Intellectual property rights are the legally recognized exclusive rights to creations of the mind. Through intellectual property legislation, the creator is granted certain rights over the use, sale, import, export, distribution of that creation, among other rights. Intellectual property rights include copyright, trademark, patents and designs.
Eligibility for copyright
Maltese copyright law appertains to the following works and materials:
- Artistic works
- Audiovisual works
- Literary works
- Musical works
Literary, musical and artistic works cannot be copyrighted unless said material contains original character and has been in some way recorded permanently, accordingly. Ideas, procedures, methods of operations and mathematical concepts cannot be subject to copyright registration, similarly to patents.
A work is not excluded from being copyrighted simply because the production of the work required use of other copyrighted work.
A database is not eligible for copyright unless it constitutes the author’s intellectual creation, either by reason of the selection or by reason of the arrangement of its contents. Moreover, if a database is in fact eligible for copyright, that copyright will not extend over the contents of the database, and is moreover without prejudice to the content of the database.
Who may register a copyright
A copyright may be registered by a natural person who is a citizen of Malta or domiciled or permanently resident in Malta or in a State in which copyright is protected under an international agreement to which Malta is a party. A body of persons or commercial partnership can register a copyright if it is established, registered and vested with legal personality under Maltese law or in accordance with the law of any State party to an international agreement which Malta is also a party to.
Rights enjoyed by the copyright
Following the registration of the copyright the holder may expect to enjoy rights according to the type of work copyrighted.
The rights acquired through the registration of the copyright extend over the authorizing or prohibiting the doing in Malta of any of the following activities:
- Direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part;
- Renting and lending;
- Translation in other languages;
- Adaptation, arrangement and any other alteration and reproduction, distribution, communication, display or performance to the public of the results thereof;
- Broadcasting or re-broadcasting or communication to the public or cable re-transmission;
- Display or performance to the public.
Intellectual property capable of being patented is divided into two classes of inventions:
The intellectual property belonging to a person is subject to patentability where it consists in a new invention, which involves an inventive step and is susceptible of industrial applications. Biological material, whether it is the result of a process or it forms part of a product, may also be successfully patented.
Intellectual property that is not patentable involves:
- scientific and academic discoveries
- aesthetic creations,
- schemes or rules of conduct in activities of any nature
- presentations of information
- any method or procedure for the treatment of a human or animal body by surgery or therapy, or any diagnostic method.
The non-patentability within a patent application or patent does not extend beyond the non-patentable qualities found within such application. Inventions which in some way breach the principles of good morals or public order are not patentable.
Right to apply for and Obtain a Patent
A patent may be applied for by any natural or legal person. The application may be lodged either alone or jointly. The right to the patent is vested with the inventor or the inventor’s successor in title. If the right to a patent is vested jointly with two or more inventors, each inventor will be vested with equal rights.
Where two or more person file an application to patent the same invention, and the inventors make the invention independently of each other, the right to a patent will belong to the inventor whose application would have the earliest filing date. Where priority is claimed the earliest priority date will be considered.
The right to a patent for an invention made during the execution of a commission or a contract of employment will belong to the person who commissioned the work, or the employer, of the inventor, as the case may be, unless there is in force a provision in a contract or a contract which grants the right to the patent to the inventor. Notwithstanding that in the absence of such an agreement the employee will not be entitled to the right to the patent, the said employee will be entitled to a right to equitable remuneration, taking into account the salary of such employee. Where there is no agreement on remuneration, the competent tribunal to decide on the matter will be the First Hall, Civil Court. In all such cases, a clear indication as to the identity of the inventor must be included within the patent, unless the inventor personally sends a signed declaration to the Comptroller stating that the name should not be displayed.
Rights granted upon successfully obtaining the patent, Maintenance of the patent
Upon the issuing of the patent, the patent holder will acquire a number of rights. Once a patent is granted it will provide protection for 20 years from the date of filing of the application. The holder of the patent is also responsible for the patent, which will commence from the third year following the filing date of the patent, and every year thereafter. Maintenance of the patent is subject to the payment of a fee prescribed by the minister.
Where the patented invention is a product, the patent holder will have the right to prevent third parties from performing the following acts without his authorisation:
- The making of a product which incorporates within it the subject-matter of the patent;
- The offering, putting on the market or stocking of any product which incorporates within it the subject-matter of the patent;
- The inducing of third parties from performing any of the above acts.
Where the patented invention is a process, the patent holder will have the right to prevent third parties from performing the following acts without his authorisation:
- The use of a process which is the subject-matter of the patent;
- In respect of any products which come to be by means of the patented process, the offering, putting on the market or stocking of any such product;
- The inducing of third parties from performing any of the above acts.
The protection conferred on an inventor for a patent concerning biological material extends also over any biological material derived from the expressly patented biological material, provided that such biological material is brought about by means of a process of propagation or multiplication using an identical procedure, or any different procedure which essentially possesses the same characteristics of that procedure through which the expressly patented biological material was acquired by the inventor. The same protection is conferred on the holder of a patent of a process, with regard to the biological material produced through such process.
The only limitation to the enforceability of the patent rights is where the activity is done for non-commercial purposes.
Licensing of the patent
A patent may be licensed in whole or in part. Furthermore it may be licensed for the whole or for part of Malta. The license over the patent may be exclusive or non-exclusive. The licensing agreement is done by means of a written contract, validly consented to and signed by the patent holder and by the party that will be licensed to make legal use of the patented intellectual property.
Design, Definition, Registrability
Maltese law defines “designs” as the whole or part of a product resulting from the features or, in particular, the lines, contours, colours, shape, texture and, or the materials of the product itself and, or its ornamentation. A design, once registered, is considered as personal property of its owner.
A design must also be novel in order to be registrable. Novelty, in the law is defined widely as one where no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claim, the date of priority. If, however, there is some other design which contains features that differ immaterially from those of the design in question, the design is considered to be identical.
Another requirement for the registration of a design is what the law refers to as “individual character”. A design possesses individual character if it produces on the informed user and overall impression which differs from the overall impression caused by another design made available to the public before the date of registration of the design.
Designs are not patentable, since it is considered to be an aesthetic creation – expressly prohibited from patentability by the law – but it may be registered. Upon registration the design concept takes the form of a property right and the person possessing that right acquires the rights and remedies available to patents. The person who possesses the rights to the registered design is called a proprietor.
A registered design may be incorporated into another, more complex product. In such a case the design will only be considered to be new and have individual character:
- If once the registrable design is incorporated into the more complex product, the former remains visible through the ordinary use of the more complex product;
- And only to the extent that those visible features of the registrable design themselves fulfil the requirements as to novelty and individual character.
Protection afforded following registration of the design
The scope of protection afforded to a registered design is limited by the extent that it is new and has individual character. If its uniqueness is compromised, Maltese law offers no protection.
The protection afforded to the holder of the right over the registered design extends over any design which does not, in the mind of the informed user, produce a different overall impression than that produced by the registered design. In assessing the scope of protection to be afforded to the designer the degree of freedom of the designer in designing it will be taken into account.
Following the successful registration of the design the term of protection would be of five (5) years from the date of filing of the application. The designer, if he wishes, may extend the terms of protection for a maximum period of twenty-five (25) years from the date of filing of the application for registration of the design. Each extension of protection is of a five (5) year period.
Exclusive rights conferred by design registration
By registering a design the holder of the design will possess the exclusive right to use it, and to prevent any third party from using it without his consent. Use includes the making, offering, putting on the market, importation, export or use of a product in which the design is incorporated or to which it is applied, or else stocking such a product for such purposes. The rights of the design holder commence from the date of registration of the design.
The exercise of rights by the design holder do not extend where the use of the design is for private or non-commercial purposes, if the use of the design involves some experimental purpose, or if it is used for citation or teaching purposes, provided that if they are used for purposes of citation or teaching reference is made to the source.
Co-ownership of registered design
A design may be registered in favour of two or more persons. If a design is registered in favour of two or more persons jointly, each one of the design holders is entitled to an equal undivided share in the registered design, unless there is an agreement to the contrary.
If a registration of a design is co-owned, any one of the co-owners, or his agents, can carry out activities appertaining to the use of the design which would otherwise constitute an infringement of a registered design.
Licensing of the design
A licence may be granted to a person to make use of a design registered to another person. The licence can be either general or limited. Where the design is granted in a limited form the use of the design may be limited to the use of it in a particular way or a particular locality. Unless there is agreement to the contrary, a granted licence binds the successor of the title to the grantor’s interest. Furthermore, if an agreement provides so, a licensee may grant a sub-licence.
What are trademarks?
A trademark is a property right. It is obtained by registration in terms of the Trademarks Act (Cap. 416). The property that may be subject to trademark registration can be of any shape, form, size or nature. The definition provided in the law is the following: ‘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’.
The registration of a trademark
The registration process for trademarks uses the approach reflected in the general intention of the legislator with respect to trademarks. A trademark may never be refused, provided that it satisfies the minimum standards of registration. So once again one finds the law speaking of trademarks in terms of negative conditions. Such conditions offer maximum protection to the holder of the trademark without needlessly making the procedure more onerous. Henceforth the exposition of the trademark with respect to Maltese law will be done in terms of the aforementioned.
A trademark may be refused on either one of two grounds. The first set of grounds, the absolute grounds of refusal, consists in the object of registration not meeting the minimum conditions sufficient for registration of the trademark. The second set of grounds, the relative grounds of refusal, consist in those negative conditions which, when failed, would mean that the there would already have been a trademark registered containing that same, or similar, object.
The absolute grounds for refusal of registration of the object of the trademark include:
- If the object of registration does not fit within the legal definition of “trademark”;
- If the object of registration is devoid of distinctive character;
- If the object of registration all but provides an indication of the kind, quality, purpose, value, geographical origin, time of production of goods or of rendering of services, or an indication as to any other characteristics of the good or service;
- If the object of registration consists only in signs which would have become customary in the language or in the bona fide and established practices of the trade.
A sign will not be registered if the sign consists exclusively of:
- The shape which results from the nature of the goods themselves;
- The shape which is necessary to obtain a technical result;
- The shape which gives substantial value to the shape.
Furthermore, a trademark will not be registered if:
- It is contrary to public policy or the accepted principles of morality;
- It is likely to deceive the public in any way as regards the nature, quality or geographical origin of the goods or services, or in any other manner.
A final set of negative conditions to be met, vis-à-vis the registration of a trademark, consist of:
- that its use is not prohibited under Maltese law
- that the sign is not a specially protected symbol in terms of the Trademarks Act
- that the trademark must not be registered in bad faith.
The relative grounds for the refusal of registration of the trademark arise where:
- The trademark is identical to an earlier trademark, and the grounds of the goods or services for which the trademark is made are identical to those protected;
- The trademark to be registered is identical or similar to one that is already protected, or if there is the possibility that there will be confusion by the general public, including the likelihood of association with an earlier trademark.
The law does not, however, stop at the term ‘confusion’. It goes further by explaining exactly what ‘confusion by the general public’ consists in. Furthermore, the Courts of Malta have further discretion to ascertain the presence, nature and extent of the confusion in the event that the matter cannot be concluded by recourse to the provisions, terms and meanings expressly found in the law.
The effects of a registered trademark
The person in whose name the trademark is registered has exclusive rights over the trademark. They are infringed when use of the trademark is made without the express consent of its proprietor.
Infringement can take place in a number of ways, including use of a sign identical or similar to the trademark, or a sign that causes confusion on the part of the general public or is likely to cause confusion.
Use of a sign which has been trademarked takes place if a person affixes the sign to the goods or their packaging, if he offers or exposes goods for sale, puts them on the market or else stocks them for such purposes under that sign, if that person imports or exports goods under that sign, or if that person uses the sign on business papers or in advertising.
The trademark would not, however, be infringed if a person uses the trademark to identify the product or services of the proprietor of the trademark, or if that person is licensed to make use of the trademark.
Duration of the trademark
A trademark will remain valid for a period of ten (10) years commencing from the date of registration. Following the lapse of the aforementioned period it may be renewed in accordance with the procedure established for the renewal of registrations.
Surrender, revocation and invalidity of the trademark
A trademark may be surrendered by the proprietor in respect of any or all goods or services for which it is registered. Notwithstanding the act of surrendering the trademark, a provision may be made as regards the manner and effect of the surrender, and for protecting the interests of other persons having a right in the registered trademark.
A trademark may be subject to revocation in any one of the following four cases:
- If for a period of five (5) years following the registration procedure the trademark was not put into genuine use in Malta by the proprietor or with his consent, in relation to the goods for which it is registered. This provided that there is no real reason which supports its non-use;
- If the use of the trademark has been suspended for an uninterrupted period of five (5) years, provided that there is no reason which justifies the non-use;
- If as a consequence of the proprietor of the trademark not taking action, the trademark has become the common name in the trade for a product or service for which it is registered;
- If in consequence of the use made out of the trademark by the proprietor or with his consent, the trademark is likely 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.
The trademark will not be revoked in the first two instances if following the lapse of the five (5) year period but before the application for revocation is filed the proprietor once again begins to make use of the trademark. However, if a proprietor resumes use of a trademark within a three (3) month period prior to the filing of the revocation proceedings, that commencement will not prejudice the revocation unless the proprietor can show that the resumption to place prior to becoming aware of the fact that revocation proceedings were to be instituted.
The international registration of trademarks
A trademark may be registered internationally. In this respect the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27 June 1989 (Madrid Protocol). Similarly, the Paris Convention for the Protection of Industrial Property of 20 March 1883.
For more information on the tax treatment of intellectual property companies click here
How can we assist?
At WDM International, we understand the importance of intellectual property, and the value that such property adds to the goodwill of the business. Our experienced practitioners can help you in the following ways:
- To register trademarks, patents and designs in Malta, and also in the EU
- To make searches in local registers and databases for existing trademarks, patents and designs
- Negotiate and draft agreements for domestic and foreign entities
- Advise on copyright protection and apply for licences both in EU and in Third Countries
- Advise on intellectual property infringement