ATT Nru. XX ta’ l-2006 ACT No. XX of 2006 ATT ma[ru; b’li;i mill-Parlament AN ACT enacted by the Parliament ta’ Malta.

Suppliment tal-Gazzetta tal-Gvern ta’ Malta, Nru. 18,007, 12 ta’ Diçembru, 2006

Taqsima A

MALTA

ATT Nru. XX ta’ l-2006

ACT No. XX of 2006

ATT ma[ru; b’li;i mill-Parlament

AN ACT enacted by the Parliament

ta’ Malta.

of Malta.

ATT li jirregola l-Infurzar ta’ Drittijiet AN ACT to regulate the Enforcement

ta’ Proprjetà Intellettwali.

of Intellectual Property Rights.

I assent.

E DWARD F ENECH A DAMI

President

12th December, 2006

ACT No. XX of 2006

AN ACT to regulate the enforcement of intellectual property rights

BE IT ENACTED BY THE President, by and with the advice and

consent of the House of Representatives, in the present Parliament

assembled and by the authority of the same, as follows>-

The short title of this Act is the Enforcement of Intellectual

Property Rights (Regulation) Act, 2006.

PART I

GENERAL

In this Act, unless the context otherwise requires -

“competent court” and “Court”, unless otherwise prescribed

by regulations made under this Act mean the Court that is competent

to take cognizance of a case according to the rules established in

the Code of Organization and Civil Procedure<

“ intellectual property rights” means those rights accorded

under the Copyright Act, the Trademarks Act and the Patents and

Designs Act, or any other law which may from time to time

substitute the said Acts and “relevant legislation” shall be

interpreted accordingly<

“the Minister” means the Minister responsible for intellectual

property.

The following persons shall, in addition to all other means Persons entitled to

avail themselves of

provided by law for the enforcement of their intellectual property rights, the measures,

be entitled to avail themselves of the measures, procedures and remedies procedures and

remedies provided

provided by this Act>-

by this Act.

(a) any person who in accordance with the provisions of

any applicable law is the holder of an intellectual property right<

(b) any person who is authorised to use an intellectual

property right and, in particular, any person who is a licensee of

such right<

(c)

recognised collecting societies< and

(d) professional defence bodies which are regularly

recognised as having a right to represent holders of intellectual

property rights.

(1) Any person whose name appears on a literary or artistic Presumption of

work in a manner that is usual for indicating a person as the author of authorship

ownership.

the work shall, in the absence of proof to the contrary, be considered as

the author thereof and such person shall be entitled to avail himself of

the measures, procedures and remedies provided by this Act.

(2) The provisions of sub-article (1) hereof shall apply

mutatis mutandis to the holder of rights related to copyright with regard

to their protected subject matter.

PART II

EVIDENCE

(1) Any person who is entitled to avail himself of the provisions Evidence.

of this Act may file an application in the competent Court requesting a

Court order to the effect that evidence which is in the control of an

opposing party be presented in Court by the opposing party, subject to

the protection of confidential information>

Provided that for a person to be entitled to avail himself of

the provisions of this article he shall, together with the application, file

reasonably available evidence sufficient to support his claims. For this

purpose a reasonable sample of a substantial number of copies of a

work or any other protected object shall be considered to constitute

reasonable evidence.

(2) In the case of an infringement of intellectual property

rights committed on a commercial scale, the Court may, under the same

conditions stipulated in sub-article (1) hereof, order the communication

to the applicant of banking, financial or commercial documents under

the control of the opposing party, subject to the protection of confidential

information.

(1) The competent Court may, even before the

commencement of proceedings on the merits of the case, upon an

application by a person who has filed reasonably available evidence to

support his claim that his intellectual property right has been infringed

or is about to be infringed, order such prompt and effective provisional

measures as it considers appropriate to preserve relevant evidence in

respect of the alleged infringement, subject to the protection of

confidential information. Such measures may include the detailed

description, with or without the taking of samples or the physical seizure

of the infringing goods and, in appropriate cases, the materials and

implements used in the production and, or distribution of the said goods

and the documents relating thereto. The competent Court may also, if it

considers it necessary, order that such measures be taken without the

other party having been heard, in particular where any delay is likely to

cause irreparable harm to the rightholders or where the Court considers

that there is an evident risk of the evidence being destroyed.

(2) When measures to preserve evidence are adopted

without the other party having been heard, the parties affected shall be

given notice without delay after the execution of the measures. A review,

including a right to be heard by the Court, shall take place upon request

by application of any of the parties affected with a view to deciding,

within a reasonable period after the notification of the measures, whether

the measures shall be modified, revoked or confirmed.

(3) In pursuing his demand for measures to preserve

evidence, the applicant shall lodge in Court such security or assurance

intended to ensure compensation for any prejudice suffered by the other

party, as provided in sub-article (5) hereof, as the Court may order.

(4) Measures to preserve evidence shall be revoked by the

Court upon the request made by application of the person against whom

such measures were taken, without prejudice to the damages which

may be claimed, if the applicant at whose instance such measures were

taken fails, within thirty-one days from the issuing of such measures, to

institute proceedings leading to a decision on the merits of the case

before the competent Court.

(5) Where the measures to preserve evidence are revoked,

or where they lapse due to any act or omission by the applicant or where

it is subsequently found that there has been no infringement or threat of

infringement of an intellectual property right, the competent Court may

order the applicant, upon the request of the person against whom such

measures are directed, to provide such person with appropriate

compensation for the damages caused by those measures as may be

liquidated by the Court.

(6) In considering cases and applications made in terms of

this Act, the competent Court may also take such measures as it may

consider appropriate for the purpose of protecting the identity of

witnesses, subject to respect for the right to a fair trial.

(7) In the course of proceedings involving an application

for measures to preserve evidence, the Court shall take any measures

that it deems necessary to protect the identity of witnesses.

(1) During proceedings concerning an infringement of an Right

information.

intellectual property right the Court may order, on a request by the

claimant to this effect made by application which the said Court deems

to be justified and proportionate, that information on the origin and

distribution networks of the goods or services which infringe an

intellectual property right be produced before it by the infringer and, or

any other person who>

(a) has been found in possession of the infringing goods on

a commercial scale<

(b) has been found to be using the infringing services on a

commercial scale<

(c) has been found to be providing on a commercial scale

services used in infringing activities< or

(d) has been indicated by any of the persons referred to in

paragraph (a), (b) and (c) hereof as being involved in the production,

manufacture or distribution of the goods or the provision of the

services.

(2) The requested information referred to in the preceding

sub-article shall, wherever appropriate, comprise>

(a) the names and addresses of the producers, manufacturers,

distributors, suppliers and other previous holders of the goods or

services as well as the intended wholesalers and retailers<

(b) information on the quantities produced, manufactured,

delivered, received or ordered, as well as the price obtained for the

goods or services in question.

(3) The preceding sub-articles shall apply without prejudice

to any other statutory provisions which>

(a) grant the rightholder rights to receive fuller information<

(b) govern the use in civil or criminal proceedings of the

information communicated pursuant to this article<

(c) govern responsibility for misuse of the right of

information< or

(d) afford an opportunity for refusing to provide information

which would force the person referred to in sub-article (1) hereof

to admit to his or her own participation or to that of close relatives

in an infringement of an intellectual property right< or

(e) govern the protection of confidentiality of information

sources or the processing of personal data.

PART IV

PROVISIONAL AND PRECAUTIONARY MEASURES

(1) Any person referred to in article 3 of this Act may by

application request the Court to>

(a) issue against the alleged infringer of an intellectual

property right a decree intended to prevent any imminent

infringement of such intellectual property right, or to forbid, on a

provisional basis and subject, where appropriate, to a recurring

penalty payment where provided for by law, the continuation of

the alleged infringements of that right, or to make such continuation

subject to the lodging of guarantees intended to ensure the

compensation of the rightholder. An interlocutory injunction may

also be issued, under the same conditions, against an intermediary

whose services are being used by a third party to infringe an

intellectual property right<

(b) order the seizure or delivery up of the goods suspected

of infringing an intellectual property right.

(2) Where an infringement of an intellectual property right

has been committed on what is deemed by the Court to be a commercial

scale it may, if the plaintiff demonstrates the existence of circumstances

likely to endanger the recovery of damages, order the precautionary

seizure of the movable and immovable property of the alleged infringer,

including the blocking of the same infringer’s bank accounts and other

assets. Moreover, the Court shall have the power to order the

communication of bank, financial or commercial documents, or

demand appropriate access to the relevant information, as it deems fit.

(3) In respect of the measures referred to in sub-articles

(1) and (2) hereof, the Court shall have the authority to require the

applicant to provide any reasonably available evidence so as to be

reasonably satisfied that the applicant is the rightholder and that his

right is either being infringed or is in imminent danger of being

infringed.

(4) In appropriate cases, and particularly where it deems

that any delay would cause irreparable harm to the rightholder, the

Court shall take the measures mentioned in sub-articles (1) and (2)

hereof without first hearing the defendant. In such an event, the parties

shall be so informed without delay and in any case not later than

immediately after the measures have been executed>

Provided that the defendant shall have the right to request

the Court by application to review the measures above referred to with

a view to deciding, within a reasonable time after notification of the

measures, whether such measures should be modified, revoked or

confirmed.

(5) If the applicant does not within thirty-one calendar days

institute proceedings leading to a decision on the merits of the case

before the competent Court, the Court shall upon a request by the

defendant proceed to revoke the provisional measures mentioned in

the preceding sub-articles.

(6) The Court may, on according the provisional measures

mentioned above, require the applicant to lodge adequate security or

an equivalent assurance intended to ensure compensation for any

prejudice suffered by the defendant as provided for in sub-article (7)

hereof.

(7) Where the provisional measures mentioned above are

revoked by the Court, or where they lapse due to any act or omission

of the applicant, or where the Court subsequently concludes that there

has been no infringement or threat of infringement of an intellectual

property right, the Court shall have the power to order the applicant,

upon a request by application of the defendant, to provide the same

defendant with appropriate compensation for any injury that he may

have suffered on account of such measures.

PART V

MEASURES RESULTING FROM A DECISION ON THE

MERITS OF THE CASE

(1) At the request of the applicant and without prejudice to

any damages due to the rightholder by reason of an infringement of an

intellectual property right, the Court may order the taking of any

measures it shall deem appropriate with regard to goods that are found

to be infringing an intellectual property right and also with regard to

any materials and implements used in the creation or manufacture of

such goods. Such measures shall include>

(a) recall from circulation within the channels of commerce<

(b) definitive removal from circulation within the channels

of commerce< or

(c)

destruction of the items.

(2) The Court shall order that such measures be carried out

at the expense of the infringer, unless particular reasons are invoked for

not doing so.

(3) In considering a request for corrective measures, the

Court shall seek to strike a balance of proportionality between the

seriousness of the infringement and the remedies ordered whilst taking

into account the interests of third parties.

(1) Where the Court finds that an infringement of an

intellectual property right has occurred, it may on an application by the

plaintiff issue an injunction against the infringer aimed at prohibiting

the continuation of the infringement. Failure to abide by the injunction

shall constitute contempt of Court.

(2) The application referred to in the subarticle (1) hereof

may also be made in respect of intermediaries whose services are used

by a third party to infringe an intellectual property right, without

prejudice to article 42 of the Copyright Act.

In cases where the measures laid down in Part V of this Act Alternative

measures.

may be applied, it shall be within the discretion of the Court, on an

application by the person liable to such measures, to refrain from

applying the said measures and order instead the payment of pecuniary

compensation to the injured party if it is of the opinion that the infringer

involved has acted unintentionally and without negligence, if execution

of the measures in question would cause the infringer disproportionate

harm and if pecuniary compensation to the injured party appears

reasonably satisfactory.

PART VI

DAMAGES

(1) The Court shall on an application filed by the injured Damages.

party, order any infringer who has, either knowingly or being reasonably

expected to know, engaged in an infringing activity, to pay the

rightholder damages commensurate with the actual prejudice suffered

by the said rightholder as a result of the infringement.

(2) In setting the amount of damages due, the Court shall

take into account all relevant aspects, including all the negative economic

consequences that may have been suffered by the injured party including

lost profits, as well as any unfair profits made by the infringer and,

where it deems appropriate, other elements such as the moral prejudice

caused to the rightholder by the infringement>

Provided that instead of the above method of calculation of

damages, the Court may, where it so considers appropriate, choose to

apply an alternative method of calculation involving the setting of a

lump sum of damages payable which shall include elements such as at

least the amount of royalties or fees which would have been due had

the infringer requested authorisation to use the intellectual right in

question.

(3) Where the Court is of the opinion that the infringer did

not knowingly engage in infringing activity, it may order the recovery

of profits or the payment of damages, as may be pre-established in

regulations made under the relevant legislation.

PART VII

MISCELLANEOUS

In an action pursuant to any provision of this Act, the Court Legal costs.

shall as a general rule decree that the judicial costs and other expenses

incurred by the successful party be borne by the unsuccessful party

unless it considers that equity otherwise requires.

The Court may, at the request of the applicant and at the

expense of the infringer, order appropriate measures for the

dissemination of the information concerning the decision, including

displaying the decision and publishing it in full or in part. The Court

may also provide for other additional publicity measures which it

considers appropriate to the particular circumstances, including

prominent advertising.

The Minister may make regulations for the better

implementation of the provisions of this Act and, without prejudice to

the generality of the foregoing, may by such regulations>

(a)

Prescribe anything that may be prescribed under this

Act<

(b) Extend the categories of persons entitled to avail

themselves of the measures, procedures and remedies provided by

this Act<

(c) Prescribe time limits for the exercise of any action under

this Act<

(d) Determine methods for the evaluation of damages due

under this Act<

(e) Establish specific rules of procedure or of evidence in

respect of actions under this Act<

(f) Determine the Court or Courts which are to take

cognizance of actions under this Act<

(g) Prescribe measures for the purpose of complying with

any international obligations of Malta or with any obligations of

Malta as a Member State of the European Union on matters related

to this Act.

A

Passed by the House of Representatives at Sitting No. 473 of 4th December,

2006. A NTON T ABONE

Speaker

R ICHARD J. C AUCHI

Clerk to the House of Representatives