An analysis of the trademark opposition procedure in Malta

Abstract

The procedural capacity of a proprietor of earlier rights to successfully prevent a third party from usurping his rights through a later infringing trademark application, is of paramount importance for the better functionality of a healthy economy. In today’s world where time means money more than ever before, the earlier this can be done, the better. This work will contain, the examination of procedural aspects regulating oppositions under the Industrial Property (Protection) Ordinance 1899 (Cap. 29 of the Laws of Malta, herein where appropriate “the Ordinance”), the situation prevailing under its successor in title namely the Trademarks Act (Cap. 416 of the Laws of Malta, herein where appropriate “the TMA 2000”) which turned off the lights on opposition proceedings, the perhaps somewhat hastily introduced Legal Notice 343 of 2018 which reintroduced them albeit under the auspices of a law - the TMA 2000 - that did recognise them as such and, finally, the advent of reform proper, in line with Directive (EU) 2015/2436, in the shape of the Trademarks Act (Cap. 597 of the Laws of Malta, herein where appropriate “the TMA 2019”), eventually complemented by S.L. 597.04 which provides updated administrative tools regulating the proceedings per se’ and which has itself been amended earlier this year through Legal Notice 69 of 2023. In addition, also the examination of certain procedural aspects relative to landmark Judgments of our Courts of Justice and Decisions of the Comptroller of Industrial Property / the Office of the Comptroller, and I raise a series of questions concerning functionality of the procedural system with particular emphasis on developments during the past five years or so. This work is aimed towards providing some useful insights - and provoking reflections - on the procedural aspects of trademark opposition proceedings in Malta.