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Intellectual Property Rights (Cross-Border Measures) Act (Cap. 414) Consolidated

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.

ACT VIII of 2000.

29th February, 2000

1. The title of this Act is Intellectual Property Rights (Cross- Border Measures) Act.

2. (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 t h e o w n e r of t h e go od s or an y ot her p e rso n i n v o l v ed i n t h e 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

Title. Interpretation.

holder of a right or any other person authorised to use the right may be represented by a natural or legal person. Such a person shall include a collecting soci ety, which has as its sole or principal p u rpo s e t h e m a nag e m e nt , or ad m i n i strat i o n of co py ri gh t o r 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.

Applicability of the

Act.

3. (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 desig n righ t an d which have been manufactu red with th e 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.

Prohibition of goods infringing certain intellectual property rights.

Application for action by customs authorities.

4. 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.

5. (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 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,
t h at i n formati on bei ng a co ndit i on of ad missibil ity 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 indication:
(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 du ri ng wh ic h t h e Co mp trol le r of Cu sto m s i s requ ested t o tak e action.
(7) (i) The applicant shall be responsible to cover the admin istrat ive co sts i n cu rred in d e aling with the application.
(ii) The applicant or his representative shall also be responsible to cover the administrative costs incurred in i mp le me nt in g th e d eci sio n of th e C om p tr ol ler of Customs referred to in this article.
(iii) Such costs shall be determined by the Comptroller of Custo m s an d sh all no t b e dispro por tio nat e to the service provided.
(8) The Comptroller of Customs shall deal with the application 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 sh all withho ld th e release of or detai n the good s p e nd ing th e initia t ion of civil judicial proceedings. That period may, upon ap pl icat ion b y t h e h o ld er of th e rig h t, be ext e n d ed by th e 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.

Ex officio action. 6. Where, in the course of checks made under one of the Cu st oms pro c edu r es referred to in arti cl e 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 goo ds are goo ds in frin g in g an i n tell ectual prop ert y r i ght , th e 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.

7. (1) Without prejudice to the provisions of article 6, where th e C o m p t r ol ler of C u st om s is sati sf ied , af t e r co nsu l t i n g th e ap plicant where necessary, that g oods 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, commercial an d indu stri al se crecy, and pro f essional an d administrative confidentiality, the Comptroller of Customs shall not ify th e ho ld er of t h e ri ght , at hi s requ est, o f th e n a me and address of the declarant and, or the consignee so as to assist the holder of the right t o be put in po sitio n to initi ate ju dici al 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 t hereof 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 exten d ed b y an oth e r ten w o rkin g d a y s by th e Com p t r ol ler 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, revi ew the decisio n of t h e 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 t h e goo ds 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

Conditions governing action by the Comptroller of Customs.

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 Com p troller o f 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 goo ds shall be rel eased if the person apply ing for suspension of release of the goods or detention thereof does not exerci se his rig h t to institut e legal proceeding s within twenty work ing days from the date on which he is notified of the 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.

Provisions applicable to goods found to be goods infringing an intellectual property right:

8. (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 t r ademarks, which have been affi xed to the co unterfeit good s without authorisation, shall not be regarded as having such effect:
Provided that in ordering measures to be taken under this article th e Court shall tak e due account of t h e 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 u nder the conditi ons l aid down therein , the Com ptroll er of Customs shall inform the holder of the right, upon request, of the names and addresses of the consignor, of the importer or exporter
and of t h e man u factu r er o f th e g ood s est a bli s hed t o b e g ood s infringing an intellectual property right and of the quantity of the goods in question.

9. (1) The holder of a right shall not be entitled to com p ensatio n w h ere go od s ar e not det e cted by th e Cust oms 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 to wards the perso ns involv ed in t he operations referred to in article 4, in the event of their suffering loss or damage as a result of their action.

Exemptions from liability.

10. 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 fou nd 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.

11. (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 Ap peal fro m any judg ement gi ven by th e Court of Magistrates in respect of criminal proceedings ensuing out of this Act.

Abuse of procedures.

Offences and penalties.

Cap. 9.

Cap. 9.