Cap. 597 Art. 12Rights conferred by a trademark.    Cap. 416. Cap. 29.

(1) The registration of a trademark shall confer on the proprietor exclusive rights therein.

(2) Any reference in this Act to the infringement of a registered trademark shall be deemed to be a reference to any such infringement of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of registration reckoned in accordance with article 56(3):

Provided that -

(a) no infringement proceedings may be begun before the date on which the trademark is in fact registered; and

(b) no offence under article 109 shall be committed by anything done before the date of publication of the registration.

(4) Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trademark, the proprietor of that registered trademark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:

(a) the sign is identical with the trademark and is used in relation to goods or services which are identical with those for which it is registered;

(b) the sign is identical with, or similar to, the trademark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trademark is registered:

Provided that there exists a likelihood of confusion on the part of the public:

Provided further that the likelihood of confusion includes the likelihood of association between the sign and the trademark;

(c) the sign is identical with, or similar to, the trademark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trademark is registered, where the latter has a reputation in Malta and where use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

(5) The following, in particular, may be prohibited under sub-article (4):

(a) affixing the sign to the goods or the packaging thereof;

(b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the sign;

(d) using the sign as a trade or company name or part of a trade or company name;

(e) using the sign on business papers or in advertising;

(f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.

(6) A person who applies a registered trademark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trademark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(7) Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trademark, the proprietor of that registered trademark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into Malta, without being released for free circulation there, where such goods, including the packaging thereof, come from third countries and bear without authorisation a trademark which is identical with the trademark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trademark.

The entitlement of the trademark proprietor pursuant to the first sub-paragraph shall lapse if, during the proceedings to determine whether the registered trademark has been infringed, initiated in accordance with Regulation (EU) No. 608/2013, evidence is provided by the declarant or the holder of the goods that the proprietor of the registered trademark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

(8) Where the use of a sign under the conditions referred to in paragraphs (b) and (c) of sub-article (4) could not be prohibited before the coming into force of the Trademarks Act, the rights conferred by the trademark cannot be relied on to prevent the continued use of the sign if such use had started prior to the said Act coming into force.

(9) Sub-articles (1), (4), (5) and (8) shall not affect provisions applicable under any law relating to the protection against the use of a sign other than use for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of or is detrimental to, the distinctive character or the repute of the trademark.