Intellectual Property Rights

Introduction

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.

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