A technology company with established brand presence across several EU markets discovered that a third party had filed a trademark application in Malta covering an identical name. The filing predated the client's own Maltese registration by several weeks. Distribution agreements were in place. Commercial losses were mounting with every passing month.
Bad-faith trademark registration in Malta can be challenged through opposition proceedings before the Maltese Uffiċċju tal-Propjetà Intellettwali (Industrial Property Registrations Directorate), which administers IP registration under Maltese intellectual property legislation. A successful challenge requires demonstrating that the applicant lacked genuine intent to use the mark and acted with knowledge of the prior user's rights. The process typically unfolds over several months, depending on the complexity of evidence and whether the matter escalates to civil proceedings.
This case study outlines the strategy chosen, the key milestones reached, the complications encountered, and three transferable lessons for businesses facing comparable cross-border IP disputes.
Client profile and the challenge
The client was a mid-sized software business headquartered outside Malta. It had built a recognisable brand across several Nice classification categories – primarily in software services and digital platforms. Malta represented a small but strategically significant market. A local distributor had been operating under the brand for two years.
The third-party applicant had no known commercial activity under the mark. The trademark application covered classes that directly overlapped with the client's core business. The applicant had, however, moved quickly. By the time the client's Maltese counsel identified the filing, the opposition window had only weeks remaining.
The risk was immediate. Without action, the client faced a scenario in which a third party could assert IP registration rights over the client's own brand name in Malta. That would expose the distributor to an infringement claim and effectively block the client's local operations.
Legal strategy: opposition first, litigation as a reserve
The team filed opposition proceedings within the statutory window. The opposition was grounded in two parallel arguments. First, the client demonstrated prior use of the mark in commerce across EU jurisdictions, supported by dated commercial documentation. Second, the filing conduct of the third party indicated bad faith – a recognised ground for invalidation under Maltese intellectual property legislation and the EU trade mark regulation as applied in Malta.
Establishing bad faith required more than assertion. The evidence package included correspondence records, domain registration histories, and commercial materials showing the client's established presence. The chronology of the third party's filing – coming shortly after a failed commercial negotiation with the client – was a material factor. Courts and registrars in Malta assess bad faith on the totality of circumstances, not a single indicator.
The team structured the opposition to preserve civil litigation as a parallel option. If the opposition proceedings had not succeeded within the expected timeframe, an infringement claim before the Maltese civil courts would have been available. That contingency was not ultimately needed, but the strategic preparation shaped how evidence was gathered and presented.
For a broader view of intellectual property enforcement tools available in Malta, see our intellectual property services in Malta.
Key milestones and complications
The opposition was filed within the deadline. The Directorate acknowledged receipt and issued a notice to the applicant. The applicant initially failed to respond within the prescribed period – a development that appeared favourable. However, the applicant then sought an extension, which was granted under procedural rules.
The extension introduced a three-month delay. During this period, the client's distributor received informal pressure from the third party, including a letter suggesting the distributor's continued use of the mark constituted infringement. That letter required a prompt written rebuttal. Allowing it to go unanswered would have weakened the distributor's position and, by extension, the client's commercial argument.
The applicant's eventual response contested the prior use evidence on narrow grounds. The challenge was procedural rather than substantive – arguing that certain commercial materials submitted lacked certified translation. The team addressed this by resubmitting documents with certified translations within the permitted timeframe. The delay cost approximately six weeks.
The Directorate ultimately upheld the opposition. The registration was refused. The third party did not pursue further appeal within the relevant window.
Businesses navigating digital IP questions in Malta – particularly those involving software, platforms, or AI-related assets – may also find our analysis of AI and technology law in Malta relevant to their portfolio planning.
Transferable lessons for cross-border IP matters
Act before the opposition window closes. In Malta, as in most EU-aligned systems, the opposition period is fixed and short. Missing it forfeits the most cost-effective route to challenge. International businesses should implement monitoring systems that alert them to new trademark applications in each jurisdiction where they operate – not only where they hold registrations.
Bad faith must be evidenced, not asserted. A well-documented commercial history is the foundation of any bad-faith challenge. Businesses that maintain dated records of their brand use – correspondence, invoices, marketing materials, domain registrations – are significantly better positioned when a dispute arises. Gaps in documentation are difficult to fill retrospectively and can undermine an otherwise strong case.
Parallel strategy preparation matters. Opposition proceedings can stall or fail. Having litigation-ready evidence and a clear understanding of civil enforcement options in the relevant jurisdiction means the client is never left without a viable path. In Malta, civil courts have jurisdiction over infringement claims and can grant injunctive relief. Preparing for both tracks from the outset avoids delays if the primary strategy encounters procedural obstacles.
A comparable matter involving cross-border IP portfolio recovery in a civil law jurisdiction is documented in our IP recovery case study for Portugal.
To discuss how these lessons apply to your IP portfolio in Malta or another jurisdiction, contact us at info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our IP practice covers trademark opposition proceedings, bad-faith challenges, portfolio strategy, and cross-border enforcement across both civil law and common law systems. Engaging a lawyer in Malta with genuine cross-border experience – one who understands how Maltese intellectual property legislation interacts with EU trade mark regulation – is essential when a portfolio is under threat. As an international law firm in Malta and across Europe, we work with technology companies, investors, and institutional clients who need coordinated IP protection across multiple legal systems. To explore legal options for your IP portfolio in Malta or beyond, schedule a consultation at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.