Intellectual property in Malta

Fenech & Fenech Advocates

The ‘leading‘ team at Fenech & Fenech AdvocatesComparative Guides promotional icon has become an advisor of choice for international blue-chip clients seeking assistance with the intricacies of Maltese intellectual property law. As well as assisting with the full scope of non-contentious matters relating to implementation and outsourcing agreements, database issues, copyright, trade marks, patents and data protection, the group also handles litigious work in all these areas. Practice head Antonio Ghio works closely with noted associate Deo Falzon.

Practice head(s):

Antonio Ghio

Other key lawyers:

Deo Falzon

Testimonials

‘The team kept in close contact throughout the pandemic and has always provided us with experienced advice in our market niche.’

‘Deo Falzon handles our intellectual property and related litigious matters. We have always found him readily available to address our concerns and efficient in dealing with the issues that arise.’

‘Specialised law firm which is also familiar with the legal area of parallel imports.’

‘Leading law firm in the territory of Malta.’

‘It is noteworthy that the team is very responsive, polite, thorough, professional, and supportive.’

‘I worked mainly with Deo Falzon, who answered my emails very quickly and provided the requested information in a timely manner. Deo was very polite and clear and provided detailed answers to my queries. He supported me in the most professional way.’

Key clients

Flexera

Chapter 4 dba. Supreme

EPIC Communications Ltd

Performing Right Society Limited (PRS)

Tain

Gaming Innovation Group plc

KPMG Crimsonwing

KRKA d.d.

GAN

International Business Machines (IBM), US

Work highlights

  • Assisted IBM with the acquisition of a Myinvenio – a group of technology companies involved with artificial intelligence, machine learning and business process automation, with a special focus on transfers of intellectual property assets – as well as with the downstream merger of the target into its Italian subsidiary prior to the acquisition.
  • Handling a range of contentious and non-litigious matters for the Performing Right Society, the only collecting society authorised to operate within Malta by the Copyright Board.
  • Successfully defended EPIC Communications from a warrant of prohibitory injunction, aimed at imposed intermediary liability for allegedly copyrighted content by Serie A football rightholders on the client.

Ganado Advocates

At Ganado Advocates, the team’s ‘appreciation and passion‘ shines through its intellectual property work, whether that be negotiating procurement terms, assisting with licensing agreements and registration procedures, advising on data protection issues or acting in passing off and defamation proceedings. With well-regarded practitioner Paul Micallef Grimaud at the helm, the firm is able to provide a roster of international and domestic clients from the gamut of industry sectors with ‘a sense of security whilst traversing uncharted territories‘.

Practice head(s):

Paul Micallef Grimaud

Other key lawyers:

Philip Mifsud; Philip Formosa

Testimonials

‘The team at Ganado were very understanding and flexible to meet at times convenient to us. They were well prepared and came up with solutions to the questions posed.’

‘Paul Micallef Grimaud was very approachable, nice and welcoming. He kept to his deadlines despite the time limitations and knew exactly what he was talking about.’

‘Very strong knowledge on general IP law in a vast variety of jurisdictions and sound generic advice prior to seeking country-specific advice.’

‘Very professional and quick response. Their network is also extensive.’

‘Ganado’s Intellectual Property practice team has been very helpful as an outside resource for our US-based legal team on a wide range of issues. It is very helpful to be able to rely on one team for comprehensive legal services, and Ganado’s team has definitely been able to service all of our varied needs during the course of our time working together. I know that I can bring a question or issue to them and quickly be directed to the right person to provide prompt and thorough assistance.’

‘We have experienced working with a number of legal firms locally. Ganado Advocates is the largest with a comprehensive level of expertise covering various industries. The firm is well connected not just locally but even internationally, making it easier for clients seeking cross-border legal consultation. The firm’s resources are structured into teams to ensure that client’s requests are attended to within reasonable timeframes and even to ensure business continuity. Moreover, the firm has a proven track record and doesn’t compromise on any of its deliverables, be it timelines, quality of advice or manner of communication.’

‘What is unique with Ganado Advocates is the effort they dedicate to view the legal aspects from a technological lens… which is not easy at all. They ensure that through the legal advice they provide us, we are empowered to drive forward our operations always retaining safe legal parameters.’

‘Appreciation and passion for technology, adaptability in understanding our unique operations and providing us with a sense of security whilst traversing uncharted territories.’

Mamo TCV Advocates

Mamo TCV Advocates continues to be widely recognised for its ‘first class‘ contentious anti-counterfeiting work, in which it regularly represents leading global brands from a range of sectors. On the advisory side, the firm assists with a vast number of trade mark and patent registrations; in recent times, these have increasingly included EU as well as domestic filings. Antoine Camilleri, David Tonna and Claude Micallef Grimaud are the key names to note.

Practice head(s):

Antoine Camilleri; David Tonna; Claude Micallef Grimaud

Testimonials

‘Mamo principally provides anti-counterfeiting services, more specifically customs work. They are diligent and quick in responding.’

‘Antoine Camilleri is an experienced lawyer who is very much client-oriented. He is flexible in adapting to the client’s strategy and provides the best service from a cost-efficient point of view.’

‘Mamo has assisted us with customs matters and provided a first class service, going above and beyond what is usually expected to assist us and our clients. Their knowledge and expertise in this area is second to none.’

‘Antoine Camilleri is extremely knowledgeable and is always on hand to answer our numerous queries. With regard to a particularly complex and unusual matter he is handling for us currently, Antoine has guided us and our client step by step, making recommendations based upon his vast experience.’

Work highlights

  • Defending a world leading software company against a copyright infringement claim.
  • Successfully represented a world leading tobacco manufacturing client in a case concerning the invalidation of a third party trade mark registration.
  • Assisting a leading Asian chocolate and confectionery manufacturer with numerous EU trade mark applications and registrations.

Camilleri Preziosi

Camilleri Preziosi has a wealth of experience in the registration, securitisation, management and enforcement of intellectual property matters, both domestically and before the EU IP Office and the WIPO international bureau. Litigation is a cornerstone of the practice; both team lead Steve Decesare and senior associate Sharon Xuereb have stellar track records representing clients in cases relating to infringement of intellectual property rights before the Maltese courts.

Practice head(s):

Steve Decesare

Other key lawyers:

Sharon Xuereb; Alexia Valenzia

Testimonials

‘CP have always provided for a great skillset no matter the type or nature of request we sent their way. They are able to rope in the right resource for the right call.’

‘Alexia Valenzia is brilliant in handling our contractual and licensing matters with clients.’

‘The team was knowledgeable on the topic and guided us accordingly. Since Covid-19 brought challenging times onto us due to unexpected budget restrictions, Camilleri Preziosi were patient with our slow approach to taking decisions.’

‘Alexia Valenzia hand-held us through the process, helping us with cost breakdowns and details for us to understand the process better.’

Key clients

Malta International Airport P.L.C

Melita Limited

Computime Limited

Retail International Limited

DMD Autoparts

Omni Matrix Limited

Panta Lesco Limited

Valletta Cruise Port PLC

Work highlights

  • Represented DMD Autoparts in a trade mark infringement and parallel imports claim before the Courts of Malta.
  • Advised software development company Computime on issues regarding the protection of its intellectual property in software contracts.
  • Advising local business services contractor Panta Lesco on the registration of its trade marks following a rebrand.

GVZH Advocates

GVZH AdvocatesComparative Guides promotional iconoffers a wealth of experience and expertise‘ spanning contentious and advisory work across the key areas of trade marks, copyright issues and patents. In addition to trade mark filings and patent applications, infringement actions and anti-counterfeiting cases, the group also has a significant practice assisting leading multinational firms – as their local brand representatives –  with intellectual property protection matters. Team lead Michael Grech and senior associate Jackie Mallia are the core contacts.

Practice head(s):

Michael Grech

Other key lawyers:

Jackie Mallia

Testimonials

‘A very good, professional team.’

‘The practice offers a wealth of experience and expertise in the IP field. Their advice is offered in a highly professional yet friendly and informal manner where this is welcomed and appropriate. The team is highly responsive and well attuned to our needs.’

‘To date, I’ve had the opportunity to interact directly with Michael Grech and Jackie Mallia in relation to IP related issues and disputes. Both have been an absolute pleasure to work with, approachable, highly responsive, and attentive to detail.’

‘Prioritise work without pressure on payment.’

‘Very good customer service.’

‘The team knew the film commissioner and the office’s practices very well and were able to help get signatures and responses in a timely fashion.’

‘Michael Grech gave quick, practical advice and he followed up to ensure we finalised our documents.’

Key clients

Amblin

H.D. Lee Company

Malta Gaming Authority

The Prudential Company

Run It Once Limited

Skydance Media

Witty Technologies

Escada

Shell

Netflix

Work highlights

  • Advising Netflix on all local issues relating to its intellectual property portfolio.  
  • Advising Shell on all local issues relating to its intellectual property portfolio.
  • Successfully argued against an opposition which was filed by a third party, and which was rejected by the EUIPO, on behalf of Witty Technologies.

Chetcuti Cauchi Advocates

As well as counting many long-established companies among its clients, the offering at Chetcuti Cauchi Advocates has a particular focus on advising entrepreneurs, start-ups and SMEs; recently, the team has assisted numerous local corporations with the acquisition of their own intellectual property. Maria Chetcuti Cauchi leads the group, ably supported by associate Susanna Deguara.

Practice head(s):

Maria Chetcuti Cauchi

Other key lawyers:

Susanna Deguara

Testimonials

‘Potential clients should know that Chetcuti Cauchi Advocates is kind and professional no matter how small the matter is.’

‘We are always looking for reliable law firms for processing IP matters in other countries. With Chetcuti Cauchi Advocates we found what we were looking for.’

‘Susanna Deguara handled our complex legal situation with approachability, competency, professionalism, courtesy and clear communication. She handled our case superbly and was successful in receiving monies that were due to our family.’

‘My experience with Chetcuti Cauchi Advocates was a very positive one. I never once was treated as anything other than a valuable client. From start to finish, courteousness, great communication, immediate feedback and practical advice whenever I had any queries or concerns were excellent. Highly recommend.’

Key clients

Form Matters

Pinreel

University of Malta

Dr Philip Farrugia

Ing. Sean Agius

Betting Games Network Ltd

Azure Holding Limited

Aqua Group Ltd

Camel Brand Co Ltd

You Run Ltd

Cabinet Chaillot

Polinno Group

Altern Limited

General Supreme Ltd

Arcus Management Ltd

Dr Lalit Garg

Dr Melissa Formosa

IKEA Systems BV

Sovereign Order of Saint John of Jerusalem (S.O.S.J.)

Kovári Patent and Trademark Attorneys’ LLC

Marie Brizard Wine & Spirits France

Goody’s – Everest Group of Companies

Actio IP

D Young & Co LLP

Cooley (UK) LLP

Beyond Attorneys at Law

Epic 88 Ltd

Work highlights

  • Assisted Epic 88 with the drafting of its international intellectual property plan.
  • Assisted domestic start-up Form Matters with its intellectual property strategy, as well as successfully representing the client in a trade mark conflict with a local competitor.
  • Assisted a consortium of engineers from the University of Malta with obtaining a patent for their latest invention.

GTG Advocates

GTG Advocates is able to leverage its considerable technology, software and gaming expertise to provide in-depth intellectual property advice to clients operating at the intersection of those industries. Under the joint leadership of managing partner Ian Gauci and senior associate Terence Cassar, the group handles matters ranging from contract drafting and outsourcing on the advisory side, to infringement claims.

Practice head(s):

Ian Gauci; Terence Cassar

Testimonials

‘GTG is a top firm in IP, with a very knowledgeable IP team that does not only focus on local IP legal matters but has very strong knowledge about IP matters across countries. What makes GTG above the rest in our view is that they take care of our IP matters as a matter of course, where they take special care in ensuring our IP is protected in every transaction we enter into.’

‘Ian Gauci has a reputation of being one of the top experts on IP law in Malta, and we confirmed it ourselves in our interactions with GTG. However, GTG also has another IP expert, Terence Cassar, who we use extensively, given he has specialised in IP matters for online gaming companies and e-commerce companies. Both Ian Gauci and Terence Cassar work extensively in the online gaming sector and thus address IP matters specifically for our sector.’

Key clients

Apollo Group

ReCreating Europe

Malta Council for Science and Technology (MCST)

Golden Race Group

BMIT plc

Playson

Hacksaw Gaming Group

RS2 Software plc

Enemalta Plc

Tech.MT

ComeOn!

Entain (Bwin Holdings, previously GVC)

Malta Information Technology Agency (MITA)

Peperosso Group

Mompalao Trading

Novusbet Limited

Qufan Internet Technologies Ltd

EjjaBet

Flint Innovations Limited

Anker Holdings (UK) Ltd

Fazi & Triple Crown

Green Brick Labs

System 73

Spinmatic Limited

Kyber Network International Limited (Jedha Holdings)

Pinewood (BitBay)

Lily Bonnici Grima

Hollywood TV Studios

University of Malta Academic Staff Association (UMASA)

Work highlights

  • Appointed as National Expert for Malta in the EU funded Horizon 2020 Research and Innovation programme ReCreating Europe, an unprecedented exercise of systematic legal mapping of copyright flexibilities both at an EU and national level, which will materialise in an open database and a report submitted to the EU Commission.
  • Advised Golden Race Group, as lead counsel, on a major games distribution deal in Italy with GameNet SPA and its subsidiaries – including GoldBet, Lottomatica, Intralot and Better – for both online and land-based gaming, including exclusivity rights for land-based operations.
  • Advised Apollo Group, as lead counsel, on a cross-border restructuring of IP Holdings and part re-branding.

WH Partners

Notable names from the gaming, software development and integration, and fintech sectors form the core of the client roster at WH Partners. Key areas of strength include advising on the exploitation and commercialisation of all types of intellectual property, and due diligence in the M&A context. Co-managing partners James Scicluna and Olga Finkel are recommended, as is Robert Zammit.

Practice head(s):

James Scicluna; Robert Zammit

Other key lawyers:

Olga Finkel

Key clients

Inxtant Limited

Everest Networks Limited

Interwetten Group

Pragmatic Play

IBID Group

Ricston Limited

The Coffee Company Limited

Betsson

Betclic

111 Technology Limited

Work highlights

  • Assisted Alkalife, a producer of food supplements and nutritional products, with its registration of EU trade marks, as well as advising on the development and drafting of manufacturing and distribution agreements for the EU market.
  • Represented Inxtant in a EUIPO trade mark opposition appeal procedure.
  • Assisted Everest Networks with the preparation and submission of EUIPO trade mark applications for the protection of the client’s blockchain platform and blockchain-based products.