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Enforcement of IPRs in Malta


Enforcement of IPRs
The customs authorities are very careful while dealing with imports, and therefore, have stringent measures in place to prevent proliferation of counterfeits. However, they are still found in Malta due to online presence and presence in high-street stores.
Footwear, wallets, bags, sports items, accessories, mobile phones, etc. are the goods that most often face counterfeiting and piracy in Malta.
They are as follows:
  • The Patents and Designs Act (Chapter 417, Laws of Malta);
  • The Trade Marks Act (Chapter 597, Laws of Malta) (TM Act) transposed the Trade Marks Directive (2015/2436) through Act XII of 2019, which came into effect on 14th May 2019;
  • The Copyright Act (Chapter 415, Laws of Malta);
  • Company names are protected under the Companies Act (Chapter 386, Laws of Malta); and
  • The Trade Secrets Act (Chapter 589, Laws of Malta).
Patents, designs, trademarks, trade secrets, copyright are the different types of IPRs protected by IPR enforcement in Malta.
The general IPR enforcement obligations in Malta are as follows:
1. Trademark litigation in Malta falls within the exclusive jurisdiction of the courts before which the parties must each be represented by a locally qualified advocate.
2. The language of judicial proceedings is Maltese; however, if any one or both of the parties is English speaking, the court can, on application by any party, require that proceedings be conducted in English.
While litigating a case, it is imperative to hire a local advocate holding a warrant to practice before the courts of justice of Malta.
Yes, civil actions under the Act shall be barred by the lapse of 05 years in all cases in which no other period within which such actions may be brought is fixed in the said Act.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Other civil remedies in Malta include publication of the decision, recall order.
Contested civil proceedings take around 12 to 18 months at first instance and afterwards a further period of around 36 to 48 months. Criminal proceedings take around 24 to 36 months at first instance and afterwards a further period of around 12 to 24 months. There is no real possibility of fast-tracking proceedings.
The proceedings are lengthy and time-consuming; therefore, there may be a substantial drainage of capital while opting for civil of criminal proceedings.
A) Responsible Authority - Criminal Court, Criminal Court of Appeal
B) Imprisonment Term - Trademarks: Up to 03 years; Copyright: up to 01 year; Designs: up to 03 years
C) Monetary Fine - Trademarks: Up to€23,295; Copyright: up to EUR11, 646.87; Designs: up to 10,000 Liri
The criminal proceeding may require substantial investment of time and capital.
Recourse to arbitration proceedings is generally slow in gaining traction, largely because arbitration is seen to be cheaper, faster, and a more flexible form of dispute resolution. However, it is to be noted that Malta provides for concurrent jurisdiction of courts and arbitral tribunals.
The remedies available under border control measures (customs) in Malt include fines equivalent to double the value of the goods, disposal of goods.
The applicant pays the cost. However, the court may order the infringer to compensate for the loss incurred by the applicant in bringing up such action.
The goods may be released for commercial access if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs.
Customs Measures