Ghosts Of Directives Past

In a recent decision, the First Hall of the Civil Court in Malta dismissed a claim for the invalidation of Malta trade mark no. 52531 in respect of the packaging mark

on the basis that it was filed under the wrong law.

The claim for invalidity was instituted by Rothmans of Pall Mall Limited in reliance of various absolute and relative grounds for invalidity in relation to a since-revoked trade mark of BR International Holdings Inc. – including alleged conflict with various Maltese trade marks pertaining to the plaintiff that contain the verbal component "ROYALS".

The respondent company raised various pleas in defence to the plaintiff's claims, including the nullity of the action, arguing that the proceedings were instituted on the basis of the currently applicable Trademarks Act, Chapter 597 of the Laws of Malta ("Ch. 597"), which entered into force on 14 May 2019, whereas the respondent's mark was filed in 2013 and eventually registered in 2014 and should therefore have been challenged under the law applicable at its time of registration – namely, Chapter 416 of the Laws of Malta ("Ch. 416"), the precursor to Ch. 597.

The mentioned plea of nullity was only raised in the final oral pleadings. However, Maltese procedural law allows this plea to be raised at any stage of proceedings, in most cases, and may, as a matter of public order, also be raised by the Court of its own motion [Appeal no. 31/22/1, § 21].

The Court upheld the respondent's plea on the basis that Article 143(2)(a) of Ch. 597 stipulates that the repealed Ch. 416, "shall remain in force for the purpose of any act, decision, action or proceedings taken in respect of any breach of the repealed Act that occurred or were instituted prior to the coming into force of" Ch. 597.

The Court considered that although the proceedings had been instituted following the entry into force of Ch. 597, they were seeking to challenge the registration of a trade mark which occurred in 2013 [sic] and therefore concluded that the law applicable to the plaintiff's claim was in fact Ch. 416.

While the extremely convoluted wording of Article 143(2)(a) of Ch. 597 may give rise to the interpretation adopted by the Court, it is pertinent to underline that Ch. 597 also includes a provision which stipulates that upon the entry into force of Ch. 597, all existing registered trade marks shall have effect as if they were registered under Ch. 597 [Ch. 597 Article 134(1)] – which, in itself, could theoretically have been relied upon to exclude the application of Article 143(2)(a).

Additionally, the precise wording used in Article 143(2)(a) of Ch. 597 may also imply that only acts, decisions, actions and/or proceedings which had already been taken (i.e., those which had been instituted) prior to the entry into force of Ch. 597 shall (continue to) be examined under the repealed Ch. 416.

In any case and nonetheless, there exists an apparent contradiction between the two provisions, which has given rise to the interpretation of the Court in the captioned case.

However, it is worth highlighting that Ch. 597 was adopted to transpose the 2015 Trade Mark Directive (as also acknowledged in Article 2(2) of Ch. 597) whereas its predecessor, Ch. 416 was itself adopted in 2001 in anticipation of Malta's accession to the European Union, and in order to transpose the provisions of First Trade Mark Directive into national law.

It bears recalling that the First Trade Mark Directive was repealed by virtue of the 2008 Trade Mark Directive, which, amongst others, prescribed that references to the earlier Directive were to be construed as references to the 2008 Directive, and also included a correlation table between the provisions of the two Directives.

While no amendments whatsoever were made to Ch. 416 as a consequence of the 2008 Directive, it was repealed and replaced by Ch. 597, following the adoption of the 2015 Directive.

Notably, the 2015 Directive imposed an obligation on Member States to include a statement that all references in existing laws, regulations and administrative provisions to the 2008 Directive were to be construed as references to the 2015 Directive but left it up to the discretion of Member States to determine how such reference is to be made and how that statement is to be formulated [2015 Directive, Article 54(1)] - which brings us to the cited Article 143 of Ch. 597 relied upon in the captioned proceedings.

While Article 143(1) of Ch. 597 contains express wording which stipulates that Ch. 416 is repealed and that any references to it in any law shall be construed as references to Ch. 597; this is then subjected to, inter alia, the exception contained in Article 143(2)(a) of Ch. 597, as relied upon by the Court in the proceedings in question.

Although, at face value, the Court's decision seems logical, based on the wording of the exception contained in Article 143(2)(a), when considered in isolation, it entirely disregards the fact that both Ch. 597 and its precursor, have been adopted pursuant to and are transpositions of EU legislative instruments.

Those Directives are therefore binding on Maltese law as to the result to be achieved, in line with Article 288 TFEU and in the event of conflict, Maltese law may be set aside to ensure the harmonious interpretation of the 2015 Directive [C-452/24, § 36-38].

While the CJEU's case law has confirmed that the 2008 Directive may continue to apply following the adoption of the 2015 Directive, where the proceedings have been instituted before the entry into force of the latter [C-684/19, § 4], it has also clarified that the 2008 Directive has been repealed and replaced by the 2015 Directive, and that proceedings instituted after the latter's entry into force, must be examined in light of that Directive [C-183/21, § 30].

Therefore, the mentioned Article 143(2)(a) of Ch. 597 cannot override the provisions of the 2015 Directive, including, inter alia, that registered trade marks enjoy the same protection under the legal systems of all Member States [2015 Directive, Recital 10] and that the provisions of the 2015 Directive apply to every registered trade mark in all Member States [2015 Directive, Article 1], including, therefore, its provisions concerning invalidity.

Although it is not entirely unheard of for legislation within the field of trade mark law to exclude trade marks registered before their entry into force from the scope of provisions which did not have equivalents under a previous law, this is typically implemented by way of exclusion within the new law rather than by maintaining the repealed legislation effective in relation to trade marks registered thereunder. For example, the UK Trade Marks Act 1994, contains an express provision which excludes reputation as a ground for invalidity of trade marks registered before its entry into force [Schedule 3, Section 18(2)], since that ground did not exist under the previous law.

Albeit that Maltese jurisprudence does not formally operate as binding judicial precedent, in practice Courts often refer to earlier judgments to support their conclusions, including those decided at first instance, such as the case at hand.

Practitioners within the field will therefore be monitoring developments closely, particularly in the event that an appeal is filed from the first instance judgment. In such a scenario, the Appeal court may be constrained to submit a preliminary reference in relation to this matter, in line with Article 267 TFEU, unless the issue is deemed to fall within the parameters of the acte clair doctrine [C-283/81, § 16].

Originally published by IPKat, 9 December 2025

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