INTELLECTUAL PROPERTY RIGHTS (CROSS-BORDER MEASURES) ACT (cross-bordermeasures)

INTELLECTUAL PROPERTY RIGHTS

(CROSS-BORDER MEASURES)

CHAPTER 414

INTELLECTUAL PROPERTY RIGHTS

(CROSS-BORDER MEASURES) ACT

To establish measures relating to the importation into Malta, and the

exportation and re-exportation from Malta, of goods in contravention of

Intellectual Property rights.

29th February, 2000

ACT VIII of 2000 .

The title of this Act is Intellectual Property Rights (Cross-

Border Measures) Act.

(1)

In this Act, unless the context otherwise requires -

"goods infringing an intellectual property right" means

(a) counterfeit goods, namely

(i) goods, including the packaging thereof, bearing

without authorisation a trademark which is

identical to the trademark validly registered in

respect of the same type of goods, or which

cannot be distinguished in its essential aspects

from such trademark, and which thereby

infringes the rights of the holder of the

trademark in question under Maltese law;

(ii) any trademark symbol (logo, label, sticker,

brochure, instructions for use or guarantee

document) whether presented separately or not,

in the same circumstances as the goods referred

to in sub-paragraph (i);

(iii) packaging materials bearing the trademarks of

counterfeit goods, presented separately in the

same circumstances as the goods referred to in

sub-paragraph (i);

(b) pirated goods, namely: goods which are or embody

copies made without the consent of the holder of the

copyright or neighbouring rights, or of the holder of a

design right, whether registered under national

legislation or not, or of a person duly authorised by the

holder in the country of production, where the making

of those copies, if it had taken place in Malta, would

have infringed the right in question under Maltese law;

(c) goods infringing a patent under Maltese law;

"declarant" means the importer, the consignee, the exporter or

the owner of the goods or any other person involved in the

operations mentioned in article 4;

"holder of a right" means the holder of a trademark, a patent or

an intellectual property right or any other person authorised to use

that trademark, patent or right, or a representative thereof. The

holder of a right or any other person authorised to use the right may

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be represented by a natural or legal person. Such a person shall

include a collecting society, which has as its sole or principal

purpose the management, or administration of copyright or

neighbouring rights;

"intellectual property right" means any right referred to in the

definition of goods infringing an intellectual property right.

(2) Materials and implements the predominant use of which has

been for the manufacture of a counterfeit trademark or of goods

bearing such a trademark, for the manufacture of goods infringing a

patent or for the manufacture of pirated goods shall be treated as

goods infringing an intellectual property right, provided that the

use of such materials and implements infringes the rights of the

holder of the right in question under Maltese law.

(1) This Act shall not apply to goods which bear a

trademark with the consent of the holder of that trademark or which

are protected by a patent, by a copyright or neighbouring right or

by a design right and which have been manufactured with the

consent of the holder of the right, notwithstanding that they may

have been placed in one of the situations referred to in article 4

without the consent of the holder of the right, trademark or patent.

(2) This Act shall not apply to goods referred to in sub-article

(1) when the goods have been manufactured or bear a trademark

under conditions other than those agreed with the holder of the

rights in question.

(3) This Act shall not apply to goods of a non-commercial

nature contained in travellers’ personal luggage within the limits

laid down in respect of relief from customs duty.

The entry into Malta, export or re-export, release for free

circulation, temporary importation, placing in a free zone or free

warehouse of goods found to be goods infringing an intellectual

property right shall be prohibited.

(1) The holder of a right may lodge an application in

writing with the Comptroller of Customs for action by the Customs

authorities where goods alleged to infringe intellectual property

rights are placed in one of the situations referred to in article 4.

(2)

The application referred to in sub-article (1) shall include

(i)

a sufficiently detailed description of the goods to

enable the Customs authorities to recognise

them; and

(ii) proof that the applicant is the holder of the right

for the goods in question and that prima facie

the goods infringe that right.

(3) The proof required for the purpose of sub-article (2) may

be as follows

(a) Where the holder of the right applies himself

(i) in the case of a right that is registered or for

which an application has been lodged such as a

trademark, patent or design right: proof of

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registration or lodging of the application with

the relevant office;

(ii) in the case of a copyright, neighbouring right or

design right that is unregistered or for which an

application has not been lodged: any proof of

authorship or the person’s status as original

holder.

(b) Where the application is made by any other person

authorised to use an intellectual property right, in

addition to the proof required under paragraph (a) of

this sub-article: the document by virtue of which the

person is authorised to use the right in question shall

also be produced or sufficiently quoted.

(c) Where the application is made by a representative of

the holder of a right or of any other person authorised

to use an intellectual property right, in addition to the

proof required under paragraphs (a) and (b) of this

sub-article, proof of authorisation to act shall also be

produced.

(4) The holder of the right shall also provide all other pertinent

information available to him to enable the Comptroller of Customs

to take a decision in full knowledge of the facts without, however,

that information being a condition of admissibility of the

application.

(5) In the case of pirated goods or of goods infringing patents,

the said information shall, wherever possible, include by way of

(i)

the place where the goods are situated or the

intended destination;

(ii) particulars identifying the consignment or

packages;

(iii) the scheduled date of arrival or departure of the

goods;

(iv) the means of transport used;

(v) the identity of the importer, exporter or holder.

(6) The application shall specify the length of the period

during which the Comptroller of Customs is requested to take

(7)

(i) The applicant shall be responsible to cover the

administrative costs incurred in dealing with the

application.

(ii) The applicant or his representative shall also be

responsible to cover the administrative costs incurred

in implementing the decision of the Comptroller of

Customs referred to in this article.

(iii) Such costs shall be determined by the Comptroller of

Customs and shall not be disproportionate to the

service provided.

(8)

The Comptroller of Customs shall deal with the application

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and shall forthwith notify the applicant in writing, of his decision.

(9) Where the Comptroller of Customs grants the application,

he shall specify the period during which the Customs authorities

shall withhold the release of or detain the goods pending the

initiation of civil judicial proceedings. That period may, upon

application by the holder of the right, be extended by the

Comptroller of Customs.

(10) Any refusal to grant an application shall give the reasons

for refusal and shall be subject to appeal to the Minister responsible

for Customs within three working days from notice to the applicant

of the refusal.

(11) The appeal referred to in sub-article (10) shall

(i)

be in writing and shall contain a brief statement

of the facts and state the reasons for the appeal;

(ii) be notified to the Comptroller of Customs who

shall reply within three working days from

receipt of the appeal.

(12) The Comptroller of Customs may require the holder of a

right, where his application has been granted, to provide a security

(i)

to cover any possible liability on the part of the

Comptroller of Customs vis-à-vis the persons

involved on one of the operations referred to in

article 4 where the procedure initiated pursuant

to article 5 is discontinued owing to an act or

omission by the holder of the right or where the

goods in question are subsequently found not to

be goods infringing an intellectual property

right;

(ii) to ensure payment of the costs incurred in

accordance with this Act, in keeping the goods

under Customs control pursuant to article 5.

(13) The holder of the right shall inform the Comptroller of

Customs forthwith if his right is no longer validly registered or if it

expires.

(14) Sub-articles (1) to (13) shall apply mutatis mutandis to the

extension of the decision on the original application.

Where, in the course of checks made under one of the

Customs procedures referred to in article 4 and before an

application by the holder of the right has been lodged or approved,

it appears prima facie evident to the Comptroller of Customs that

goods are goods infringing an intellectual property right, the

Comptroller of Customs may notify the holder of the right, where

known, of a possible infringement thereof.

The Comptroller of Customs may suspend release of the

goods or detain them for a period of five working days to enable the

holder of the right to lodge an application for action in accordance

with article 5.

INTELLECTUAL PROPERTY RIGHTS

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(1) Without prejudice to the provisions of article 6, where

the Comptroller of Customs is satisfied, after consulting the

applicant where necessary, that goods placed in one of the

situations referred to in article 4 correspond to the description of

goods infringing an intellectual property right, he shall suspend

release of the goods or detain them and the Comptroller of Customs

shall forthwith inform the declarant and the person who applied for

action to be taken, if any.

(2) Subject to any law on the protection of personal data,

c o m m e r c i a l a n d i n d u s t r i a l s e c r e c y, a n d p r o f e s s i o n a l a n d

administrative confidentiality, the Comptroller of Customs shall

notify the holder of the right, at his request, of the name and

address of the declarant and, or the consignee so as to assist the

holder of the right to be put in position to initiate judicial

proceedings to safeguard his interests.

(3) Without prejudice to the operation of any law regarding the

protection of confidential information, the Comptroller of Customs

shall afford the applicant and the persons involved in any of the

operations referred to in article 4 the opportunity to inspect the

goods, the release of which has been suspended or which have been

detained. When examining the goods the Comptroller of Customs

may take samples in order to expedite the procedure related to the

said goods.

(4) If, within a period of ten working days after the applicant

has been served with notice of the suspension of release of goods or

of detention thereof further to a decision of the Comptroller of

Customs taken in terms of article 5(9), the Comptroller of Customs

has not been given proof that civil judicial proceedings leading to a

substantive decision on the merits of the case have been initiated or

if the Comptroller of Customs has not taken provisions or measures

prolonging the suspension of the release of the goods, the goods

shall be released, provided all other conditions for importation or

exportation have been complied with. The said time limit may be

extended by another ten working days by the Comptroller of

Customs

Provided that, if civil judicial proceedings have been

initiated in connection with goods, the release of which has been

detained by the Comptroller of Customs under this Act, the Court

may, at the request of any party, review the decision of the

Comptroller of Customs with a view to determining whether the

goods should be released either absolutely or under such conditions

as the Court may impose.

(5) In the case of goods suspected of infringing patents or

design rights, the owner, the importer or the consignee of the goods

shall be able to have the goods in question released or their

detention revoked against provision of a security provided that

(a) the Comptroller of Customs has been informed within

the time limit referred to in sub-article (4) that civil

judicial proceedings have been initiated, leading to a

substantive decision on the merits of the case,

(b) on expiry of the time limit, the Court has not imposed

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interim measures, and

(c) all the Customs formalities have been completed.

The security must be sufficient to protect the interests of

the holder of the right and shall be either in the form of a deposit

made in the hands of the Comptroller of Customs of such amount as

may be fixed by the Comptroller of Customs or in the form of a

guarantee by a bank acceptable to the Comptroller of Customs, of

such amount as may be fixed by the Comptroller of Customs.

Provision of the security shall be without prejudice to the other

remedies open to the holder of the right.

(6) Where the matter has been referred to the Comptroller of

Customs other than on the initiative of the holder of the right, the

security paid by the importer, the consignee, the exporter or the

owner of the goods shall be released if the person applying for

suspension of release of the goods or detention thereof does not

exercise his right to institute legal proceedings within twenty

w o r k i n g d a y s f r o m t h e da t e on w h i c h he i s no t i f i e d of t h e

suspension of release or detention

Provided that such period may be extended to a maximum

of thirty days at the discretion of the Comptroller of Customs.

(7) The conditions governing storage of the goods during the

period of suspension of release or detention shall be as determined

by the Comptroller of Customs.

(1) In proceedings related to the enforcement of the rights

of the holder of a right the Court shall

(a) as a general rule, order the Comptroller of Customs to

dispose of goods established to be goods infringing an

intellectual property right outside the channels of

commerce in such a way as to preclude injury to the

holder of the right or order the Comptroller of

Customs to destroy such goods, in any case without

compensation of any sort to and, at the cost of, the

importer, exporter or owner of the goods;

(b) take, or order the Comptroller of Customs to take in

respect of such goods, any other measures having the

effect of effectively depriving the persons concerned

of the economic benefits of the transaction.

Save in exceptional cases, simply removing the

trademarks, which have been affixed to the counterfeit goods

without authorisation, shall not be regarded as having such effect

Provided that in ordering measures to be taken under this

article the Court shall take due account of the need for

proportionality between the seriousness of the infringement and the

remedies ordered as well as of the interests of third parties.

(2) In addition to the information given pursuant to article 7(2)

and under the conditions laid down therein, the Comptroller of

Customs shall inform the holder of the right, upon request, of the

names and addresses of the consignor, of the importer or exporter

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and of the manufacturer of the goods established to be goods

infringing an intellectual property right and of the quantity of the

goods in question.

(1) The holder of a right shall not be entitled to

compensation where goods are not detected by the Customs

authorities and are released or where no action is taken to detain

them or to withhold release thereof.

(2) Exercise by the Comptroller of Customs of the powers

conferred upon him with regards to counterfeit or pirated goods

shall not render him liable towards the persons involved in the

operations referred to in article 4, in the event of their suffering

loss or damage as a result of their action.

In proceedings related to the provisions of this Act the

Court shall be entitled to order the party at whose request measures

were taken under this Act and who is found to have abused

enforcement procedures to provide to a party wrongfully enjoined

or restrained adequate compensation for the injury suffered due to

such abuse. Such compensation may also include compensation for

legal and judicial costs and fees incurred.

(1) If any person shall import or cause to be imported any

goods infringing an intellectual property right, such person shall be

liable for every such offence to a fine (multa) equivalent to double

the value of such goods.

(2) All proceedings under this article shall be taken before the

Court of Magistrates and shall be in accordance with the provisions

of the Criminal Code regulating the procedure before the said Court

or a Court of Criminal Judicature and the award and execution of

the punishments thereby imposed.

(3) Notwithstanding the provisions of the Criminal Code, the

Attorney General shall always have a right of appeal to the Court of

Criminal Appeal from any judgement given by the Court of

Magistrates in respect of criminal proceedings ensuing out of this

Act.