Trademark Reputation, Similarity and Procedural Pitfalls: The Impact of the Business Royals Ruling

Rothmans is a long-established proprietor of tobacco trade marks, including “ROYALS”, registered in Malta as early as 1969. BR International is the owner of the figurative mark “Business Royals”, registered in June 2013 in Class 34 for cigarettes.

The dispute spans more than a decade and has involved:

• administrative opposition proceedings before the Industrial Property Registrar;
• appeals to the Court of Appeal; and
• a separate civil invalidity action challenging the subsisting registration.

Opposition Proceedings Before the Registrar and Appeal

In 2019, Rothmans opposed BR International’s trademark application, relying on its earlier ROYALS registrations and alleging likelihood of confusion, reputation, and unfair advantage.

The Industrial Property Registrar:

• upheld the opposition in part on likelihood of confusion;
• rejected the reputation-based arguments, citing insufficient evidence.

Rothmans appealed, arguing that the Registrar had adopted an unduly restrictive approach to reputation evidence, particularly given the statutory prohibition on tobacco advertising in Malta.

Court of Appeal Findings on Reputation and Confusion

In earlier appellate proceedings, the Court of Appeal recognised that:

• the ROYALS mark enjoyed strong public recognition in Malta despite limited contemporary advertising;
• legal restrictions on advertising could not be used to penalise trademark owners when assessing reputation;
• the term “Royals” retained a distinctive and recognisable character among consumers.

The Court rejected the Business Royals application on confusion grounds, reinforcing the principle that evidence of reputation must be assessed contextually, especially in regulated industries.

The Invalidity Action and November 2025 Judgement  

Separately, Rothmans had instituted an invalidity action in 2019 seeking cancellation of the Business Royals Premium mark.

In its November 2025 judgment, the First Hall of the Civil Court (Commercial Section) dismissed the action without examining the substantive merits.

The court held that:

1. Incorrect Statutory Basis. The action was brought under the Trademarks Act, Cap. 597 (2019), whereas the impugned mark had been filed and registered in 2013, when the applicable law was the Trademarks Act, Cap. 416.

2. Procedural Defect Was Determinative. Because the claim relied on legislation not in force at the relevant time, the court declined to consider arguments on confusing similarity or alleged bad faith.

3. Costs. Rothmans was ordered to bear the costs of the civil proceedings, while BR International bore the costs of its counterclaims.

This judgment confirms that invalidity proceedings are strictly governed by the legal framework applicable at the time of registration, and procedural misalignment is fatal irrespective of the underlying merits.

Procedural Precision Is Critical

Trade mark owners must ensure that every challenge – opposition, appeal, or invalidity – is anchored in the correct statutory regime, especially where registrations pre-date legislative reform.

Opposition and Invalidity Are Not Interchangeable

Success in opposition or appeal proceedings does not guarantee success in invalidity actions, which are procedurally and legally distinct.

Regulated Industries Require Contextual Evidence Assessment

The appellate findings on reputation remain significant for rights-holders in industries subject to advertising bans, confirming that reputation can subsist independently of ongoing promotional activity.

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Procedural Accuracy Is Decisive in Trademark Invalidity Actions

The November 2025 judgment confirms that Maltese courts will treat procedural alignment with the correct statutory regime as a threshold issue, capable of disposing of an invalidity action. Even where a claimant can demonstrate long-standing prior rights, market recognition, and potential confusion, those arguments will not be entertained if the action is framed under legislation that was not in force at the time of the contested registration.

For rights-holders, this underscores that invalidity proceedings are not merely substantive exercises but highly technical procedural actions, where statutory misalignment is fatal.

Legislative Transitions Create Litigation Risk for Legacy Registrations

The case illustrates the litigation risks that arise where trademark registrations straddle legislative reform, particularly the transition from Cap. 416 to Cap. 597. The court’s approach makes clear that:

• newer statutory concepts cannot be retrofitted onto older registrations; and
• practitioners must carefully map the registration date, applicable law, and available remedies before initiating proceedings.

This is especially relevant in jurisdictions like Malta, where trademark law has undergone structural reform, and where older registrations remain commercially active.

Opposition, Appeal and Invalidity Serve Distinct Legal Functions

The dispute demonstrates that success in opposition or appeal proceedings does not automatically translate into success in invalidity actions. Each procedure operates within its own legal framework, evidentiary rules, and statutory basis.

While the Court of Appeal’s findings on confusion and reputation were favourable to Rothmans in the opposition context, those findings could not salvage an invalidity action that was procedurally defective. This reinforces the importance of treating each procedural avenue as legally autonomous, rather than as sequential stages of a single dispute.

Reputation Evidence Must Be Assessed in Regulatory Context

The appellate findings remain significant for brand owners operating in heavily regulated sectors, such as tobacco. The Court of Appeal’s recognition that reputation can subsist despite statutory advertising bans clarifies that:

• lack of recent promotional activity does not negate trademark reputation; and
• courts must assess reputation contextually, taking into account regulatory constraints imposed by law.

Although these findings were not revisited in the invalidity judgment, they continue to provide important guidance for future opposition and infringement proceedings involving regulated products.

Costs Exposure Follows Procedural Missteps

The costs order highlights a practical consequence of procedural error: costs liability may follow even where substantive arguments remain untested. For multinational brand owners, this reinforces the importance of early procedural risk assessment, particularly in jurisdictions where litigation costs can escalate over protracted timelines.

Strategic Planning Is Essential in Long-Running Trademark Disputes

Finally, the case underscores the importance of coherent long-term litigation strategy in trademark enforcement. Where disputes unfold over many years and across multiple procedural routes, misalignment between earlier opposition strategy and later invalidity actions can undermine otherwise strong positions.

Effective trademark litigation in Malta requires:

• early identification of the correct procedural route;
• alignment of claims with the applicable legislative framework; and
• careful coordination between administrative, appellate, and civil proceedings.

Our team offers comprehensive support to brand owners navigating the complexities of Maltese trademark litigation. We assist at every stage—from the initial assessment of the statutory framework relevant to your registration year, through the preparation and filing of opposition, invalidity, or appeal proceedings. Our expertise includes strategic advice on leveraging procedural developments, such as recent appellate decisions, to strengthen your position in ongoing or future disputes. By closely monitoring evolving case law and procedural requirements, we help clients anticipate potential hurdles and maximize the chances of a favorable outcome.