Month: September 2019

30 Sep 2019

VACANCY – SENIOR CORPORATE LAWYER

The Senior Corporate Lawyer, who will be reporting to Partners, will be working with both the firm’s legal team as well as the financial services team. The successful candidate will be requested to show initiative, take on certain responsibilities within the firm, work in a multinational environment and will immediately be given the opportunity to further advance their career within the law firm.

Responsibilities:

  • Providing legal advice and legal opinions;
  • Drafting, revising, negotiating and concluding agreements;
  • Drafting / preparing corporate documents such as M&As, resolutions, MFSA forms, pledge agreements etc.
  • Assisting with all corporate ventures such as incorporation, mergers and acquisitions, share transfers and Authorisations, shareholders’ agreements etc.
  • Liaising directly with the Malta Business Registry, Malta Financial Services Authority, Commissioner For Revenue, Malta Gaming Authority and other national and international governmental authorities;
  • Assisting with reporting requirements to local and overseas regulatory authorities;
  • Undertaking any ad hoc projects as may be required from time to time;
  • Provide training both in-house and to third parties in related sectors;

Requirements:

  • University degree in law (LL.B / LL.D); a Master’s degree (LL.M) will be considered advantageous;
  • A minimum of 5 years of corporate law experience, whilst experience in tax law will be considered advantageous;
  • Excellent written and verbal communication skills in English, whilst other languages will be considered advantageous;
  • IT literate, with experience of Word, Excel, PowerPoint, database management and other major software applications;
  • Ability to deal with a multi-cultural work environment and client base;
  • Keen to develop his/her experience through training, qualification and continuing professional development;
  • Team Management Experience;
  • Strong interpersonal and organisational skills and ability to perform under pressure;
  • Experience in negotiating, drafting and closing complex commercial transactions;

Applicants are expected to take an interest in the technical aspects of the issues as they arise and are expected to take a hands-on approach.

Good to Have:

  • Court experience will be considered advantageous
  • Experience in tax, maritime and company law
  • Be pro-active and willing to learn further and develop skills

The chosen candidate will be given exposure to clients in different industries and jurisdictions. S/he can expect a continuous emphasis on intellectual growth and skills development.

Get in touch and let’s discuss further! Send your CV on hr@gmint.com

27 Sep 2019

Appeal from the decision of the Consumer Claims Tribunal

Court Case

The facts

An appeal to the Court of Appeal (Inferior Jurisdiction) was filed following the decision of the Consumer Claims Tribunal (“the Tribunal”) in the names James Formosa vs. Sunday Johnson (CCT/153/17/S) dated 5 July 2019.

The Tribunal upheld the plaintiff’s claim for a default order against respondent in terms of Rule 4.1 of S.L. 378.01 and in view of such order:

  1. Ordered respondent to pay to the plaintiff  the amount of Euro 600  ex aequo et bono;
  2. Declined to take cognisance of respondent’s reply in view of the late submission;

and ordered the cost of the case to be borne by the respondent.

The facts of the case were as follows:  The plaintiff James Formosa had engaged the respondent Sunday Johnson to perform tiling works and plastering.  It transpired that part of the works were not according to the art and trade.  The certificate issued by the plaintiff’s architect confirmed this.

It was noted that the respondent’s reply to the Tribunal was fuori termine, and consequently, the   Tribunal discarded the respondent’s reply.

The Tribunal agreed in parte with the plaintiff’s claim, and awarded the amount of Euro 600 ex aequo et bono.   The original claim of the plaintiff amounted to Euro 1,704

The plaintiff appealed the decision of the Tribunal claiming that the Tribunal had made an incorrect interpretation of the facts together with a misapplication of the law.  The Court referred to the verbale of the sitting held on 4 May 2018 where it resulted that both the plaintiff and the respondent were present for the sitting and despite the fact that it was declared that the respondent  was going to testify, the plaintiff did not register an opposition to his evidence.   This despite the fact that the plaintiff had filed a note in the   acts of the case stating the respondent’s reply was fuori termine.  In this respect, the Court differed and stated that the Tribunal had the evidence as well as the architect’s report and this with the appellant’s approval.  Therefore, the Tribunal would have been wrong had it not taken the evidence and its analysis before reaching its decision into consideration.

Furthermore, the plaintiff argued that the Tribunal decided to decrease the claim from Euro 1,704 to Euro 600 given that the architect testified that he could not state with certainty whether the defect in the tile laying was the result of defective tiles or, whether it was due to bad workmanship.  The plaintiff argued that the defect issue was irrelevant given that the contractor had been obliged not to lay any defective tiles in the first place. However, despite the doubt on whether the defect was the result of a flawed manufacturing process or, whether it was a matter of deficient tile laying, the architect still indicated that the tiles of the bathroom at the ground floor should have been properly laid.

The decision of the Court of Appeal

The Court noted that the respondent could not have known that the tiles were defective before the tiles were laid.   Rather, the evidence showed that if the tiles were defective, this issue was raised after the tiles were laid.   Therefore, the Court held that the respondent should not bear all the consequences that the tiles were defective.   On the other hand, it was evidently clear that the bathroom tiles had not been laid in a professional manner, irrespective of whether the tiles were defective or not.

Therefore the Court held that the Tribunal’s decision to establish the damages ex equo et bono at Euro 600 was not legally and factually justified.  The Court upheld the appeal and liquidated the amount of Euro 1,574 in damages in favour of the plaintiff.

23 Sep 2019

The ‘ineffectiveness’ of a public contract & the jurisdiction of the PCRB

Court Case: Virtu Holdings Limited

The Facts

On the 28 April 2017, the Ministry for Transport and Infrastructure issued the “Request for proposals for a Public Services Concession Contract for the provision of passenger and vehicle ferry services between Malta and Gozo”.  

On 13 June 2017, Gozo Channel (Operations) Limited issued the Preliminary Market Consultation inviting economic operators to submit offers to the same Gozo Channel (Operations) Limited.  Virtu Holdings Limited submitted its offer and the Evaluation Committee expressed its views that its offer was the most advantageous offer and technically compliant.

Following the cancellation of the call for offers of 28 April 2017, the Ministry for Transport and Infrastructure issued another call for offers on 26 January 2018. This call consisted of offers for transport services between Cirkewwa and l-Imgarr and between Belt Valletta and l-Imgarr, as per the first offer, as well as for a fast ferry service between other localities in Malta.  Thus, Gozo Channel (Operations) Limited re-issued the Preliminary Market Consultation inviting economic operators to submit offers together with the same Gozo Channel (Operations) Limited.

Virtu Holdings Limited and Islands Ferry Network Limited subsequently submitted their offers.

By letter dated 13 April 2018, Gozo Channel (Operations) Limited informed Virtu Holdings Limited that its offer had not been accepted and that Islands Ferry Network Limited was the preferred bidder. Subsequently, Gozo Channel (Operations) Limited and Islands Ferry Network Limited signed a charterparty agreement  whereby Islands Ferry Network Limited obliged itself to lease with payment a fast ferry to Gozo Channel (Operations) Limited in the eventuality that it is awarded the contract of the Ministry for Transport and Infrastructure.

The Objection before the Public Contracts Review Board

By letter dated 20 April 2018 Virtu Holdings Limited filed an objection to the PCRB requesting the cancellation of the decision given that Gozo Channel (Operations) Limited did not have:

  1. The technical capabilities to meet the requirements set (directly or indirectly) by Gozo Channel (Operations) Limited;
  2. The necessary experience to meet the requirements set (directly or indirectly) by Gozo Channel (Operations) Limited;
  3. The necessary economic standing to meet the requirements set (directly or indirectly) by  Gozo Channel (Operations) Limited

On 31 August 2018, the PCRB decided that Gozo Channel (Operations) Limited’s Preliminary Market Consultations was not an offer for a public contract that falls within the remit of the Public Procurement Regulations and that therefore the PCRB did not have the jurisdiction to decide on the objection. In fact, the PCRB opined that “the invitation issued by Gozo Channel (Operations) Limited should have been designated as a “Call for Interest” to participate and not a “Preliminary Market Consultation”, the latter of which caused a confusion of interpretation of the action taken by the same in seeking a partner for the fast ferry service. This Board would respectfully emphasize the fact that, under normal circumstances, a “Preliminary Market Consultation” is issued by a contracting authority and this Board has established that Gozo Channel (Operations) Limited cannot be regarded as the contracting authority but rather as a prospective bidder for the concession”.   The PCRB decided:

  1. “does not uphold Virtù Holdings Limited’s preliminary plea to suspend this board’s decision to this appeal, pending the reply to the letter sent to the Director of Contracts by the Appellants;
  2. upholds Gozo Channel (Operations) Limited’s preliminary pleas, in that:
  3. Gozo Channel (Operations) Limited is not the contracting authority in this appeal;
  4. the “Preliminary Market Consultation” issued by Gozo Channel (Operations) Limited to seek a partner does not constitute any form of public procurement;
  5. the Public Procurement Regulations do not provide remedies to be heard by this board in respect of “Preliminary Market Consultations”;
  6. concludes that the sole objective for the issue of the “Preliminary Market Consultations” by Gozo Channel (Operations) Limited does not constitute a direct objective to represent a call for a tender or a call for concession”

The decision of the Court of Appeal

Virtu Holdings Limited appealed the decision of the PCRB dated 31 August 2018.  (Virtu Holdings Limited (C30642) v Gozo Channel (Operations) Limited (C76704) u Islands Ferry Network Limited (C85742) ghal kull interess li jista’ jkollha Appell Numru 290/2018).

The Court of Appeal provided guidelines to the PCRB which ultimately has jurisdiction to consider and decide about it. The Court of Appeal noted that there were still open issues, namely   Islands Ferry Network Limited’s affirmation that   Virtu Holdings Limited had not proved that Islands Ferry Network Limited did not satisfy the requisites  requested by Gozo Channel (Operations) Limited, and that on the contrary, all the depositions of the Evaluation Committee confirmed that Islands Ferry Network Limited satisfied all the points requested by Gozo Channel (Operations) Limited, and that compared with Virtu Holdings Limited, Islands Ferry Network Limited was the most attractive and advantageous offer.  Therefore, the Court of Appeal held that these issues do not constitute the merits of the procedure before the Court of Appeal, but that these issues have to be considered by the PCRB now that it had been established that the PCRB has jurisdiction to hear the objection of Virtu Holdings Limited.

The Court of Appeal dismissed the preliminary exceptions of Islands Ferry Network Limited, upheld the appeal of Virtu Holdings Limited, revoked the decision of the PCRB and referred back the acts of the case to the PCRB to consider and decide on the objection of Virtu’ Holdings Limited

The Outcome

Following the referral by the Court of Appeal, the Public Contracts Review Board (PCRB) delivered its decision on 30 August 2019.  The PCRB noted that following the Court of Appeal’s decision, the Preliminary Market Consultation (PMC) published by Gozo Channel (Operations) Limited is to be regarded as a tender document, whilst at the same instance Gozo Channel (Operations) Limited is to be deemed as the Contracting Authority.  The PCRB reiterated that the PMC issued by Gozo Channel (Operations), specifically referred to the fact that, the prospective partner must have the necessary experience, expertise and resources to provide the services (Fast Ferry Services) as duly requested in the ‘Request for Proposals’ (RFP) issued by the Ministry for Transport, Infrastructure and Capital Projects.

The PCRB noted that the processing of the offer of Islands Ferry Network Limited by Gozo Channel (Operations) Limited consisted of two main deficiencies namely that:

  • “Signing of the contract prior to the decision of the Public Contracts Review Board in respect of application filed by Virtu Ferries, in breach of regulation 277(3)(a), and
  • The Authority requested a partnership whilst the offer submitted by Islands Ferry constituted a subcontracting arrangement.

Hence, a change of goal posts at the very start of the evaluation process.”

The PCRB reached the following conclusions:

i)             That the contracting authority failed to abide by the principle of self-limitation, by processing an offer which had to be an offer for a partnership, whilst, in actual fact accepting an offer that was a subcontracting arrangement;

ii)            That the agreement signed between Gozo Channel (Operations) Limited and Islands Ferry Network Limited breached the Public Procurement Regulations and declared same to be ineffective;

iii)           Gozo Channel (Operations) Limited established that during the evaluation process, the Authority applied a weighting principle of 25% to technical and 75% to financial aspect, stating that the weighting adopted by the Authority was not sufficient and proportional enough to establish which offer was fully compliant with the technical specifications and conditions as duly requested in the RFP;

iv)           The Evaluation Committee did not delve into a satisfactory level of assessment with regard to the technical aspect of the offers.

v)            The Evaluation Board did not attribute the expected importance to the technical aspect and the relative consequences of failing to abide by the maritime regulations, which are enforced to ensure proper certification and safety, at sea.

vi)           The technical specifications and conditions, as laid down in the RFP should be technical specifications and conditions of this PMC which the Bidder must satisfy, in all respects, to be eligible for the award of the tender, without any compromises.

Following the abovementioned conclusions, the PCRB did not uphold the Contracting Authority’s decision in the award of the tender; directed the Authority to appoint a new Evaluation Committee (with two members having a technical standing and well versed in maritime activities and regulations); stated that the weighting of the evaluation process should reflect more prominently the technical compliance aspect; and that the new Evaluation Committee shall carry out an in-depth assessment of the two shortlisted offers namely, those of Islands Ferry Network Ltd and Virtu Holdings Limited to arrive at a fair and transparent conclusion in their deliberation; and that now that both competing offers are   public,  both offers are to be reassessed on their present merit.

The GMX Commentary

The main issues of this case comprised whether the Preliminary Market Consultations was an offer for a public contract that would fall under the remit of the Public Procurements Regulations and ergo’ whether the PCRB had the jurisdiction to hear the objection.  In its first decision, the PCRB held that the Public Procurement Regulations do not provide remedies with respect to Preliminary Market Consultations.  Furthermore, the PCRB held that the Gozo Channel (Operations) Limited is not to be considered as the contracting authority.

Interestingly, the Court of Appeal did not enter into the merits of the PCRB’s decision, but rather decided that the PCRB had the jurisdiction to   hear the objection filed by Virtu Holdings Limited, and to this effect referred back the acts to the PCRB.

Having established the vires of the PCRB by the Court of Appeal, the PCRB decided that the Preliminary Market Consultations is to be regarded as a tender document and that Gozo Channel (Operations) Limited is to be deemed as the contracting authority.  The PRCB also established that the agreement signed between Gozo Channel (Operations) Limited and Islands Ferry Network Limited was “ineffective” in terms of the Public Procurement Regulations. The PRCB also commented on the importance of technical specifications and the financials surrounding the offers, and their importance for the evaluation process, namely to verify whether a tender is compliant or not.

16 Sep 2019

Breaching public procurement rules axes fast-ferry tender

Court Case: Virtu Holdings Ltd v Gozo Channel Island Ferry

September 2019

The Facts

On 26 January 2018, the Ministry for Transport and Infrastructure issued the “Request for proposals for a Public Service Concession Contract for the provision of passenger and vehicle ferry services between Malta and Gozo”.   The request for proposals comprised transport services for passengers and vehicles between Cirkewwa and Imgarr, Gozo, by means of a conventional ferry and for the service of passenger transport between Valletta and Imgarr and other localities in Malta by means of a fast ferry.

On 9 February 2018, Gozo Channel (Operations) Limited issued the “Preliminary Market Consultation” with an invitation to economic operators to make their offers.  Virtu Holdings  Limited and Islands Ferry Network Limited participated in this offer.

By letter dated 13 April 2018, Gozo Channel (Operations) Limited informed Virtu’ Holdings Limited that its offer had not been accepted while Islands Ferry Network Limited’s offer had been accepted.

On 20 April 2018, Virtu’ Holdings Limited submitted an Objection to the decision of Gozo Channel (Operations) Limited in front of the Public Contracts Review Board (PCRB).   The decision of the PCRB was appealed.  [Virtu Holdings Limited (C30642) vs. Gozo Channel (Operations) Limited (C76704) u Islands Ferry Network Limited (C85742) ghal kull interess li jista’ jkollha l-Qorti ta’ l-Appell – Appell Numru 290/2018]* was appealed.

It also transpired that Gozo Channel (Operations) Limited signed an agreement with Islands Ferry Network Limited whereby the latter agreed to lease a fast ferry to Gozo Channel (Operations) Limited should Islands Ferry Network Limited be awarded the agreement.

The application submitted to the Public Contracts Review Board

In view of the above, on 22 June 2018, Virtu’ Holdings Limited filed another application before the PCRB, under Regulation 277 of subsidiary legislation 174.04, stating that the agreement between Gozo Channel (Operations) Limited and Islands Ferry Network Limited should be declared ineffective.  On 11 September 2018, the PCRB decided that it was not necessary to declare the agreement ineffective arguing that the suspensive condition of the agreement did not occur yet and that therefore the agreement was:

“[…] in actual fact not effective at present, as it will only come into force subject to Gozo Channel winning the award of the PSO Tender.

At the same instance, the Board notes that the Gozo Channel has in fact concluded a contract before a final decision has been given by the Public Contracts Review Board, however, due to the fact this board deems that he Agreement Is not effective at present and is operative only on condition that Gozo Channel wins the PSO Tender, this Board does not deem it necessary to declare it ineffective in terms of Regulation 277 of the Public Procurement Regulations”.

The decision of the Court of Appeal

The decision was appealed (Virtu Holdings Limited (C30642) vs. Gozo Channel (Operations) Limited (C76704) u Islands Ferry Network Limited (C85742) ghal kull interess li jista’ jkollha Appell Numru 292/2018) *,

The Court of Appeal rejected all the preliminary pleas of the defendant company for the same reasons and motivations in the decision  Virtu Holdings Limited (C30642) vs. Gozo Channel (Operations) Limited (C76704) u Islands Ferry Network Limited (C85742) ghal kull interess li jista’ jkollha Appell Numru 290/2018 .  With respect to the merits, the Court of Appeal held that it is not correct to state that an agreement with a suspensive condition is not conclusive yet and that it is inexistent.  It is the obligation which is non-existent before the condition occurs, but when it occurs the effect will be ex tunc in terms of article 1061(1) of the Civil Code;  the agreement will be existent and deemed conclusive as soon as there is the in idem placitum consensus.  The Court added that the offer was accepted, the choice of who will render the service for a monetary value had been made and that the agreement was signed..

Therefore, the Court of Appeal concluded that once that the public contract by the contracting authority has been made, the appellant company Virtu’ Holdings Limited could avail itself of the remedy under Regulation 277 of Subsidiary legislation 174.04.

Interestingly, the Court of Appeal noted that the PCRB, by its own admittance had agreed that “Gozo Channel has in fact concluded a contract before a final decision has been given by the Public Contracts Review Board”.  Therefore, through its own admittance, the PCRB was recognising the ineffectiveness of the agreement under the provisions of Regulation 277.

Therefore, the Court of Appeal upheld the appeal:

  1. Rejecting all the preliminary pleas;
  2. Revoking the decision of the PCRB; and
  3. Referred to the acts back to the PCRB for its decision.

Following the referral by the Court of Appeal (292/2018) as per decision dated 11 March 2019, the PCRB delivered its decision on 30 August 2019. 

The Outcome

The PCRB referred to Regulation 277(3)(a)(b) wherein it is stipulated that:

“a) When, notwithstanding an appeal is lodged before the Public Contracts Review Board, the Authority responsible for the tendering process concludes the contract before a final decision is given by the Public Contracts Review Board, or

b) when the contract is concluded by a Contracting Authority or the Authority responsible for the tendering process before the expiry of the period for the filing of an appeal as provided for in Regulation 271”.

The PCRB confirmed that Gozo Channel (Operations) Limited is to be considered as a contracting authority and that Gozo Channel (Operations) Limited entered into contractual obligations with Island Ferries prior to a final decision by the PCRB.

Regarding the “ineffectiveness” of the contract signed between Gozo Channel (Operations) Limited and Island Ferries Limited, the PCRB referred to Regulation 277(3)(a) whereby any tenderer may also request the PCRB to declare a contract ineffective when notwithstanding an appeal is lodged before the PCRB, the contracting authority responsible for the tendering process concludes the contract before a final decision is given by the PCRB.  Therefore, the PCRB confirmed that Gozo Channel (Operations) Limited did enter into a contractual obligation on the 13 April 2018, well before any decision was taken by the PCRB.   The PCRB referred also to Regulation 282(b) whereby applications for the ineffectiveness of a contract shall be deemed admissible if they are made in any other case before the expiry date of a period of at least six months with effect from the day following the date of the signing of the contract.

The PCRB decided that the application for the ineffectiveness of the contract signed between Gozo Channel (Operations) Limited and Island Ferries Limited is within the stipulated time frame of the Public Procurement Regulations and that therefore the agreement entered between Gozo Channel (Operations) Limited and Island Ferries Limited was concluded prior to the final decision of the PCRB and to this effect, the PCRB declared that the agreement is ineffective.

The GMX Commentary

This decision has confirmed the principle of “ineffectiveness” of a public contract which is not restricted through any conditional clause in the agreement; in this case a suspensive clause.   The Court of Appeal re-affirmed the principle that if the agreement is still concluded despite pending proceedings before the PCRB, then the agreement is tantamount to an “ineffective” agreement in terms of the Public Procurement Regulations, which reflect the EU’s Remedies Directives.  To this effect, the aggrieved bidder, Virtu’ Holdings Limited, could avail itself of the remedy under Regulation 277 of Subsidiary legislation 174.04, whereby an interested party or a tenderer may file an application before the PCRB to declare that a contract with an estimated value which meets or exceeds the threshold established under Schedule 5 of the Public Procurement Regulations is ” ineffective”.

Furthermore, in terms of the said Regulation 278, apart from the declaration for the ineffectiveness of a contract the applicant may request the PCRB to liquidate and order the authority responsible for the tendering process and the contracting authority to compensate him for actual damages suffered.

If the PCRB declares a contract to be ineffective, it should impose penalties on the authority responsible for the tendering process and on the contracting authority after assessing in its decision all relevant factors, including the seriousness of the infringement and the behaviour of those authorities. In this case, no penalties were imposed by the PCRB.

13 Sep 2019

Re-filing Trademarks: A Case of Déjà Vu?

Trade marks give a face to a product which enable us identify a brand. As consumers, we take them for granted even though they punctuate memories of our daily lives. How many of us ever think of the creative and strategic thinking that goes into their composition? In contrast, we are more familiar with trade mark infringement. And what is breaking news are the risks of re-filing new applications for the same trade mark that should not be glossed over. 

Why would a trade mark proprietor re-file for the same trade mark?

The proprietor of a European Union trade mark (EUTM) or of a locally registered trade mark should lose its rights in that trade mark if it is not put to genuine use, referred to as “non-use”. In effect, this entails:

  1. That the proprietor would no longer be able to prevent the registration of the same trade mark by others;[1]
  2. That others may file an application to the European Union Intellectual Property Office (EUIPO) or to the Civil Court, First Hall of Malta, as the case may be, for the revocation (from the date of request) of the proprietor’s rights;[2]
  3. That the proprietor would no longer be able to successfully sue for trade mark infringement since the infringer would always have the right to file a counterclaim for revocation of the proprietor’s rights.[3]

Nevertheless, proprietors are given a 5-year grace period since registration, to use their trade mark and it is only after the expiration of that term that the listed adverse consequences can take effect. Therefore, proprietors often file an application to register the same trade mark which they had previously registered so as to extend the grace period by an additional five years; and so on, for as many times as a new application is re-filed.


Is such a re-filing practice lawful?

In a recent case the Board of Appeal of the EUIPO invalidated (that is, removed from the trade mark register with retroactive effect) the EUTM ‘Monopoly’ precisely for being made within the context of this re-filing practice.[4] The toy and board game company Hasbro had successfully registered the ‘Monopoly’ trade mark on three previous occasions before the contested registration, each time for a different class of goods and/or services. On the fourth contested application, Hasbro filed to register the same trade mark for the same classes of goods and/or services as the three previous registrations as well as for additional classes not covered by any of the previous registrations.   


The Board of Appeal distinguished between re-filing for the same trade mark for the same class of goods and/or services, on the one hand, and re-filing for the same trade mark for new classes of goods and/or services on the other. With regards to the latter, the Board of Appeal held that simply expanding your trade mark to cover further goods and services in which the proprietor is interested to expand his business is an accepted commercial practice. After all, a business must be allowed to grow.[5] However, re-filing the same trade mark for the same goods and/or services as a previously registered trade mark, which has been renewed and is still actively used, cannot be made to circumvent the genuine use requirement.[6] Such a registration is made in bad faith and is therefore liable to be invalidated by the EUIPO, in the case of an EUTM, or by the Civil Court, First Hall of Malta in the case of a locally registered trade mark.[7]

On this basis, the Board invalidated the latest registration of the ‘Monopoly’ mark only for those goods and services for which an identical mark had already been registered. For those goods and services which had never been the subject of a registration, the ‘Monopoly’ mark remains valid.

How can a proprietor avoid invalidation of a trade mark?

As already considered above, if a proprietor intends to expand its business, it is perfectly legitimate to seek the registration of an existing trade mark for further goods and/or services which previous trade mark registration do not cover. Even so, a proprietor may be concerned with the administrative bother of having various registrations for the same mark but for different classes of goods and/or services, especially vis-à-vis licensing and enforcement. That a proprietor may want to group all the goods and services in respect of which it is operating or intends to operate under one registration is understandable. In this case; however, the proprietor should surrender all the previous trade marks so as to make clear that the re-filing is not done in bad faith but is solely motivated by reason of genuine business expansion and administrative reasons.

Is there any risk associated with rebranding?

There are various types of trade marks that can be registered. Arguably, the simplest form is a “word mark”, made up of letters or numerals. However, there are also “figurative marks containing word elements”, that is, combination of words and graphic features. What if a proprietor first registers a word mark, and then registers a new trade mark for the same goods and/or services containing the same word but adding a figurative feature, and then registers a new trademark with a new or different figurative feature but retaining the same word? Is this simply a case of rebranding or is it a case of re-filing essentially the same trade mark in bad faith?

Conclusion

 The EUIPO seems to have taken a tougher stance on trade mark proprietors attempting to “extend” the extent of their right in bad faith. The national intellectual property offices of the Member States are likely to follow suit. Therefore, some special consideration attention must be given to re-filing trade marks especially for proprietors who operate an expanding business and need to update their trade mark portfolio from time to time.

[1] Regulation (EU) 2017/1001, Art. 47(2); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 51.

[2] Regulation (EU) 2017/1001, Art. 58(1)(a); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 29.

[3] Regulation (EU) 2017/1001, Art. 58(1)(a); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 27.

[4] Decision of the Second Board of Appeal of 22 July 2019, Kreativni Dogadaji d.o.o. v. Hasbro, Inc. (R 1849/2017-2), <https://euipo.europa.eu/eSearchCLW/#basic/*///number/1849%2F2017>.

[5] Ibid, para. 63-64.

[6] Ibid, para. 66-74.

[7] Regulation (EU) 2017/1001, Art. 59(1)(b); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 5(2).