ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS (REGULATION) ACT

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

CHAPTER 488

ENFORCEMENT OF INTELLECTUAL PROPERTY

RIGHTS (REGULATION) ACT

To regulate the enforcement of intellectual property rights.

12th December, 2006

ACT XX of 2006.

The short title of this Act is the Enforcement of Intellectual

Property Rights (Regulation) Act.

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

provided by law for the enforcement of their intellectual property

rights, be entitled to avail themselves of the measures, procedures

and remedies provided 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

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

of 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.

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

(2) The provisions of subarticle (1) 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 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

o p p o s i n g p a r t y, s u b j e c t t o t h e p r o t e c t i o n o f c o n f i d e n t i a l

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 subarticle (1), 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.

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

(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 subarticle (5), 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

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) 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

subarticle 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;

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

(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 subarticles 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 subarticle (1) 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 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.

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

(3) In respect of the measures referred to in subarticles (1) and

(2), 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 subarticles (1) and (2)

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 subarticles.

(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 subarticle

(7).

(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

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

(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) 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

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

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.

ENFORCEMENT OF INTELLECTUAL

PROPERTY RIGHTS (REGULATION)

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

e x p e n s e s i n c u r r e d b y t h e su c c e s s f u l pa r t y be b o r n e by t h e

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.