I’m not a trade mark obsessive (he says unconvincingly), but a recent holiday to Malta perked my interest in a local business and has prompted this mini-case study into their trade mark strategy and the nuances of that created by their location.

At Stobbs, we are fortunate to work with clients from different parts of the world, taking into account their particular circumstances. Fundamentally, this may not significantly change what we look to protect, but more on how we go about protecting it.

The business at hand is Simonds Farsons Cisk, owners of the CISK brand of lager – anyone that has been to Malta will know this is found everywhere there – and KINNIE, a brand of soft drink. It has an ‘adult flavour’, I would recommend.

Naturally, they have protected these brands well in Malta (to a certain extent they may have too many registrations with some providing very little additional scopes of protection). They also have protection for other (smaller) brands for products that may not leave the island as well as protection for the bars they operate there, the beer festival they run and a retail services registration for their shop.

However, they do not have a lot of protection for their CISK and KINNIE merchandise and they would likely not want a rogue business selling bad quality CISK or KINNIE t-shirts in Maltese resorts. These are gaps they may wish to fill, although I expect these marks to enjoy such a strong reputation in Malta that they may be in a good position to enforce based on existing registrations even against dissimilar products.

Internationally, CISK is protected in the EU and in Australia, Canada and the UK, countries of the Maltese diaspora. There is also protection in China, India and Japan, among others.

KINNIE is more widely protected. Malta as a nation positions itself as a bridge between Europe and the Arab World; the Maltese language is related to Arabic. KINNIE is well protected across Arab countries where alcohol is illegal or not widely consumed.

Their home Intellectual Property Office (“IPO”) is, of course, the Maltese one. In our experience, they are super helpful and interestingly located in the same building as the former British military HQ. They are also, to my knowledge, the only IPO to have a guard cat!

Nevertheless, Malta operates a single class trade mark system. This means they have a lot of registrations to keep an eye on in Malta. The good thing is official fees are fairly low at €115 and they’ve filed a few applications in recent years themselves. I hope they have a system in place to track renewal dates.

Malta is also not yet a member of the International trade mark system, the Madrid Protocol, administered by the World Intellectual Property Organization (“WIPO”). This means that all of their overseas protection is in place nationally and, in short, is more expensive to obtain and maintain. Malta is the only EU member state not to be a member of the Madrid Protocol. I heard from a WIPO official recently that their accession is slated for 2025. I have heard that they are joining “soon” for a few years now though.

The EU is a member of the Madrid Protocol so that presents an option to access this system, albeit it’s a more of an expensive way to do so (as their handling fee is €300).

In terms of their EU trade marks, these registrations become vulnerable to cancellation if they are not put to genuine use in the Union for a continuous period of five years. CISK, for example, has a huge market share for lager in Malta, but Malta represents a mere 0.1% of the EU’s population. This poses the theoretical question of whether this Maltese use would represent use “in the Union”. While I’ve not come across CISK until my recent trip, it could be sold in other EU countries. What may also serve in their favour is that Malta is a significant tourist destination and many EU consumers would have come across the brand on their holidays. I think we’d relish getting into this argument at Stobbs.

In conclusion, a “one-size-fits-all” protection strategy is never appropriate. Whether that’s on what to protect, but also on how to protect it.