Using a Maltese “Earlier Right” to Oppose an EUTM Application

The EU Trademark Regulation (Regulation (EU) 2017/1001) (the “EUTMR”) allows proprietors of “non-registered trademarks or of another sign used in the course of trade” to oppose an EU trademark (“EUTM”) application, where “that sign confers on its proprietor the right to prohibit the use of a subsequent trademark”. [1] An essential pre-condition to lodge one’s opposition on this basis is that the non-registered trademark must predate the application and priority date of the EUTM application they seek to oppose.

While numerous categories of signs could fall within this definition, national laws relating to non-registered trademarks have not been fully harmonized and are thus, considerably divergent. Certain Member States do not recognize this possibility outright, while those that do require varying degrees of use, market recognition or goodwill, for recognition to arise.

The EUTMR essentially specifies four conditions which must be satisfied in order for a successful opposition based on a non-registered trademark. The first two must be interpreted in line with EU law, while the remainder must be read and interpreted in line with the laws of the Member State under whose laws the opponent claims to hold a non-registered trademark.

From an EU law perspective, the earlier mark must necessarily be “used in the course of trade”. In this respect, the Courts of Justice of the European Union (“CJEU”) have consistently held that “use” must be in the course of commercial activity, with a view to economic advantage and not merely as a private matter.[2]

That said, “use” need not be remunerated, so long as it is “made within the context of a commercial activity that is ultimately directed at obtaining commercial advantage” and it must “serve to identify an economic activity engaged in by its proprietor.”[3]

Moreover, the mark in question must be “of more than mere local significance”, a condition which is invariably tied to the geographical extent of the sign, in that it must “be used in a substantial part of the territory”. However, the account must also be taken of “the duration and intensity of use”.[4]

Relevant factors to consider in making this assessment include the location, date, and volume of sales, the geographical spread of customers, and distribution of advertising under the respective sign.[5]

It can thus be stated that this condition involves an assessment of various geographic, temporal, and economic variables. It is pertinent to point out that the data and evidence used in carrying out this assessment must be limited to the territory of the Member State where the relevant sign is said to constitute a non-registered trademark.

Moreover, the proprietor of the non-registered trademark must show that they would be entitled to prohibit the use (rather than the registration) of the subsequent trademark under the laws of the relevant Member State.

In Malta, the Commercial Code prohibits traders from making use of “any  name,  mark  or distinctive device capable of creating confusion with any other name, mark or distinctive device lawfully used by others, even though such other name, mark or distinctive device be not registered in terms of the Trademarks Act”. [6]

This is one of the limits of competition imposed on traders by Maltese law, on the basis that it constitutes an act of unfair competition. The philosophy underpinning this provision stems from the Latin maxim prior in tempore, potior injure, whereby the law favors those who establish their rights earlier in time. In practice, this works to grant users of such names, marks, or distinctive devices, a proprietary right over them, which is often termed as an “earlier right” in Maltese jurisprudence.

The proprietor of an earlier right may bring an action to, inter alia, prohibit further use of a contravening sign (including a registered trademark), subject to the satisfaction of certain conditions that emerge from law and jurisprudence. [7]

First and foremost, the earlier right must have been used in the relevant market before the allegedly contravening mark. Moreover, the similarity between the two respective marks must be such that it is capable of creating confusion.

In assessing the similarity between the two respective marks, they must be viewed in their entirety, as a whole, without analyzing their individual elements.[8]

With regards to the capability to create confusion, one need not prove that actual confusion has occurred and even a mere “risk of deception” may suffice, in order for a violation to be found. [9] The relevant consumer for the purpose of assessing the risk of deception is a person of ordinary diligence and intelligence. [10]

Jurisprudence also indicates that the two marks must be used in relation to similar goods or services.[11] This condition is largely connected with the potential to confuse, which is much more likely to subsist in cases where two marks are used with respect to similar goods or services, rather than dissimilar ones.

Therefore, under Maltese law, independently of whether one has a registered trademark or otherwise, mere prior use of a mark in the course of trade, grants the user a proprietary right over the sign, such that they may utilize it to the exclusion of all others, in the location where its force of attraction extends – being that zone of the territory where the use of a similar mark may create confusion.[12]

Consequently, Malta is often described as a country with use, rather than a register-based system, and one where the threshold to obtain recognition of a non-registered trademark capable of successfully opposing a EUTM application, is at the lower end of the spectrum, compared to the other Member States.[13]

This could prove useful to non-registered marks that enjoy a certain degree of recognition within the territory of Malta, in instances where they fail to satisfy the requirements to qualify for protection as a well-known mark under Article 6bis of the Paris Convention.   

That said, however, obtaining protection of your mark through registration is highly- advisable. Trademark registration constitutes the official recognition of one’s rights by the relevant authority. This confers on the proprietor, quasi-irrebuttable proof of the existence, limits, and temporal scope of their rights. Consequently, this greatly facilitates the assertion and exercise of one’s rights, including opposing a EUTM application.

[1] Article 8 sub-paragraph 4, EUTMR; [2] C-206/01 - Arsenal Football Club vs Matthew Reed; [3] C-96/09 - Anheuser-Busch vs Budějovický Budvar; [4] C-428/09 - Anheuser-Busch vs Budějovický Budvar; C-96/09 - Anheuser-Busch vs Budějovický Budvar; [5] EUIPO, “Draft Guidelines Legal Reform Part C – Opposition Section 4 – Rights under Article 8(4) EUTMR”, Version 1.0 [6] Article 32, Chapter 13 of the Laws of Malta; [7] Article 37, Chapter 13 of the Laws of Malta; [8] Tanti Dougall nomine vs MK Electric decided 01/02/2008 [9] Vella Zarb noe vs Portelli et noe decided 30/06/1936; Chircop vs Galea – App. Kollez. XXXIX.401; Nani pro et noe vs Arrigo noe et. - Kollez. XXXIV.III.841 [10] Chircop vs Galea – App. Kollez. XXXIX.401 [11] Mizzi nomine vs Attard Nomine decided on the 09/05/1997; [12] Chircop vs Galea – App. Kollez. XXXIX.401; [13] Vom Bomhard and Geier 2017, “Unregistered Trademarks in EU Trademark Law”, The Law Journal of the International Trademark Association, May-June 2017;