Intellectual Property
The protection of a business’ Intellectual Property (IP) is predominant in that it is used to identify the products, goods or services of the business, as well as, distinguish them from those of another undertaking. Due to the constant expansion and development of new technologies worldwide, the need to protect one’s IP rights has been ever-growing in the past few years and business owners have now understood the importance of such rights.
The main scope of IP includes trademark, copyright, patent and design rights. It is in the interest of every owner to apply for registration of such rights which will confer on the said owner exclusive rights. Malta’s primary intellectual property legislation falls under the:
Trademarks Act
- Copyright Act
- Patents and Designs Act
- Intellectual Property Rights (cross-border measure)
IP legislation in Malta went through major changes in the year 2000 in light of aligning national legislation with the relevant EU legislative framework of the IP sector. On an international level, Malta is currently party to a number of International IP Treaties and Agreements including;
- Paris Convention for the Protection of IP
- Universal Copyright Convention
- WIPO Agreement
- WTO TRIPS Agreement
- Patent Cooperation Treaty
- European Patent Convention
- Madrid Agreement and Madrid Protocol
- Madrid Agreement on Indications of Origin
Trademarks
Upon registering a trademark under Maltese law, exclusive rights are conferred upon the proprietor in terms of that trademark. The proprietor can also avail himself of other rights and protection provided by virtue of the Trademarks Act and may also choose to transfer, assign or license such trademark.
Upon joining the European Union, Malta, became a full member of the Community Trade Mark (CTM) and Community Design (CD) systems. Our firm helps clients in applications, oppositions, cancellations or appeals of any CTM or CD. A CTM is any trademark which is pending registration or has been registered in the European Union as a whole, as opposed to individual registration on a national level. This renders the CTM, as well as the CD, a favourable option to right holders, who wish to have their national registered mark registered under the CTM or CD systems.
Furthermore, clients who have duly filed an application for trademark protection in a country which is part of the World Trade Organisation or is a party to the Paris Convention, can seek help from our lawyers at GMX as to how he can avail from his right to priority in registering the same mark as a Maltese Trademark for any or all of the same goods or services.
Copyright
Under Maltese law, copyright is granted to an eligible work automatically, upon satisfying three criteria:
1. Qualification
2. Originality
3. Fixation
Generally, copyright includes; Artistic Works, Audio-visual Works, Databases, Literary work and Musical work. Upon the creation of the work and satisfying the above stated criteria, copyright protection is awarded without the need for registration under the Maltese Copyright Act. Such protection is limited to territoriality and the connecting factors are generally domicile or citizenship; either by virtue of authors or with reference to the country where the work was made or published.
The issue with copyright protection lies in identifying and proving the ‘date’ when the artistic work was created. This date can be used against any infringement proceedings third parties may bring, claiming that the work is theirs.
In representing corporate and personal clients, our firm looks to help all its clients in matters related to copyright protection and any other neighbouring rights.
Patent & Designs
Patent & Designs
In June 2002, the Patents and Designs Act came into force, repealing and substituting the Industrial Property Protection Ordinance dealing with patents.
Under the new Act, not any invention can be registered as a Patent. To the contrary, to be registrable, a patent must be ‘novel’, in that it must involve an inventive step and have industrial application.
The Act, while giving a specific list of documents which one would need to register a patent, also expressly excludes certain inventions from being registered, and these include
– Discoveries, scientific theories and mathematical methods;
– Aesthetic creations;
– Presentations of information;
– Processes for cloning: and
– Inventions against public order or morality
Our firm can also help clients regulate their ‘Design’ rights. ‘Design’ is a term used to describe the appearance of the whole or part of a product with special characteristics. The Patent and Design Act provides protection to owners of designs and also grants them their status as a property right. The Act provides that designs shall be protected through registration, by means of which exclusive rights shall be conferred upon their holders.
The scope of protecting one’s design is due to the fact that the right extends to any design which does not give a different overall impression on the informed user.
We can assist in optimising the protection afforded to your company’s Intellectual Property including, inter alia, computer software, technical knowledge, patents, trademarks, trade secrets & methods, and copyrights. More specifically, we specialise in;
- Registration of copyrights, trademarks, patents and designs;
- Drafting of Agreements identifying, creating, protecting and enforcing intellectual property rights and assets;
- The building of protective clauses into all agreements and arrangements to which the protection of intellectual property rights may be incidental or ancillary, such as in the context of Merger & Acquisition transactions;
- Implementation of licence, distribution, manufacture and franchise arrangements and drafting of relative agreements;
- Infringement proceedings.
