Cap. 597 Art. 6Relative grounds for refusal or invalidity.

(1) A trademark shall not be registered or, if registered, shall be liable to be declared invalid where:

(a) it is identical with an earlier trademark, and the goods or services for which the trademark is applied for or is registered are identical with the goods or services for which the earlier trademark is protected;

(b) because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public, including the likelihood of association by the public with the earlier trademark.

(2) "Earlier trademarks" within the meaning of sub-article (1) means:

(a) trademarks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trademark, taking account, where appropriate, of the priorities claimed in respect of those trademarks:

(i) EU trademarks;

(ii) trademarks registered in Malta;

(iii) trademarks registered under international arrangements which have effect in Malta;

(b) EU trademarks which validly claim seniority, in accordance with Regulation (EU) No. 2017/1001, of a trademark referred to in sub-article (2)(a)(ii) and (iii), even when the latter trademark has been surrendered or allowed to lapse;

(c) applications for the trademarks referred to in sub-article (2)(a) and (b), subject to their registration;

(d) trademarks which, on the date of application for registration of the trademark or, where appropriate, of the priority claimed in respect of the application for registration of the trademark, are well known in Malta, in the sense in which the words "well-known" are used in Article 6bis of the Paris Convention.

(3) Furthermore, a trademark shall not be registered or, if registered, shall be liable to be declared invalid where:

(a) it is identical with, or similar to, an earlier trademark irrespective of whether the goods or services for which the trademark is applied or registered are identical with, similar to or not similar to those for which the earlier trademark is protected, where the earlier trademark has a reputation in Malta or, in the case of an EU trademark, has a reputation in the Union and the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark;

(b) an agent or representative of the proprietor of the trademark applies for registration thereof in his own name without the proprietor's authorisation, unless the agent or representative justifies his action;

(c) to the extent that, pursuant to Union legislation or the laws of Malta providing for protection of designations of origin and geographical indications:

(i) an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the laws of Malta prior to the date of application for registration of the trademark or the date of the priority claimed for the application, subject to its subsequent registration;

(ii) that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom, the right to prohibit the use of a subsequent trademark.

(4) A trademark is not to be registered or, if registered, is liable to be declared invalid where, and to the extent that:

(a) rights to a non-registered trademark or to another sign used in the course of trade, were acquired prior to the date of application for registration of the subsequent trademark, or the date of the priority claimed for the application for registration of the subsequent trademark, and that non-registered trademark or other sign confers on its proprietor the right to prohibit the use of the subsequent trademark;

(b) the use of the trademark may be prohibited by virtue of an earlier right, other than the rights referred to in sub-articles (2) and (4)(a), and protected by means of:

(i) copyright;

(ii) registered designs;

(iii) other rights which the Minister may prescribe by regulation.

(5) A trademark shall not be refused registration or declared invalid where the proprietor of the earlier trademark or other earlier right consents to the registration of the later trademark.