As industries evolve and technological advancements reshape our world, the concept of property has grown beyond physical assets to include creations and innovations of the mind, known as intellectual property (“IP”). IP is generally classed into four categories:
Trademarks – This includes brand names, logos and symbols for goods and services;
Copyrights – All types of creative work, including Art, Literature and Music;
Patents – Innovations or inventions, including processes and designs; and
Trade Secrets – Confidential business information, liked processes and codes.
Intellectual property rights (“IPRs”) have emerged as primary business assets. These give owners exclusive control over their non-physical creations, providing essential business assets for protecting products, brands and reputations. However, securing these rights globally can be both costly and complex.
IPRs encompass various forms, including copyrights, trademarks, design rights, trade secrets, and patents, each with distinct eligibility criteria for protection and registration requirements. For example, while some IPRs require formal registration for protection, such as patents and trademarks, others, like copyrights, are automatically conferred upon creation. Despite their unique protections, IPRs can overlap. For instance, copyright and design rights may intersect, and rights to registered trademarks applicable under the Trademarks Act, Cap 597 of the Laws of Malta, may overlap with those arising from unregistered trademarks established under the Commercial Code, Cap 13 of the Laws of Malta.
Malta’s IP legislation aligns with the European Union’s, enabling IP rights protection across the EU and beyond. Malta’s ratification of key IP Conventions ensures that the recognition of IP rights arising in Malta extends beyond the borders of the EU.
At Zerafa Advocates, we specialise in safeguarding out clients’ intellectual property, recognising the immense value attached to their brands. Our range of services is tailored to protect individuals and entities from potential threats to their ideas, trademarks, inventions, works, and designs, all within Malta’s legal framework. By offering these specialised IP services, we enable our clients to maximise the value of their intellectual property assets within the Maltese jurisdiction.
Zerafa Advocates can provide you with:
Local Trademark and EU Trademark Registration. This involves the following steps and considerations:
Trademark Clearance Searches: Before filing an application, we will conduct thorough research to ensure that your trademark does not infringe on existing trademarks. This involves conducting searches on the EU Trademark Database to check for similar or identical marks within Malta and the EU.
Trademark Registration: Assist the client in filing trademark applications, either with the Commerce Department at national level or with the European Union Intellectual Property Office (“EUIPO”) at international level. The latter provides trademark protection across all EU member states, including Malta.
Trademark Portfolio Management: Manage trademark portfolios of the client, including renewals and maintenance of registrations. Trademarks registered with the EUIPO are valid for 10 years and can be renewed indefinitely for successive 10-year periods.
Trademark Oppositions and Appeals: Assist clients in Court proceedings and appeals before the Court of Appeal.
Trademark Enforcement: Assist the client in enforcing their EU trademark rights against infringes through cease-and-desist letters, negotiation, and litigation across EU member states.
Patent Registration and Protection (within Malta). This involves the following steps:
Patent Clearance searches: Conduct searches to ensure that your invention is novel, inventive, and industrially applicable. This involves searching existing patents and literature to determine if your invention meets the criteria for patentability.
Patent Drafting and Filing: Draft patent applications and file them with the Industrial Property Registrations Directorate (“IPRD”) in Malta (authority responsible for intellectual property matters in Malta).
Patent Examination: Manage patent applications through the examination process at the IPRD, including responding to office actions.
Patent Portfolio Management: Manage the patent portfolios of the client, including renewals and maintenance of registrations. If your patent application is approved, you will receive a patent grant which lasts for 20 years from the filing date of the application. To keep your patent in force, renewal fees to the IPRD must be made at specified intervals.
Copyright Protection (within Malta). In Malta, although copyrights are not formally registered, they still receive protection automatically upon the creation of an original work in a fixed form once it is placed in the public domain.
Copyright Licensing and Assignment: Draft and negotiate licensing agreements and assignments of copyright under Maltese law; and
Copyright Enforcement: Assist the client in enforcing their copyright rights against infringers. This may involve sending cease-and-desist letters, negotiating licensing agreements, or pursuing litigation in the Maltese courts.
Design Registration (within Malta). This involves the following steps:
Design Clearance searches: Conduct searches to ensure that your design is new, has individual character and is not already registered or in the public domain.
Design Registration: In Malta, 2 types of designs can be registered:
Design Portfolio Management: Manage design portfolios of the client, including renewals and maintenance of registrations. This usually involves paying renewal fees to the IPRD at specified intervals.
Design Dispute Resolution: Assist the client in disputes involving design infringement or validity before the Maltese courts. This may involve seeking injunctions, damages, or other remedies through the Maltese courts.
Drafting agreements for the licensing, assignment, or transfer of IP rights under Maltese law, including Non-Disclosure & Confidentiality Agreements.
