When does the principle of priority take off?

Gauci-Maistre Xynou (Legal | Assurance)
Author: Dr. Daniel Inguanez

Baldo Limited v Kontrollur tal-Proprjetà Industrijali (39/2016) 4 Oct 2019

The facts

On the 25th of April 2016 Baldo Limited applied for three trademark registrations; all three relating to the word “Gringos”. Those applications were refused by the Comptroller of Industrial Property (Kontrollur tal-Proprjetà Industrijali) on the basis of their similarity to the trademarks “Gringosmarrakech” and “Grin_gos” for which applications had been filed by a third party on the 23rd of April 2016, according to the principle of priority. Significantly, trademark applications are filed electronically using an e-filing system which is available online twenty-four hours of every day.

Baldo Limited appealed the decisions of the Comptroller before the Court of Appeal arguing that since the 23rd of April fell on a Saturday while the 25th of April on a Monday, the Comptroller could not apply the principle of priority to the trademark applications at issue. Given that the Comptroller is closed on Saturdays, the applications of the third party and of Baldo Limited itself were made on the same business day, Baldo Limited argued, neither should be able to claim priority.

The Court’s Considerations

In the first place the Court of Appeal dealt with the principle of priority. In that respect it considered that in terms of Article 35 (1) of the Trademarks Act (Chapter 416 of the Laws of Malta) the Comptroller must carry out a search of earlier trademarks when deciding whether to accept or refuse an application for registration of a trademark.[1] Article 7(1)(a) then defines “earlier trademark” as one with a date of application for registration earlier than the other trademark at issue.[2] It is therefore clear that it is the date of the application which determines priority.

Secondly, and consequently, the Court of Appeal dealt with the determination of the date of the application. It considered that according to Article 31(1) that date is the date on which the required elements are furnished to the Comptroller by the applicant.[3] These elements comprise:

• a request for registration of a trademark;
• the name and address of the applicant;
• the name and address of the representative or attorney if one is appointed by the applicant;
• an indication of the classes of goods or services for which registration is sought.

The Court of Appeal reasoned that the law makes no further requirement for the applicant to physically file a printed application at the office of the Comptroller or that the office is open at the time of electronic filing. Furthermore, it argued that if an application was included in the electronic system of the Comptroller on any given day and time, even if on weekends, then it is self-evident that the Comptroller has received that application on that date and time and not at any later day or time when processing of the application starts.

That the applications of the third party had indeed been filed electronically on the 23rd of April 2016 and that they contained all the required elements was not disputed. As a result, the Court of Appeal dismissed the arguments presented by Baldo Limited to the effect that the Comptroller was wrong to treat the said third party applications as earlier trademarks. The appeal was thus rejected and the decision of the Comptroller was upheld.

The GMX Commentary

The decision re-affirms and clarifies some intricacies in the trademark filing system. The decision re-affirms that an application is deemed to have been filed as soon as it is entered into the online filing system irrespective of whether it is a weekday, the weekend or a public holiday. Furthermore, the decision is clear on that the Comptroller should not have to acknowledge receipt or even take any cognisance of the application; receipt is self-evident in the electronic filing system. For these reasons it seems that trademark applicants should opt for online filing rather than manual filing so as to reduce the risk of prior third party applications. While this was not the case here, the decision nonetheless reveals the vulnerability of first-to-file systems to trademark squatting. Despite there being remedies for this, it is much simpler to obtain a registration in the first place. When launching a new brand it is important not to disclose the brand, at least not before filing the relevant applications.