A clash of rights : the registered trademark holder vs the prior user

Abstract

This term paper will examine the conflicting rights between proprietors of registered trademarks and prior users or holders of so-­‐called ‘earlier rights’. Chapter 1 will deal with a concise history of trademark registration in Malta, together with a brief outline of the process of registration at the time when Maltese trademark law was governed by the Industrial Property (Protection) Ordinance. Furthermore, this chapter will look at the key additions made by Act XXX of 1927 to the Commercial Code with regard to the general protection given to prior holders of distinctive devices. Chapter 2 will then delve into the protection given to registered trademark holders under the Trademarks Act which replaced the Industrial Property (Protection) Ordinance and the changes which the Trademarks Act brought about. The same chapter will then refer to jurisprudence in order to ascertain whether the two requirements are equally indispensable for the protection of trademark rights or if the requirement of prior use eliminates the need for formal registration. Chapter 3 will review the procedure for application for a registered trademark under the Trademarks Act and will include an exploration of the practical side of trademark registration and how it is carried out. This will include an analysis of how the Office of the Comptroller determines whether there has been prior use. Chapter 4 will examine the process of registration of EU Trademarks (formerly Community Trademarks) and will include a comparison of this system with the Maltese national system, as well as a detailed breakdown of the opposition procedure available for EU Trademarks. The chapter will also assess some of the relevant provisions of the 2015 Trade Mark reform package, consisting of the new Trade Marks Directive and the new European Union Trade Mark Regulation.