'Design' is a term used
to describe the appearance of the whole or a part of a product with
special characteristics in its lines, contours, colours, shape,
texture and/or materials of the product itself, and/or its
The Maltese law which regulates the protection of designs and which
grants them their status as a property right is the design and
Requirements for Protection
The Act provides that designs shall be protected by registration, by means
of which exclusive rights shall be conferred upon their holders.
The law provides that a design applied to or incorporated in a product
which constitutes a component part of a complex product shall only be
considered to be new and to have individual character:
(a) if the component part, once it has been incorporated into the complex
product, remains visible during normal use of the latter, and
(b) to the extent that those visible features of the component part fulfil
in themselves the requirements as to novelty and individual character.
Novelty & Individuality
Two of the sine qua non characteristics of design registration are
novelty and individuality.
A design is considered to be
new if no identical design has been made available to the public before
the date of filing of the application for registration or, if priority
is claimed, before the date of priority.
A design is considered to have individual character if the overall
impression it has on the informed user differs from the overall
impression produced by any other design which has been made available to
the public before the date of filing of the application for registration
or, if priority is claimed, before the priority date.
A design is considered as having been made available to the public if it
has been published, exhibited, used in trade or otherwise disclosed,
unless it can be shown that the design could have reasonably become
known, before the filing date or where priority is claimed, before the
priority date, in the normal course of business to the circles
specialised in the sector concerned.
A design right cannot be obtained for:
features of appearance of a product which are solely dictated by its
features of appearance of a product which must necessarily be reproduced
in their exact form and dimensions in order to allow the product, in
which the design is incorporated or to which the design is applied, to
a design serving the purpose of allowing multiple assembly or connection
of multiple interchangeable products within a modular system.
a design which is contrary to public policy or accepted principles of
a design which consists of the national flag of Malta, or contains
Presidential or Episcopal arms or principal armorial bearings or
representation of flags
Scope of Protection
The protection of a design right extends to any design which does not give
a different overall impression on the informed user.
Term of Protection
A design right is protected for a period of five years from the date of
filing of the application and is renewable for one or more periods of
five years each up to a total term of 25 years.
Renewal of Registration
The registration of a design may be renewed at the request of the
proprietor, accompanied by the prescribed fee. A late renewal can be
effected up to six months after the date of expiry. If the registration
is not renewed it shall be removed from the register.
rights conferred by the design right
The registration of a design shall confer on its holder the exclusive
right to use it and to prevent any third party not having his consent
from using it. The rights of the proprietor have effect from the date of
registration but no infringement proceedings may be initiated before the
date on which the design is in fact registered.
Exhaustion of rights
The proprietor of a registered design is not entitled to prohibit the use
of a product in which the design is incorporated or to which the design
is applied when the product has been put on the market by the proprietor
or with his consent.
Transmission of a
A registered design is transmissible by assignment, testamentary
disposition or operation of law in the same way as other personal or
moveable property. A transmission may be partial and limited so that the
use of the design applies in a particular manner or a particular
locality. Such transmissions are to be recorded in Malta.
The Registration Process
Upon filing of the applicable application, the official date of filing
would be the date of submission of the completed application form to the
In order to claim priority of
another application in a Convention County, one is to file the Maltese
application within 6 months from the date of first filing.
Examination of Application
The Comptroller shall examine the application in order to ascertain that
it complies with the requirements of the law. If any of these
requirements are missing the Comptroller will inform the applicant and
invite him to make the necessary amendments. If the necessary amendments
are not made the Comptroller shall refuse the application.
amendment of application
The applicant may withdraw his application at any time. An application may
be amended only is so far as the amendment relates to corrections of the
name and address of the applicant, errors of wording and obvious
mistakes. Such a correction should not substantially affect the identity
of the design
On the registration of a design the registration certificate shall be
issued and a notice shall be published in the Government Gazette stating
that the design has been registered and that it is available to be
viewed by the public at the Office.
Grounds for invalidity
The registration of a design may be declared invalid on the grounds that
it is not novel, it does not have individual character or it has been
disclosed or in any way made available to the public.
Effect of acquiescence
An action for invalidity may not be initiated when the person bringing
action is aware of the use of the registered design in Malta and has
acquiesced for a continuous period of five years to such use.
Action for Infringement
Infringement proceedings shall be brought before the Civil Court, First
Hall and shall not be instituted after five years from the date when the
injured party has obtained knowledge of the infringement and of the
identity of the alleged infringer.