European Union Trademark: A Malta Perspective

What's Inside

Malta has been a European Member State since 2004. This has presented industry with two routes for trademark protection, depending on the business needs of the applicant. One can register a national/domestic trademark directly in Malta with the Malta Intellectual Property Office or obtain protection via the European Union Trademark (EUTM) registration route, the latter having the added advantage of covering 27 countries within the EU.

It is an undisputed fact that a trademark is often a company's most valuable asset, hence the requirement of maximum protection under the laws of the market within which the company operates. The EUTM presents a state of the art, cost-friendly mechanism to achieve such widespread, through protection.

From Community Trademark to EUTM: Legal Evolution

The earlier “Community Trademark (CTM)” regime has been replaced by the European Union Trademark following major reforms:

• The Office for Harmonisation in the Internal Market (OHIM) was renamed the European Union Intellectual Property Office (EUIPO)  
• The CTM was formally rebranded as the European Union Trademark (EUTM)  
• The current framework is governed primarily by Regulation (EU) 2017/1001

These reforms modernised and codified EU trademark law, ensuring greater clarity, harmonisation, and adaptability to digital and globalised commercial environments.

Benefits of EUTM Registration

Besides the obvious advantages of registering one’s trademarks (or “marks”) at one centralised office through one single registration, other advantages include:

• Protection through one registration form and obtaining one renewal date applicable in all the EU member countries
• Removing any need to fill out multiple registrations and pay multiple fees
• Obtaining a more regional rather than a national/domestic reach for protection of one’s brand
• Applying in English (or any of the official EU languages), and indicating a second language (French, German, Italian, or Spanish), which may be used in further communications with between the applicant and OHIM
• Simplified and single registration requirements rather than multiple requirements in separate countries.
• The application does not require a statement of use or intent to use the mark.
• Use of the mark on one member state constitutes use in all of the EU member countries
• The use of the official International Classification of Goods and Services system for the purpose of the registration of marks under the Nice Agreement administered by the World Intellectual Property Organization (WIPO).
• The possibility of filing multi-class applications.

Practical Considerations and Risks

While the EUTM remains highly attractive, several strategic risks must be considered:

1. Unitary Character Risk: A successful opposition or objection in one Member State can defeat the entire application
2. Enforcement Complexity: Enforcement is EU-wide but requires action before designated EU trademark courts.  
3. Brexit Considerations:  EUTMs no longer extend to the United Kingdom, therefore, separate UK filings are now essential for pan-European brand strategies.

Malta’s Role in EUTM Strategy

Malta continues to be a strategic jurisdiction for trademark structuring and management:

• English as an official language simplifies EUIPO procedures
• Integration with IP holding structures, royalty planning and cross-border tax structuring
• Malta’s trademark regime has been updated in line with EU law, including implementation of the Trade Marks Directive (EU) 2015/2436 and introduction of administrative revocation and invalidity procedures at national level
• Where an EUTM fails, applicants may still convert into national applications, including Malta, preserving filing dates (subject to conditions).

The European trademark system has evolved from a centralised filing tool into a sophisticated, harmonised IP framework aligned with modern business realities.

The transition from CTM/OHIM to EUTM/EUIPO, coupled with the codification under Regulation (EU) 2017/1001, has strengthened legal certainty, expanded registrability, and enhanced procedural efficiency.

From a Maltese perspective, the jurisdiction remains well-positioned as a strategic hub for managing EU trademark portfolios—particularly where legal, commercial, and tax considerations intersect.