Intellectual Property Rights (Cross Border Measures)

Revision No.  38  -   Last Updated : 09-10-2002

 

 

In line with Malta’s present commitments after signing the World Trade Agreement that incorporated the TRIPS Agreement, the Intellectual Property Rights (Cross-Border Measures) Act (Act VIII of 2000) was enacted in February, 2000, which lays down a series of measures to curb the importation into Malta and the exportation from Malta of goods infringing intellectual property rights, including counterfeit and pirated goods.

Prohibition of goods infringing intellectual property rights

The Act provides that the entry into Malta, export or re-export, release for free circulation, temporary importation, placing in a free zone or free warehouse, of:

·        counterfeit goods (including the packaging thereof);

·        goods which bear, without authorisation, a trade mark or trade mark symbol which is identical (or which cannot be distinguished in its essential aspects) to a validly registered trade mark in respect of the same type of goods and which infringe the trade mark holder’s rights under Maltese law;

·        pirated goods; and

·        goods infringing a patent under Maltese law,

is prohibited.

Remedy

Any rightholder whose rights have been infringed in any one of the situations referred to above may request the Comptroller of Customs, by application in writing, to withhold the release of the goods pending the initiation of civil judicial proceedings by the rightholder.

For a list of details and documentation such application must contain please refer to Appendix I.

All expenses to cover the administrative costs involved shall be borne by the applicant. 

The Comptroller of Customs may require an applicant whose application has been granted to provide security in order to:

·        indemnify the Comptroller of Customs against any liability he may incur in virtue of the acceptance of the application; and

·        ensure payment of the administrative costs involved.

In the eventuality that the Comptroller of Customs refuses to accept any such application, the applicant may appeal to the Minister against such refusal within 3 working days of notice to him of such refusal which must state the reasons for the refusal.

Civil judicial proceedings

If such an application is granted and the goods detained by the Comptroller of Customs, the applicant has 10 working days after notification of notice of detention of such goods to institute civil judicial proceedings on the merits.  In default, the goods shall be released.  The Comptroller of Customs must be duly and promptly notified of the initiation of such civil proceedings.

The period of 10 working days may be prolonged by a further 10 days by application in writing upon sufficient grounds being shown.

Ex-officio action

The Comptroller of Customs may, in the course of routine checks, if it appears prima facie evident to him that certain goods are infringing the rights of an intellectual property rightholder, notify such rightholder of the possible infringement.

The Comptroller of Customs may suspend release of or detain such goods for up to 5 working days to enable the rightholder to lodge an application as detailed above.

Right to request information on infringing goods

The Comptroller of Customs shall, at the request of the applicant and subject to the terms of any laws governing secrecy of commercial and industrial data, inform such applicant of the names and addresses of the importer/consignee, exporter, manufacturer and/or owner of the infringing goods, as the case may be, and of the quantity of the goods in question.

The applicant shall also be allowed to inspect such goods.

Goods suspected of infringing patents or design rights

Provided civil judicial proceedings have been initiated by the rightholder within the time period of 10 working days as detailed above and all Customs formalities have been completed, the owner, importer or the consignee of goods suspected of infringing patents or design rights will have to provide sufficient security to protect the interests of the rightholder before obtaining the release of the goods in question.

Such security may be either in the form of a deposit made to the Comptroller of Customs or of a bank guarantee of such amount as may be determined by him.

Outcome of civil judicial proceedings

If the outcome of the civil judicial proceedings initiated as detailed above is favourable to the rightholder, the Courts shall:

·        order the Comptroller of Customs to dispose of outside the channels of commerce or destroy altogether the goods without compensation of any sort to and, at the cost of, the importer, exporter or owner of such goods, as the case may be; and

·        after having regard to all the circumstances of the case and, in particular, to what the justice of the case requires, take, or order the Comptroller of Customs to take, any other measures having the effect of depriving the persons concerned of the economic benefits of the infringement.

Criminal penalties

In addition to the civil remedies, there are also criminal penalties for persons who import or cause to be imported goods which infringe intellectual property rights. 

Accordingly, any such persons shall be liable to a fine equivalent to double the value of the goods.

Abuse of proceedings

If it results that the party at whose instance the enforcement procedures as detailed above were instituted has abused of such proceedings, the Court may order such party to provide adequate compensation for damages suffered by the party wrongfully enjoined or restrained.

Downloads:

·        This Document in PDF Format.

·        Appendix 1 : Information and documentation required in order to file an application under the Act

·        Appendix 2 : Power of Attorney

·        Appendix 3: Request for Disclosure

·        Further Reading :     Patents

·        Further Reading:      Copyright

·        Further Reading:      Trademarks