MALTA Trends and Developments Contributed by: Paul Micallef Grimaud, Philip Formosa and Michela Zammit Lupi, Ganado Advocates
Patent portfolios are also subject to increased scrutiny in transactional contexts, including licensing arrange - ments, investment rounds and corporate acquisitions. Design Rights and Product Protection Design protection remains an important tool for busi - nesses operating in sectors where visual appearance and user experience contribute to commercial value. EU design protection, particularly Registered Com - munity Designs, continues to be the preferred route for businesses operating in Malta. Design rights are increasingly used to protect digital assets such as graphical user interfaces, icons and virtual designs. Proposed EU reforms to design law aim to modernise protection in light of digitalisation and emerging forms of visual expression. Businesses are adopting more proactive approaches to design protection, including early registration, co- ordination with product launches and the strategic use of design rights in enforcement actions, often along - side trade marks and copyright. IP Enforcement and Dispute Resolution IP enforcement in Malta has become more structured and commercially focused. Malta has a specialised Patent Tribunal for patent-related actions. However, there is currently no equivalent specialised court or tribunal for copyright or trade mark matters; instead, these continue to be filed before and heard by the ordinary civil courts. However, due to the way in which case loads are allo - cated, judges with relevant 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 its work (including for similarity comparisons – eg, in the context of source code copyright claims), while the parties are also enti - tled to submit their own experts and expert reports to substantiate their respective claims. The enforcement of IP rights in digital environments has introduced new evidentiary and procedural con - siderations. Online infringement often involves anon - ymous or foreign-based infringers, rapidly changing content and platform-mediated distribution. Evidence
gathering increasingly relies on technical tools such as digital forensics, website archiving, IP address track - ing and transaction analysis. Courts and administra - tive bodies are required to assess the reliability and admissibility of such evidence, often in the context of evolving technological standards, and therefore, experts remain a reliable source. Litigation remains an important enforcement mech - anism, with interim measures and injunctive relief available where legal thresholds are met. Remedies include damages, account of profits and orders for the removal or destruction of infringing goods. Alternative enforcement mechanisms are widely used, including opposition and invalidity proceedings before IP registries and customs enforcement against counterfeit goods. Counterfeit actions tend to be less costly, as proceedings are often uncontested by the defendants; however, the plaintiff is typically required to bear the costs associated with the storage and eventual destruction of the counterfeit goods. It is in the author’s opinion that alternative dispute resolution measures such as mediation are not yet so popular in Malta. Customs may act on the basis of an Applica - tion for Action (AfA) or ex officio (ie, without an AfA) where infringement is prima facie evident. Upon sei - zure, the right-holder is notified and must confirm the infringement and request continued suspension of release within the prescribed time limits. The right- holder must then initiate civil proceedings within ten working days of notification, extendable by a further ten working days; failing this, the detention may be lifted and the goods released. In addition, the Trademark Act entitles proprietors to prevent third parties from bringing goods into Malta in the course of trade, even where the goods are not released for free circulation, if the goods or their pack - aging bear an unauthorised trade mark that is identi - cal or essentially indistinguishable from the registered mark. This is subject to the proprietor having the right to prevent the goods from being placed on the mar - ket in their intended country of destination. This sits alongside the measures in the IP Cross-Border Meas - ures Act.
338 CHAMBERS.COM
Powered by FlippingBook