Court cancels ‘Business Royals’ trademark over risk of confusion with Rothmans Royals

The Civil Court, First Hall, has struck off the ‘Business Royals’ trademark from the Maltese register, ruling it invalid due to its similarity with the well-known ‘Royals’ tobacco brand owned by Rothmans of Pall Mall Limited.

Judge Ian Spiteri Bailey delivered the judgment on Wednesday, in proceedings brought by Rothmans against Polish company Marpoint spółka z ograniczoną odpowiedzialnością.

Rothmans, part of the British American Tobacco group, argued that trademark number 58934 was filed in bad faith, likely to confuse consumers, and sought to take unfair advantage of its established marks.

The company noted that ‘Royals’ has been sold in Malta since the late 1960s, is registered under multiple trademarks, and is recognised as a “well-known” mark under the Paris Convention.

The court noted that Rothmans, incorporated in 1960, operates over 45 factories worldwide and employs around 55,000 people. In Malta, it holds trademarks for cigarettes and related products under the ‘ROYALS’ and stylised ‘R ROYALS’ marks, registered in class 34 over several decades.

The ‘Business Royals’ mark was applied for in Malta on 14 January 2019 by UK company International Tobacco plc. The application covered tobacco products, electronic smoking devices, heated tobacco sticks, and related goods. It claimed exclusive rights only to the combination “Business Royals” and the colours red, gold, and white. The mark was registered on 5 January 2022 and later assigned to Marpoint on 18 January 2022. Rothmans said it had no record of the mark being used locally.

  International Tobacco plc was controlled by Sergio Calleja Sr, and at the time of transfer, both he and his son, Sergio Calleja Jr, controlled Marpoint. Rothmans alleged the filings were part of a strategy to benefit from the Royals brand, citing a 2018 shipment of similar cigarettes seized by customs at Marsaxlokk Freeport.

Rothmans presented evidence including extracts from the Maltese trademarks register, Misco International brand surveys from 2009 and 2021, letters from the Malta Chamber of SMEs, previous court judgments, and company records from Poland and the UK.

Lawyer Luigi Sansone, Rothmans’ special mandatory, described the brand’s history in Malta. The first Royals-related registration dates to 1966, with trademark number 10027 registered in 1969, now protected under the Paris Convention.

Clinton Bajada, Country Manager for BAT Malta, testified that Royal’s cigarettes have been sold consistently since 1969, presenting sales data including 56,917,000 units sold in 2022, and promotional material showing long-term marketing in Malta and Gozo.

Misco founder Lawrence Zammit confirmed surveys showing strong public recognition of the Royals brand.

John Richards, for the Controller of Industrial Property, noted that International Tobacco plc’s application proceeded despite prior identical mark number 52531 and opposition from two entities, The Independent Tobacco FZE and BR International Holdings.

Marpoint did not respond to the proceedings and was in default. Witnesses were heard in December 2024 and June 2025, with arguments presented in October 2025.

In its reasoning, the court relied on articles 6(1)(b) and 6(3)(a) of the Trademarks Act (Chapter 597). Article 6(1)(b) bars registration where confusion with an earlier mark is likely, while article 6(3)(a) prevents taking unfair advantage of a mark’s reputation. Citing a February 2025 Court of Appeal judgment in another Royals dispute, the court noted that survey evidence and sales data established a strong local reputation.

Judge Spiteri Bailey concluded that Marpoint’s mark sought to exploit Rothmans’ reputation, identifying “Royals” as the distinctive element.

The court found a likelihood of confusion and association, declaring trademark number 58934 invalid. Remaining claims were not addressed.

Marpoint was ordered to bear the costs of proceedings. The court directed the Registrar of Courts to notify the Controller of Intellectual Property to cancel and remove the trademark from the Maltese register immediately.