MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
outlined in 10.5 Customs Seizures of Counterfeits or Parallel Imports . The Act also stipulates that persons who import or cause to be imported any goods infring - ing an IP right shall be liable for every such offence to a fine (multa) equivalent to double the value of such goods. The Maltese Criminal Code also contains provisions which sanction (as a criminal offence) any person who prints, manufactures, duplicates or otherwise repro - duces, or sells, distributes or otherwise offers for sale or distribution, any article or other thing in violation of copyright protected by or under Maltese law, or who has in their possession, custody or control any such article or other thing with a view to carrying out any of the foregoing acts. The unauthorised use/affixation of another’s trade mark is also prescribed as a criminal offence under the TM Act. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are some specific procedural provisions in the Enforcement of Intellectual Property Rights (Regula - tion) Act, Chapter 488 of the laws of Malta (the “IP Enforcement Act”), which transposes the Enforcement of Intellectual Property Rights Directive (2004/48/EC). These are mostly relevant to provisional and precau - tionary measures (addressed in 10.1 Injunctive Rem- edies ). There are no formally designated technical judges for IP rights cases in Malta. However, due to the way in which case loads are allocated, judges with rel - evant experience in intellectual property are typically assigned the majority of matters in this field. The court may also appoint experts and judicial assistants to support their work (including for similarity compari - sons – eg, in the context of source code copyright claims), while the parties are also entitled to submit their own experts and expert reports to substantiate their respective claims. Malta has a specialised Patent Tribunal for patent- related actions. However, there is currently no equiva -
lent specialised court or tribunal for copyright or trade mark matters; instead, these continue to be filed before and heard by the ordinary civil courts. 8.2 Effect of Registration Trade mark registrations are particularly beneficial in the context of provisional and precautionary meas - ures (such as PIs), as they provide prima facie evi - dence of the validity and ownership of the rights relied upon. For instance, the claimant in PI proceedings is only required to show on a prima facie level that it has a right which it is entitled to exercise. Therefore, in a trade mark, it would generally be sufficient for the claimant to produce a registration certificate. PI proceedings are dealt with on a summary basis and, per existing practice, the court would not enter into whether that registration is valid. There is also a statu - tory defence of acquiescence, available to holders of later registered trade marks. 8.3 Costs of Litigating Infringement Actions The costs associated with a copyright or trade mark infringement action can vary significantly on a case- by-case basis and generally depend on factors such as the complexity of the matter, the appointment of any court experts, whether damages are being claimed and the amount. Counterfeit actions tend to be less costly, as proceed - ings are often uncontested by the defendants; how - ever, the plaintiff is typically required to bear the costs associated with the storage and eventual destruction of the counterfeit goods.
9. Defences and Exceptions to Infringement
9.1 Defences to Trade Mark Infringement The defences available under the TM Act include: • that the contested sign is not being used either: (a) in the course of trade; or (b) in relation to goods or services; • in the context of an action claiming likelihood of confusion, that the sign is either dissimilar to the earlier trade mark, or is being used in relation to
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