MALTA Law and Practice Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
requires the court to consider: (i) the proportionality of the measure; (ii) the need for guarantees to cover potential costs or injury to the respondent if the claim is unjustified; and (iii) the risk of irreparable harm to the claimant if relief is delayed. Any delay in taking action, and whether it was reasonable, is also relevant. The requirement of “irremediable prejudice” (or “irrep - arable harm”) often presents a practical obstacle to PI relief in Malta. Case law has routinely held that where an infringement can be removed, even by a deci - sion on the merits, then the element of irremediable prejudice does not subsist, and the PI should not be granted. Damages, including pecuniary losses, have also generally not been accepted as a form of “irre - mediable prejudice”. In principle, PI proceedings under Maltese law are of a summary nature and heard on a prima facie level, without considering or determining any issues relat - ing to the merits of the dispute. That said, PIs are still treated as an extraordinary measure by our courts. Other available measures under the above Act include orders for the seizure or delivery-up of infringing goods or seizure of property, blocking or freezing orders of bank accounts, measures for the produc - tion and preservation of evidence, orders to provide information on the origin and distribution networks of infringing goods/services. The court may also, at the request of the claimant and expense of the infringer, order appropriate measures for the dissemination of the information concerning the decision, including The IPR Enforcement Act contains specific provi - sions on damages for IP rights-related infringement. On application by the injured party, the court may order an infringer who has (either knowingly or being reasonably expected to know) engaged in an infring - ing activity to pay damages commensurate with the actual prejudice suffered. In assessing damages, the court must take into account all relevant aspects of the infringement, including: publishing the decision in full. 10.2 Monetary Remedies
• all the negative economic consequences that may have been suffered by the injured party, including lost profits; • any unfair profits made by the infringer; and • where it deems appropriate, other elements such as the moral prejudice caused to the right-holder by the infringement (although not the norm per se, moral damages have been awarded by our courts in previous case law on IP infringements). As an alternative method of calculation, the court may (where it deems appropriate) set a lump sum of dam - ages payable by the injured party. In such case, the lump sum must include elements such as the amount of royalties or fees which would have been due had the infringer requested authorisation to use the IP rights concerned. 10.3 Attorneys’ Fees and Costs In its decision, the court will normally determine who will bear the costs of the proceedings. These costs are typically made up of Court Registry fees, advocates’ fees and legal procurators’ fees, which are estab - lished and levied in accordance with statutory tariffs. These official rates are found in the schedules to the Code of Organisation and Civil Procedure. Recovery of extra-judicial fees is generally not possible. Maltese law does not attempt to restrict judicial discretion in terms of cost allocation, although they are customarily awarded against the losing party. 10.4 Ex Parte Relief A claimant may request the court to issue a prelimi - nary injunction under the IPR Enforcement Act without first hearing the defendant (ie, on an ex parte basis). The scope of the PI would be to prevent an immi - nent infringement or the continuance of an ongoing infringement and the court may grant this ex parte where it deems it appropriate and in particular, where it considers that any delay would cause irreparable harm to the right-holder. Precautionary seizure meas - ures may also be granted ex parte by the courts on the same basis. 10.5 Customs Seizures of Counterfeits or Parallel Imports Customs seizure of counterfeit and pirated goods may be requested by right-holders or their authorised
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