. In any civil proceedings under this Act if a question arises as Burden of proving 
h h· h . d d k h b h b d f use of trademark. to t e use to w lC a reglstere tra emar as een put, t e ur en 0 
proof that a particular use has been made shall lie on the proprietor. 
88. Civil actions under this Act shall be barred by the lapse of Li~tations of civil 
five years in all cases in which no other period within which such actions actIOn. 
may be brought is fixed in this Act. 
PART VII : TRANSITIONAL PROVISIONS 
89. (1) In this Part-Interpretation. 
"existing registered .mark" means a trademark, registered 
under the Industrial Property (Protection) Ordinance immediately Cap. 29. 
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 Cap. 29. 
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. 
Proceedings under 
the Old Law. 
Effects of 
registration: 
infringement. 
Infringing goods, 
material or articles. IP/N/1/MLT/TIl 
Page 45 
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 
section 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. 
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 section 13 of 
this Act. 
92. (1) Upon the coming into force of this Act sections 9 to 12 
of this Act shall apply in relation to an existing registered mark and 
subject to subsection (2) hereof, section 14 of this Act shall apply in 
relation to any infringement of an existing registered mark 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 t~e 
existing registered mark under the Old Law. 
93. Section 16 of this Act shall apply to infringing goods, material 
or articles whether made before or after the commencement of this Act. IP/N/1/MLT/T/l 
Page 46 
94. (1) Section 28 of this Act shall apply to licences granted Rig~ts and remedies 
, , of hcensee or before the commencement of thIS Act, but only In relation to authorised user. 
irifringements committed after its commencement. 
(2) Paragraph 14 of Schedule 2 of this Act shall apply only 
in relation to infringements committed after the commencement of this 
Act. 
95. The provisions of section 22 of this Act shall apply as from Co~ownership of a 
h f h' A ,,' d k f h' h registered mark. t e commencement 0 t IS ct to an eXIstmg regIstere mar 0 w IC 
two or more persons were immediately before the commencement of 
this Act registered as joint proprietors, 
96. (l) Section 23 of this Act shall apply to transactions and Assi~nment. etc. of 
. f h f h' A' I' a registered mark. events occurnng a ter t e commencement 0 t IS ct m re atlOn to an 
existing registered mark; and the Old Law shall continue to apply in 
relation to transactions and events occurring before its commencement. 
(2) Existing entries under sections 98 and 100 of the 
Industrial Property (Protection) Ordinance shall be transferred on the 
commencement of this Act to the new register and have effect as if 
made under section 24 of this Act. 
(3) An application for registration under sections 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 under section 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 under sections 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 become entitled by assignment or transmission to an existing 
registered mark but has not registered his title, any application for 
registration after its commencement shall be made under section 24 of 
this Act. 
97. Sections 26 and 27 (2) of this Act shall apply only in relation Lic~nsingd of ak reglstere mar . to licences granted after the commencement of this Act. Pending 
applications for 
registration. 
Conversion of 
pending application. 
Trademarks 
registered according 
to old classification. 
Claim to priority 
from overseas 
application. 
Duration and 
renewal of 
registration. IP /N/1/ML T IT 11 
Page 47 
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 section, 
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 section 65 of this Act 
to make rules regulating practice and procedure, and in relation to the 
matters mentioned in subsection (2) of that section, is exercisable in 
relation to such an application; and different provision may be made 
for such applications from that made for other applications. 
99. (1) In the case of a pending application for registration 
which has not been advertised under section 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. 
100. The Comptroller may exercise the powers conferred by rules 
under section 57 of this Act to ensure that any existing registered marks 
which do not conform to the system of classification prescribed under 
section 32 of this Act are brought in conformity with such system. 
101. Section 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. 
102. (1) Section 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. IP/N/1/MLT/T/l 
Page 48 
(2) Sections 38(2) and 39 of this Act shall apply where the 
renewal falls due on or after pt 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. 
103. Part III of the Industrial Property (Protection) 
Ordinance and every reference to trademarks in Part IV and Part V 
thereof, shall be deemed as if it were not made. Repeal of certain 
provisions of the 
Industrial Property 
(Protection) 
Ordinance. SCHEDULE 1 : COLLECTIVE MARKS 
General IP/NIlIMLT/TI 1 
Page 49 
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 section 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 section 4( l)(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 section 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 IP/N/lIMLT/T/l 
Page 50 
(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 section 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 subsection (6) of section 10 and of subsection (2) of section 
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. IP/NIlIMLT/TI 1 
Page 51 
(4) Where infringement proceedings are brought by virtue of this paragraph, 
the authorised user may not, without the leave of 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 section 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 
Cc) 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 section 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. IP /N/1/MLT IT 11 
Page 52 
General SCHEDULE 2 : CERTIFICATION MARKS 
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 section 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 section 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 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 t.::> 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 section 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-IP/N/1/MLT/T/1 
:page 53 
(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 applica"tion 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. 
(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 section 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. IP /NI lIML T IT /1 
Page 54 
Infringement: right of authorised users 
12. The provisions of subsection (6) of section 10 and of subsection (2) of section 
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 section 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, 
(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 section 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. 
Objects and Reasons 
The object of this Act is to make new provisions with respect to Trademarks and 
similar rights in substitution of the provisions of the Industrial Property (Protection) 
Ordinance, Cap.29. 