MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
to, the distinctive character or reputation of an earlier trade mark enjoying a reputation in Malta, irrespec - tive of whether the goods or services are similar or dissimilar. In assessing infringement, the competent authorities take into account the relevant factors set out in 7.3 Factors Determining Infringement . Availa - ble remedies include injunctive relief, damages, orders for the permanent removal or destruction of infringing goods, materials, or articles in the infringer’s posses - sion, custody or control. Copyright and neighbouring rights are infringed under the Copyright Act where, without authorisation or a valid licence, a person performs or authorises acts reserved to the right-holder, imports or commercial - ly deals in infringing articles, circumvents effective technological protection measures, interferes with electronic rights-management information, or manu - factures, distributes, or provides devices or services intended to facilitate such circumvention. These provi - sions encompass direct, contributory and secondary infringement. Remedies include damages, restitution of profits, and orders for the destruction of infringing articles, in addition to the remedies available under the IPR Enforcement Act. 7.3 Factors in Determining Infringement Registered trade mark infringement arises where a registered mark exists and a later, conflicting sign is used without authorisation in the course of trade (eg, advertising or sales). Likelihood of confusion is assessed globally by reference to interdependent factors established in ECJ case law, including: (i) the distinctiveness of the earlier mark; (ii) the similarity of the marks, assessed visually, phonetically and con - ceptually, with regard to dominant elements; (iii) the similarity of the relevant goods or services; and (iv) the overall likelihood of confusion. Where infringement is alleged on the basis of unfair advantage or detri - ment, the registered mark must have a reputation, the strength of which is a material factor in the analysis. Claims concerning unregistered marks under the Commercial Code are limited to likelihood of confu - sion and generally assessed by reference to the same principles.
Copyright infringement requires proof that copyright subsists in an original, protected work and that the claimant is the right-holder. Infringement occurs where, without authorisation, the defendant carries out a restricted act, such as reproduction, adapta - tion, distribution or communication to the public. The assessment focuses on whether protectable elements of the work have been taken, rather than unprotected ideas, and whether the whole or a substantial part of the work has been used, assessed qualitatively. In some cases, particularly secondary infringement, the defendant’s knowledge or control may also be relevant. 7.4 Prerequisites and Restrictions to Filing a Lawsuit Maltese law does not impose any mandatory pre- action requirements before instituting either a trade mark or copyright infringement lawsuit. In particu - lar, there is no specific obligation to issue a formal demand letter or warning notice, nor is there any express requirement to engage in mediation or other alternative dispute resolution prior to filing suit. Not - withstanding this, it is common practice for rights- holders to send a demand letter before filing an action, including to temper any risk of the proceedings being considered premature or disproportionate. The TM Act contains an express remedy against groundless threats of infringement proceedings. Where a person threatens another with proceedings for infringement of a registered trade mark, any person aggrieved may bring proceedings for relief before the First Hall of the Civil Court. The court may grant a declaration that the threats are unjustified, an injunc - tion restraining their continuation, and damages in respect of any loss sustained as a result of the threats, unless the proprietor proves that the acts in respect of which proceedings were threatened constitute, or would constitute if carried out, an infringement of the registered trade mark. Even where infringement is established, relief may still be available if the trade mark registration is invalid or liable to revocation. Mere notification that a trade mark is registered, or that an application has been made, does not in itself amount to a threat of proceedings.
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