Trademarks are distinctive symbols, designs, figures or expressions which identify the products or services of the individual or legal entities in whose name the trademarks are registered. Trademarks, therefore, do not arise automatically upon creation of the distinctive logo, word or phrase – a specific registration process must take place before ownership of a trademark can be claimed. In certain instances (provided that the right conditions are present), the said mark or expression may nonetheless be protected by copyright, which generally arises without the need for registration; however it should be noted that trade marks and copyright confer different rights upon their owners.
The proprietor of a registered trademark has exclusive rights in the trademark, which can also be licensed to third parties. A third party who makes use of a registered trade mark, within the geographical zone for which it was registered, without the consent of the proprietor will be infringing the proprietor’s rights. Such infringement carries civil and possibly criminal liability.
There are various absolute and relative grounds for refusal of the registration of a trademark, and a registration may also be issued with territorial or specific limitations as to the use of the mark. Registration of trademark is generally refused on absolute grounds where, inter alia, it lacks distinctive character, is made up entirely of signs or indications which are merely descriptive of the goods or services, or where the mark consists entirely of signs or indications which have become customary in the language or established practices of the trade to which the goods and services relate. Registration of a trademark is generally refused on relative grounds in connection with its similarity to other marks in which proprietary rights may subsist.
Trademarks are occasionally confused with trade names, but, in fact, the two are not interchangeable. A trade name is merely the name under which a company does business, and can range from the name of a registered company or partnership to a name simply adopted in trading activities. None of these are registered trademarks. It is important to note that even where the national company registration authority has accepted a company name, no trade mark rights have been granted therewith. Likewise, one must keep in mind that their use of trade name could possibly infringe a third party’s trademark rights – thus, before settling upon the use of a particular trade name, it is always advisable to carry out a search to ensure that the propose name does not belong to someone else.
Another source of confusion are unregistered marks. These are marks which, though not registered as trademarks per se, are so well-know that proprietary rights have been acquired thereto. Various jurisdictions offer varying degrees of protection for such unregistered marks, but in all cases the evidentiary burden required is rather hefty. Thus, even where a mark is renowned, proper registration of the mark is always recommended for the protection of one’s corporate identity.
Trademarks are registered in relation to certain classes of goods or services and in relation to a geographical area. By way of illustration, one can register a particular mark for shoes whereas another person could validly register the same mark for stationery, as the products are not in the same class. Likewise, it is possible that the first registrant has only filed an application in Malta, whereas the second registrant may validly register the same mark, also in relation to shoes, in the United States. Whilst the first registrant could in some limited cases be able to contest the second registration, the general rule is that a trade mark will only give its owner protection only for the product/services in relation to which the mark was registered and only within the geographical area where a valid application was filed. Of course, it is possible to file an application in as many classes of goods/service and in as many jurisdictions as desired.
In view of the above, systems that achieve protection in multiple jurisdictions by means of a single registration have become increasingly more popular than individual national registrations for those who trade beyond national borders in various countries. The obvious benefits of such systems are:
- a simplified registration process;
- a unified application date;
- lower costs as opposed to multiple national registrations;
- harmonised rules;
- simplified subsequent management of the mark as it is possible to to record subsequent changes or to renew the registration through a single procedural step.
The options in this respect are the Madrid System for the International Registration of Marks and the European Community Trade Mark (“CTM”). These are discussed below together with registration of a national trade mark in Malta:
The Madrid System is administered by the World Intellectual Property Organisation. In order for an individual or legal entity to be able to make an application for the registration of a trade mark under this system, the applicant must have a commercial establishment in, must be domiciled in or must be a national of, a country which is a party to the Madrid Agreement on the International Registration of Marks or the Protocol to the Agreement. An application under the Madrid System is first filed in the trade mark office of the applicant’s country (the “Office of Origin”). The applicant then designates the Contracting Parties (i.e. parties to the Madrid Agreement or Protocol), within which it is requesting protection. If the application complies with the necessary requirements, it is published in the WIPO Gazette of Trade Marks and the designated Contracting Parties are notified of the application. The latter have a limited period within which to refuse registration. Where registration takes effect, protection is granted within each designated Contracting Party as from the date of the international registration. The EU is a party to the Protocol and therefore, a CTM may be used as an application in the Office of Origin from which an international registration is commenced. Likewise, an application under the Madrid System can make the EU a designated Contracting Party within its application, thus obtaining the effect of a registered CTM.
The Community Trade Mark system is administered by the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”). It is a unified trademark registration system in Europe, whereby one registration provides protection in all Member States of the EU. Unlike the Madrid system, an individual or legal entity can apply for a CTM without the need for nationality or domicile of the applicant in an EU Member State. An application for a CTM can be made at a national trade mark office, the Benelux Intellectual Property Office or directly with OHIM. In all cases, the final examination to ensure compliance with filing conditions is made by OHIM, who will also check for absolute grounds of refusal and any earlier CTM which may conflict with the proposed registration. The resulting search reports are sent to the applicant who can choose, in the case of a conflict, either to withdraw its application or to limit the application to specific goods or services within a class. The application is then published and owners of earlier CTMs or earlier applications are notified and given the chance to make an opposition within three (3) months from publication. In the event of an opposition, an application may be rejected in whole or in part. Where the opposition is rejected, or where no opposition is made, registration will take effect within all the EU Member States from the date of application.
It is still possible to apply for a national registration of a mark in Malta. The costs for a one-off national registration will, of course, be much lower than those for international or European registration, provided that the need for protection of the mark has arisen only within the Maltese islands. This will be a good and cost-effective option for a national trader who does not intend to promote his product online or abroad. An application for a Maltese trade mark is made with the Malta Intellectual Property Office, who will check the application for compliance with registration rules, earlier marks which may conflict with the proposed marks, and relative and absolute grounds of refusal. Where an application has been accepted as eligible for registration, the Comptroller of Industrial Property shall register the trademark with effect from the date of application.
Equinox offers a holistic service when it comes to trademarks. We can go through the trademark registration process on behalf of our clients, which would entail describing the trademark to be registered, deciding together with the client in which jurisdiciotn(s) or set(s) thereof to register the trademark and also what kind of trademark to register for. We also have the expertise necessary advise and defend our clients against allegations of trademark infringements and initiate litigation on their behalf when their intellectual property rights protected by a trademark have been impinged on.