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Camilleri Preziosi Contributes to ICLG on Trademarks – 2024 Edition

Steve Decesare and Alexia Valenzia have once again contributed the Malta Chapter for the 13th edition of Global Legal Group’s International Comparative Legal Guide (ICLG) on Trademarks. 

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 trademark matters. Relevant legislation includes the Trademarks Act (Chapter 597 of the laws of Malta) and its subsidiary legislation. 

Trademark application formalities 

The article explains the formalities that must be adhered to by trademark applicants in order for their application to be accepted by the Comptroller’s office. 

Grounds for refusal

The article delves into the absolute and relative grounds for refusal of a trademark application, as well as the ways to overcome a refusal. 

Opposition procedure

Section 5 of the article describes the trademark opposition procedure in Malta including who can oppose a trademark application, what the procedure is and the grounds on which an opposition may be filed. 

Registration and its annotations

Once registered, a trademark is granted 10 years of protection, and this period may be renewed for additional periods of 10 years each.  Trademark registrations may also be annotated to document and evidence assignments, registrations of rights in rem and licensing. 

Revocation and invalidity

Sections 8 and 9 of the article describes the grounds on which a trademark may be revoked or declared invalid. We also discuss the grounds of defence that can be raised in response to these actions and the route of appeal.

Enforcement 

Section 10 of the article describes the different types of enforcement actions that can be taken by trademark proprietors against third parties. 

Current developments 

The article explores the following important judgements: Banca Farmafactoring S.p.A vs The Comptroller of Industrial Property and JUD IP Limited (Inferior Appeal Number 47/2021), Case R 405/2022-1 (First Board of Appeal of the EUIPO) and Rothmans of Pall Mall Limited vs BR International Holdings Inc. (Inferior Appeal Number 97/2022).

The publication can be accessed here and is one of many legal guides published by Global Legal Group

Steve Decesare

Steve Decesare and Alexia Valenzia have once again contributed the Malta Chapter for the 13th edition of Global Legal Group...

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Alexia Valenzia

Steve Decesare and Alexia Valenzia have once again contributed the Malta Chapter for the 13th edition of Global Legal Group...

set up a meeting