MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
7.5 Lawsuit Procedure Please see previous responses in this 7. Initiating Trade Mark and Copyright Lawsuits ; copyright and trade mark infringement actions must be initiated through a sworn application filed in the First Hall of the Civil Court. Pre-action/litigation costs can vary signifi - cantly depending on the particulars of the case and whether evidence needs to be gathered beforehand. These costs are generally not recoverable in court; however, if the action is preceded by a judicial letter or judicial protest, the costs associated with those steps can be included in the court-awarded costs and recovered by the claimant if the award is in their favour. In general, parties to litigation must be assisted by an advocate admitted to practice in Malta. The court may require a party who is not assisted by an advocate to engage one if it considers that the party is unable to properly present their case. Foreign trade mark or copyright owners can bring infringement claims in Malta, but would generally have to appoint a special mandatory to represent them during the proceedings and ensure their continued presence as a party. The IP rights relied upon must have effect in Malta in order to form the basis of an infringement action. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants There is nothing in local trade mark or copyright law that prohibits an alleged infringer from institut - ing declaratory judgment proceedings. As a matter of general civil procedure, a party that is threatened with enforcement action is entitled to seek declaratory relief. Maltese procedural law also provides for the remedy of jactitation suits, which enable any person, whether natural or legal, against whom a right has been asserted in writing, to request the court to order the third-party claimant to institute proceedings within a period not exceeding three months, failing which the claimant would (by consequence) be forever barred from pursuing that claim in the future. 7.7 Small Claims In principle, monetary claims not exceeding EUR5,000 fall within the jurisdiction of the Small Claims Tribu - nal, where cases are decided by an adjudicator on the basis of equity in accordance with the law. How -
ever, both the Copyright Act and the Trade Marks Act require infringement actions to be brought by sworn application before the First Hall of the Civil Court, effectively excluding such claims from the Tribunal’s jurisdiction. In practice, CMOs often use the Small Claims Tribu - nal to recover outstanding payments under copyright licences, though these are contractual claims rather than infringement actions. 7.8 Effect of Trade Mark and Copyright Office Decisions At present, copyright and trade mark infringement actions may only be brought before the civil courts. Trade mark oppositions may only be brought before the Comptroller as an office action (with a right of appeal to the courts), whilst both trade mark revo - cation and invalidity actions may be brought either before the First Hall of the Civil Court or the Comptrol - ler as an office action. The Copyright Board is vested with the authority to approve requests for the establishment and opera - tion of CMOs in Malta, to approve the tariffs charged and any revisions thereof, as well as to revoke any authorisation to act as a CMO. Decisions of the Board are subject to appeal before the Court of Appeal, which must be lodged within 15 days of service of the Board’s decision. 7.9 Counterfeiting and Bootlegging “Counterfeit goods” are addressed in the Intellec - tual Property Rights (Cross-Border Measures) Act, Chapter 414 of the laws of Malta. They are defined as goods that bear a registered trade mark with - out authorisation, either directly on the goods or on their packaging, in a way that is identical or essen - tially indistinguishable from the original, and infringe the trade mark owner’s rights. The Act also includes the notion of “pirated goods”, which are defined as goods that are or embody copies made without the consent of the copyright, neighbouring rights, or design right-holder – or their authorised representa - tive in the country of production – and that would have infringed those rights under Maltese law if made in Malta. “Counterfeit goods” and “pirated goods” may be subject to Customs actions in the circumstances
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