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Custom Recordal of IPRs in Malta


Custom Recordal of IPRs
Yes, the Comptroller of Customs may suspend release of the goods or detain them for a period of 05 working days to enable the rights holder in lodging an application for action.
The National law on Intellectual Property Rights - Cross Border Measures Act Vlll of 2000 Chapter 414 and EC Regulation 608/2013 - prohibit the importation/exportation of counterfeit/fake goods.
Custom Recordal of IPRs is effective both on the import and export of goods.
The customs authorities are responsible for detecting infringing goods based on information supplemented by the Application for Action made by the rights holder or on its own motion. Thereafter, it is their duty to convey relevant information of such detention to both parties to continue further detention until the court decides the case on its merits. Once the court orders for destruction of goods, the customs authorities are responsible to act in furtherance of such order, as well.
The rights holder may lodge an application in writing with the Comptroller of Customs for action by the Customs authorities where goods alleged to infringe intellectual property rights are placed.
The application should include the following:
1. A sufficiently detailed description of the goods to enable the Customs authorities to recognise them.
2. A proof that the applicant is the rights holder of the goods in question and that prima facie the goods infringe that right.
3. The rights holder should also provide all other pertinent information available to him to enable the Comptroller of Customs to take a decision in full knowledge of the facts without that information being a condition of admissibility of the application.
4. In the case of pirated goods or of goods infringing patents, the said information should, wherever possible, include by way of indication:
  • The place where the goods are situated or the intended destination;
  • The particulars identifying the consignment or packages;
  • The scheduled date of arrival or departure of the goods;
  • The means of transport used; and
  • The identity of the importer, exporter, or holder.
The IPR (Cross-Border Measures) Act does not mention a timeline; however, Section 5(8) specifies that the decision concerning the acceptance or dismissal should be conveyed in writing.
Yes, it is a centralized system.
There is no such official fee.
It can be recorded for a few months up to a year, but is subject to further renewals of one year each.
Where the Comptroller of Customs is satisfied, after consulting the applicant where necessary, that goods placed correspond to the description of goods infringing an intellectual property right, he shall suspend the release of the goods or detain them and the Comptroller of Customs shall forthwith inform the declarant and the person who applied foraction to be taken, if any.
The applicant bears the liabilities and the expenses.
Within 10 days
10 days
A security has to be paid by the importer. The security must be sufficient to protect the interests of rights holder and should be either in the form of a deposit made in the hands of the Comptroller of Customs of such amount, as may be fixed by the Comptroller of Customs or in the form of a guarantee by a bank acceptable to the Comptroller of Customs, of such amount, as may be fixed by the Comptroller of Customs. Provision of the security should be without prejudice to other remedies open to the rights holder.
The customs detain such goods and inform the rights holder as well as the proprietor of such allegedly infringing goods after which the rights holder has a limited time-frame to decide upon the course of action to be pursued or not.
Yes, the civil proceeding should be initiated within 10 days.
The court may require the submission of other documents as well, which should be complied to seek remedy of the court.
Corresponding to the proceedings related to the enforcement of the rights of the rights holder, the Court shall:
(a) As a general rule, order the Comptroller of Customs to dispose of goods established to be goods infringing an intellectual property right outside the channels of commerce in such a way as to preclude injury to the rights holder or order the Comptroller of Customs to destroy such goods, in any case without compensation of any sort to, and, at the cost of the importer, exporter, or owner of the goods; and
(b) Take, or order the Comptroller of Customs to take in respect of such goods, any other measures having the effect of effectively depriving the persons concerned of the economic benefits of the transaction.
Yes, as per section 5(13), there is an obligation to do so.