Last Updated 25th March 2020

With the international spread of COVID-19 and the precautionary measures that are being taken by the Maltese authorities, our services will be performed remotely as far as possible.

If you are able to do it, our strong recommendation is that you comply with the standard deadlines so we can file your applications, pay renewals and  react to any pending actions as usual to avoid any uncertainty and keep your files and applications in good order.

 If you are in a situation where you cannot give us instructions or provide us with documents in time to meet a deadline, please contact us as we may be able to advise alternative solutions implemented by the IPRD and the Courts of Justice.

Intellectual property issues stemming from the flow of the novel coronavirus have progressed swiftly from the multitude of bad taste trademark registrations being applied for across the globe, ever since the first application in the US, back on 2nd February 2020. Aside from the obvious public policy considerations involved in rejecting such trademarks on absolute grounds, the current widespread state of affairs has a procedural effect on numerous time-frames which are the bane of every Intellectual Property recordal and registration. It would be tempting to divert attention to more pressing matters in the circumstances, but times change, and any financial investment poured into intellectual property should not be abandoned but rather safeguarded especially in trying times such as these which may expose certain forms of IP to more bad faith attacks.

Procedural considerations in relation to Trademarks and Registered Designs:

Locally, (Malta), the Industrial Properties Registrations Directorate (IPRD) has informed the interested public that it is still operating normally albeit through electronic means and in this respect any submissions have to be transmitted accordingly.

In relation to time periods established for trademark oppositions, the office is still functioning however, in light of L.N. 61 – Epidemics and Infectious Disease (Suspension of Legal and Judicial Times) Order, 2020, as well as L.N. 65 –  Closure of the Courts of Justice Order, 2020 – the Superintendent for Public Health has ordered the closure of the Courts of Justice and the registry with effect from 16th March 2020. These have ever since been amended by L.N. 84 and L.N. 97 respectively and seem to provide for a generic suspension of time limits applicable to all proceedings before all entities insofar as they refer to any entity before which any proceedings are heard or procedures undertaken which are subject to legal or administrative time limits for filing any claims, defences or other acts;

At the EUIPO, procedures for the receipt of applications, examinations and publications will proceed as usual. Time limits that have expired between 9th March 2020 up till 30th April 2020 have been extended until 1st May 2020 (practically 4th May 2020 since 1st May 2020 is a weekend followed by a public holiday).

This includes all time limits, specifically those arising by virtue of the EUTM Regulation (EUTMR), EUTM Implementing Regulation (EUTMIR), EUTM Delegated Regulation (EUTMDR) as well as the Community Design Regulation (CDR) and the Community Design Implementing Regulation (CDIR). One particular caveat applies to the right of appeal before other entities such as the General Court. In this respect, said entities have not yet suspended any terms and therefore these remain unaffected.

Procedural considerations in relation to Patents including European Patent validations:

Under the current circumstances we are still able to process and file the necessary documentation in relation to procedures related to European or Local Patent Validations, Patent First Renewals, Patent Renewals as well as SPC applications.

The European Patent Office (EPO) has deemed Rule 134(2) of the Implementing Regulations of the European Patent Convention (EPC) to have kicked in and has extended all deadlines falling during this period to 17th April 2020. These may be further extended if the need arises.

If a particular time period is missed, circumstances satisfying the exception circumstances clause Rule 134(5) may also be applicable to circumstances outside the control of the party however ad hoc advice should be sought on this point to ascertain and assess the eligibility of the circumstances.

In relation to time periods in relation to actions due under the Patent Cooperation Treaty (PCT), in general, PCT Rule 82quater may be applicable according to the circumstances however, evidence may be required and, in this regard, specific advice should be sought.

Procedural considerations in relation to Court Actions in Malta.

By virtue of L.N. 61 and L.N. 65, the Courts (defined very widely) in Malta have been closed and legal and judicial times have been suspended, the suspension shall last until 7 days after the lifting of the order in the case of proceedings before Courts or Tribunals found within the Court building. For other entities operating from outside the Court building the amending L.N. 97 has established that any appeals are suspended and will remain suspended until 20 days from the lifting of the order and has also introduced a transitory provision.

Notwithstanding the above, in urgent situations the Courts still have the possibility of opening the registry and allowing for certain acts to be presented, we deem such an urgent case to be satisfied with situations which emanate from established time periods under EU Law for instance.

For further sector specific information, we are collating the below links derived from IP offices which have also been affected by COVID-19 and which have issued clarification documentation in this regard.

World Intellectual Property Organization (WIPO):

https://www.wipo.int/portal/en/news/2020/article_0015.html (includes links to updates on PCT, MADRID SYSTEM, HAGUE SYSTEM and domain name arbitration, inter alia).

European Union Intellectual Property Office (EUIPO):

https://euipo.europa.eu/ohimportal/en/news/-/action/view/5644698

European Patent Office (EPO):

https://www.epo.org/news-issues/covid-19.html

Should you require any further information or assistance on the matter, please do not hesitate to reach out to us on deo.falzon@fenlex.com or intellectualproperty@fenlex.com.

©Fenech & Fenech Advocates 2020

Disclaimer │ The information provided on this Update does not, and is not intended to, constitute legal advice. All information, content, and materials available are for general informational purposes only.  This Update may not constitute the most up-to-date legal or other information and you are advised to seek updated advice.