Steve Decesare and Alexia Valenzia have contributed to the Malta Chapter for the 6th edition of Global Legal Group’s International Comparative Legal Guide (ICLG) on Designs.
In summary, the guide covers the following topics:
Relevant authorities and legislation
The Comptroller of Industrial Property as established under Article 3 of the Patents and Designs Act is the relevant authority for design matters. Relevant legislation includes the Patents and Designs Act (Chapter 417 of the Laws of Malta) and the Enforcement of Intellectual Property Rights (Regulation) Act (Chapter 488 of the Laws of Malta).
Application for a Design
The chapter explains what can be registered as a design, including the appearance of the whole product, or even part of it, resulting from specific features such as lines, contours, colours, shape, texture, materials and ornamentation. The chapter also sets out the formalities that must be adhered to by design applicants, including the application form, name and address of the applicant, design details, declaration claiming priority (where applicable), and the prescribed fee.
Grounds for refusal
The chapter delves into the grounds for refusal of a design application, including where the design does not fall within the definition of a design, involves national flags or official symbols, is contrary to public policy or accepted principles of morality, or where the applicant is not entitled to it under Maltese law.
Opposition procedure
Section 4 of the chapter describes how under Maltese law, the only way for a design application to be refused is if the Comptroller is of the view that the application falls within the grounds of refusal, and that there is currently no formal opposition procedure specifically for design applications.
Registration and its annotations
Once registered, a design is granted five years of protection, and this period may be renewed for one or more periods of five years each up to a total term of 25 years. Design registrations may also be annotated to document and evidence assignments and licensing.
Invalidity
Sections 7 of the chapter describes the grounds on which a design may be declared invalid, including where the application falls within the grounds of refusal, where the design is not new or does not have individual character, where there is a prior design, where a distinctive sign is used, where there is unauthorised use of copyright-protected work, or where the design involves armorial bearings, flags or emblems of international intergovernmental organisations. The chapter also discusses the procedure for invalidation and the route of appeal.
Enforcement
Section 8 of the chapter describes the different types of enforcement actions that can be taken by design proprietors against third parties, including that infringement proceedings may be brought before the First Hall of the Civil Court through a sworn application. The chapter also covers preliminary and final injunctions, precautionary measures, and corrective measures available under Maltese law.
Current developments
The chapter explores the most significant developments expected in the next year relating to changes that will need to be brought about as a result of the EU’s ‘design package’, and that Malta will be required to implement any national legislation as part of the ‘design package’.
The publication can be accessed here and is one of many legal guides published by Global Legal Group.
