Next Generation Partners

Intellectual property in Malta

Fenech & Fenech Advocates

Distinguished as ‘one of the only firms in Malta with a real IP/IT dedicated practice’, Fenech & Fenech Advocates handles all contentious and transactional matters relating to technology M&A, implementation and outsourcing agreements, copyright, trade marks and patents, as well as data protection and remote gaming matters. Practice head Antonio Ghio ‘combines intimate knowledge of the areas in which he practises with the creativity and acumen required to render a sterling service‘. Senior associate Deo Falzon ‘has impressive knowledge of IT/IP law and has noticeable IP litigation experience'.

Practice head(s):

Antonio Ghio


Other key lawyers:

Deo Falzon


Testimonials

‘The Fenech & Fenech team has been at the forefront of the development and application of ICT law in Malta.’

‘Antonio Ghio combines intimate knowledge of the areas in which he practises with the creativity and acumen required to render a sterling service.’

‘The service we have been getting from Fenech & Fenech since we started working with them has been outstanding.’

‘One of the only firms in Malta with a real IP/IT dedicated practice.

‘Antonio Ghio is an institution in Malta for IP/IT law topics. He is a well-read, well-informed, case-law aware and solutions-oriented lawyer.’

‘Deo Falzon has impressive knowledge of IT/IP law and has noticeable IP litigation experience that adds real value.’

‘The team is efficient, understands our needs, and provides the requested data in a quick and clear manner.’

‘Deo Falzon is very diligent, knowledgeable, polite, kind and responsive.’

Key clients

Mobis


ViacomCBS Inc.


EPIC Communications Ltd


The Performing Right Society Limited


Tain


Binderr Limited


KPMG Crimsonwing


KRKA d.d.


Nomad Jewels Ltd


AX Group


Work highlights


  • Successfully represented Mobis Parts in a parallel importation case against a Maltese car parts importer which was selling goods in Malta that were destined for the Korean market.
  • Acting as sole counsel for the Performing Right Society Limited, the only registered collection society in Malta, in a number of contentious and non-contentious cases regarding music rights and royalties.
  • Advising global entertainment distribution group Viacom CBS Inc. (now Paramount) on various considerations tied to filming and photography during live events in Malta.

Ganado Advocates

Offering full-service support in transactional and contentious matters across all areas of soft and hard intellectual property, Ganado Advocates impresses clients with its ‘technical know-how’ in relation to patents, designs, trade marks and trade secrets. Clients include national and European household names in the digital gaming, IT and entertainment industries and local regulators. Paul Micallef Grimaud assists with IP licensing and management contracts, IP registration, oppositions and protection proceedings. Senior associate Philip Formosa lends additional support in data protection compliance matters and, particularly, in the drafting of agreements involving the exploitation of IP rights.

Practice head(s):

Paul Micallef Grimaud


Other key lawyers:

Philip Formosa; Philip Mifsud


Testimonials

‘Their expertise in the subject matter always makes you feel that you are in safe hands.’

‘The intellectual property practice is extremely professional when it comes to availability and flexibility. In terms of technical know-how, it is also very knowledgeable whenever any question is asked. We also appreciate the fact that they directed us to the solution that we required in the particular scenario.’

‘Philip Mifsud and Philip Formosa are very accessible and knowledgeable. They do their best to make themselves available to the client. The depth of their technical knowledge is also apparent in the detail and the level of the documents that they deliver.’

‘The teams has in-depth knowledge of local requirements and the expectations from regulators both in relation to data protection and the payments industry.’

‘Philip Formosa is a very dedicated professional offering legal advice which is very practical and grounded. He has always been available to quickly answer any request for information that we had.’

‘I was positively impressed by the efficiency and the ease of working with Ganado Advocates. Everything was done over calls and emails without the need for us to visit their offices. They very quickly understood what we needed. They just took our problems on board, asked questions as necessary and ensured the problem was resolved to our satisfaction.’

‘The team’s strengths all stem from the individuals themselves. Philip Formosa ensured that our project was resolved efficiently. Paul Micallef Grimaud was always aware of what was going on and got directly involved when he needed to. This gave us even more peace of mind that everything was being tackled in the right way.’

‘They are always available and ready to assist. Very professional and a pleasure to work with, especially Paul Micallef Grimaud.’

Mamo TCV Advocates

Mamo TCV Advocates is highly regarded for the breadth and depth of its practice in intellectual property and technology law, specialising in transactional matters, and both prosecution and enforcement work. ‘One of Malta’s leading experts’, Antoine Camilleri maintains a busy practice advising on licensing, software agreements and general commercial contracts, IP prosecution and coordinating anti-counterfeit measures. Claude Micallef Grimaud is another leading figure for TMT and data protection mandates.

Practice head(s):

Antoine Camilleri; Claude Micallef Grimaud


Testimonials

‘The practice has recently launched a rebranded website which we find to be much more user-friendly. The rebranding builds on the already highly professional image of this firm, which strengthens its standing amongst Malta’s top-tier law firms.’

‘Antoine Camilleri is one of Malta’s leading experts in intellectual property but also in information technology law. His delivery has always been impeccable. He is our first point of contact with Mamo TCV and immediately responds to our requests for assistance.’

‘The lawyers are all well versed on the subject and available any time for clarifications.’

Work highlights


  • Defending a client in court in a copyright infringement claim.
  • Advising a client on the ongoing reorganisation of its intellectual property, including general advisory work, attending to various IP filings in Malta, and extensive contract work.
  • Advising a client on ongoing filings and representing the client in a multitude of EU trade mark applications and registrations (including filing and defending against third-party oppositions and appeals in front of the European Union Intellectual Property Office).

Camilleri Preziosi

Camilleri Preziosi leverages deep expertise in the registration, management and enforcement of IP matters in Malta, as well as before the EUIPO and the WIPO. On the transactional front, the team routinely assists with licensing agreements, franchising and other commercial contracts. Associate Sharon Xuereb is experienced in litigation concerning the invalidity of infringing trade marks, with Steve Decesare handling IP-related transactions.

Practice head(s):

Steve Decesare


Other key lawyers:

Sharon Xuereb


Testimonials

‘The team at Camilleri Preziosi were very responsive and knowledgeable about the processes that needed to be followed. This made the process of dealing with IP very easy.’

‘Steve Decesare and Sharon Xuereb were exceptional throughout. Their availability, responsiveness and knowledge of the subject matter made the process seamless.’

Key clients

DMD Autoparts


Valletta Cruise Port PLC


DB Group Franchising Limited


Melita Ltd


Computime Limited


Malta International Airport PLC


Innovative Foods Ltd


The Guard Limited


IZI Group plc


Work highlights


  • Advised IZI Group on a number of trade mark registrations, assignments and licences in the gaming, betting and lottery sector.
  • Advised Computime Ltd on a variety of IT and software licensing agreements.
  • Advised DB Group Franchising on protecting its brands and trade mark registrations and defended the client in a number of oppositions filed against its trademark applications.

GTG Advocates

Described as ‘impeccable in its service delivery’, with ‘in-depth knowledge of all intellectual property aspects’, GTG Advocates‘ practice is headed by industry heavyweight Ian Gauci, together with senior associate and ‘rising star Terence Cassar. The practice is highly regarded for its experience in prosecutions, portfolio management and in matters with a significant IT and TMT nexus, such as software licensing, online gaming and betting.

Practice head(s):

Ian Gauci; Terence Cassar


Testimonials

‘GTG’s intellectual property practice has in-depth knowledge of all intellectual property aspects, with particular expertise in the overlap between IP and technology laws. GTG have been very helpful in leading various trade mark branding exercises for our company, providing seamless advice and excellent input, including from a strategic perspective.’

‘Terence Cassar is our go-to guy for matters related to intellectual property and data protection and privacy. His ability to simplify problems and translate legal issues into business ones is strongly appreciated since it ensures we address the right concerns, quickly.’

‘Ian Gauci has a thorough understanding of IP matters, especially in the technology sector, and ensures that we get the right advice quickly. Ian provides proactive input to us in terms of keeping us updated on issues and developments that might impact our market, or us directly – something that is much appreciated, considering the busy nature of all those working in our mutual fields.’

‘What makes this practice unique is that GTG Advocates’ intellectual property practice has in-depth knowledge of all IP rights.’

‘The practice is capable of coming up with solutions to all our transactional, regulatory and litigation needs in intellectual property matters.’

‘In my view, Terence Cassar is the stand-out individual at GTG. His expertise in intellectual property law is unparalleled, especially with regards to the overlap with gaming, data protection and commercial law. A top-notch lawyer, always a step ahead and undoubtedly GTG’s next partner and rising star.’

‘GTG’s IP team is impeccable in its service delivery and is headed by two highly respected lawyers in the IP field, namely Ian Gauci and Terence Cassar.’

‘Ian Gauci is a stand-out individual and is the most seasoned lawyer I have ever met for technology-related business. His knowledge of IP knows no bounds, and having been a critical figure locally for years, he provides the peace of mind that clients need. He is capable of telling you both the rules and why the rules exist, as well as their history.’

Key clients

Golden Race Group


Hacksaw Gaming Group


BMIT Plc


Apollo Games


Ethernity Cloud Ltd


Qufan Internet Technology Ltd


RS2 Software Plc


Malta Digital Innovation Authority


Playson


ComeOn! Gaming


Mompalao Trading Ltd


Novusbet Ltd


Spinmatic Ltd


ForumPay


Quinel Ltd


Tech.MT


Work highlights


  • Advising Golden Race Group on IP and image rights in a licensing deal with the rights-holder of one of the biggest professional sports leagues.
  • Advised the Hacksaw Gaming Group in a major cross-border games distribution deal with Scientific Games.
  • Advises Ethernity Cloud Ltd with regards to its decentralised digital ecosystem that allows regular cloud software to be run as decentralised cloud applications over distributed ledger technology architecture, and its related Ethernity token.

GVZH Advocates

Leveraging deep expertise, GVZH Advocates is 'well equipped and highly knowledgeable in substantive as well as procedural matters concerning IP law and litigation’. The practice demonstrates particular strength in the filing of trade mark and patent applications, and in infringement actions, enforcement and anti-counterfeiting actions. The ‘extremely knowledgeable and efficientMichael Grech heads the practice.

Practice head(s):

Michael Grech


Testimonials

‘The team is well equipped and highly knowledgeable in substantive as well as procedural matters concerning IP law and litigation. The firm is highly dependable in this respect.’

‘Michael Grech is extremely well versed in the necessary legal areas and a pleasure to work with.’

‘What makes GVZH a pleasure to work with on IP matters is not only the deep knowledge that the firm possesses, but also the relationship that the team members take the time to build with clients like us, and to understand how the IP ties in to what we do on a day-to-day basis.’

‘Michael Grech is the person I have dealt with most, and I find him to be very easy to work with. Not only is he extremely knowledgeable and efficient, but he also has a solution-oriented mindset and has taken the time to build a relationship. Case management has also been exceptional, as we leave it entirely in the hands of Michael and his team to follow up on any necessary updates or other legal work to maintain our IP.’

Key clients

Malta Government Investments


Apple (Napoleon)


Astellas Pharma Europe BV


Johnson & Johnson


Intercontinental Hotels Group


European Audiovisual Observatory


Malta Gaming Authority


Corinthia Hotel International


La Liga Nacional De Fútbol Profesional


Loqus


Work highlights


  • Advised Malta Government Investments (MGI), the sovereign wealth fund of the Government of Malta, on all IP-related aspects of the national concession for the national lottery and games of chance for a period of ten years, including drafting all IP licensing agreements and the registration and assignments of the trade marks forming part of the concession.
  • Advised Apple on all IP-related aspects of the local shooting of the blockbuster movie “Napoleon”, directed by Ridley Scott.
  • Advised Intercontinental Hotels Group on all trade mark clearance searches in Malta with respect to the launch of its new international rewards programme brand.

Chetcuti Cauchi Advocates

At Chetcuti Cauchi Advocates, founding partner Maria Chetcuti Cauchi is highly experienced in advising European design brands and IP owners on trade mark, patent, design and copyright protection in Malta. The firm also has an increasing focus on assisting individual entrepreneurs seeking to protect their IP at a national and international level. Corporate partner Charlene Mifsud and associate Susanna Grech Deguara are the other key contacts.

Practice head(s):

Maria Chetcuti Cauchi


Other key lawyers:

Charlene Mifsud; Susanna Grech Deguara


Testimonials

‘The team at Chetcuti Cauchi are always on the ball, fast and efficient. They are very knowledgeable and go out of their way to assist clients.’

‘Charlene Mifsud and Maria Chetcuti Cauchi are always available, including on public holidays and at weekends.’

‘Very quick, clear and strive for excellence.’

‘The team are clearly very well versed in intellectual property. Being a modern and innovative law firm, they keep up with the latest technologies to assist the client in the most efficient manner.’

‘Susanna Deguara was of great help during the process. She understands the challenges brought about by IP well and solves problems in a pragmatic and efficient way.’

Key clients

University of Malta


Ing. Sean Agius


Betting Games Network Ltd


Azure Holding Limited


Aqua Group Ltd


Camel Brand Co Ltd


Cabinet Chaillot


Polinno Group


Altern Limited


IKEA Systems BV


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


Work highlights


  • Assisted Epic88 Ltd with growing a global trade mark portfolio, including registering over ten EU and UK trade marks and advising on the process for obtaining a patent.
  • Assisted Betting Games Network with filing and registering a number of trade marks with the EUIPO and the UK IPO.
  • Advised a consortium of University of Malta engineers on obtaining a patent for their latest invention.

WH Partners

Robert Zammit is the lead partner at WH Partners, which assists with the registration of trade marks and designs in Malta and with the EUIPO, and in the commercialisation of all types of IP through licensing, franchising and sponsorship. It also represents clients in oppositions to local and European registrations and domain name disputes. Matters related to software development, gambling and betting law are also key areas of activity.

Practice head(s):

Robert Zammit


Key clients

Umnai


Everest Networks Limited


Omniscope


Eurotrade International Limited


Pragmatic Play


Work highlights


  • Assisted Umnai with the formulation of submissions for US patents and PCT patents.
  • Advising Eurotrade International Limited, the company which manages the Interwetten brand and sister company to the Interwetten remote gaming licensed entities, with negotiating a three-year regional sponsorship deal with Liverpool Football Club.
  • Advised Omniscope Limited, an AI-enabled biotech company which is in the business of developing medical diagnostics tools, with its IP registration, particularly its trade mark registration for “omniscope”.