Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark proprietors may enforce their trademark rights in Malta by instituting an action before the Civil Court. The remedies available include destruction of infringing merchandise and recall of its circulation, injunctions to prevent continued infringement and awards of pecuniary damages. It may also be possible for a successful party to recover legal costs.

In terms of criminal law provisions regarding trademark infringement, it should be noted that both the Act and the Criminal Code (Chapter 9 of the Laws of Malta) provide for an array of acts that may amount to criminal offences. Broadly, the acts that may amount to a criminal offence are those relating to intentional unauthorised use, false trademark representations, and commercial and industrial trademark fraud.

Procedural format and timing

What is the format of the infringement proceeding?

An infringement of a registered trademark is actionable by the proprietor of the trademark by sworn application that is to be filed in the First Hall of the Civil Court. In such an action, all such relief as would be made available in relation to infringement of any other property right will be made available to the plaintiff.

Burden of proof

What is the burden of proof to establish infringement or dilution?

In civil proceedings, the burden of proof lies with the claimant and is established on a balance of probabilities. In criminal proceedings, the burden of proof also lies on the claimant; however, the criminal offence must be proved beyond reasonable doubt.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Trademark owners have the right to commence an action for trademark infringement, whereas a licensee is entitled, unless the licence specifically provides otherwise, to call on the owner of the trademark to take infringement proceedings in respect of any matter that affects its interets.

If the owner refuses to do so or fails to do so within two months after being called upon by the licensee, then the licensee may bring the proceedings in its own name as if it were the proprietor. Further, an exclusive licence may provide that the exclusive licensee is entitled to bring infringement proceedings in its own name against any person other than the proprietor.

Criminal proceedings are generally initiated ex officio by the executive police. A complaint procedure is also in place whereby complaints may be lodged with the executive police in order for the police to initiate criminal proceedings.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The Department of Customs plays an important role in border control regarding the halting of imported and exported infringing goods. The Department of Customs seizes such goods and works towards the prevention of such activity by carrying out checks of goods that enter or transit into Malta. This is done where it is prima facie evident that the goods are infringing an IP right. To benefit from ex officio seizure by the Department of Customs, the trademark registration must also be recorded with the Department of Customs' IP database. Both Maltese and European trademarks may be recorded with the Department of Customs.

In such situations, the Department of Customs would seize the goods and proceed to inform the rights holder as to the infringing consignment, following which the rights holder is granted four working days to lodge an application in court. Following such seizure, a civil action at the suit of the Civil Court would be necessary in order for the trademark owner to enforce its rights against such counterfeit goods.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

It is possible to request an order from the Civil Court to the effect that evidence that is in control of an opposing party be presented in court by the opposing party (subject to the protection of confidential information).

Provisional measures to preserve evidence are also available. Before the commencement of proceedings on the merits of the case, a person who has filed reasonably available evidence to support their claim that their trademark rights are infringed or about to be infringed, may request the court to order such prompt and effective provisional measures as it considers appropriate to preserve relevant evidence in respect of the alleged infringement. 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 or distribution of the said goods and the documents relating thereto.

A right of information is also available. During proceedings concerning an infringement of a trademark, the Civil Court may order, on the basis of a justified and proportionate request by the claimant to this effect, that information on the origin and distribution networks of the goods or services that infringe a trademark be produced before the court by the infringer or by any person who has been:

  • found in possession of infringing goods on a commercial scale;
  • found to be using the infringing services on a commercial scale;
  • has been found to be providing on a commercial scale services used in infringing activities; or
  • has been indicated by any of the persons referred to above as being involved in the production, manufacture or distribution of the goods or the provision of the services.
Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Preliminary injunctions tend to be very expeditious and frequently decided by only one court sitting. Trial levels and appeals tend to vary greatly in terms of timing depending on the complexity, subject matter and merits of the case. However, cases involving counterfeit goods where the infringer does not present a defence and is represented by the curators tend to be very expeditious and not involve more than two court sittings.

Limitation period

What is the limitation period for filing an infringement action?

Civil actions under the Act shall be barred by the lapse of five years in all cases in which no other period within which such actions may be brought is fixed in said Act.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs associated with trademark cases may vary greatly depending on the complexity of the case and therefore are very difficult to predetermine. Cases involving counterfeits tend to be less expensive since, typically, only around two sittings would be required, given that the alleged infringer would not be opposing the case.

In terms of recovery of legal costs, it is generally possible for the successful party to recover such costs. However, in actions involving counterfeit goods, since the alleged infringer does not generally defend the case, the successful party would have to bear all costs that would be associated with the proceedings.

Appeals

What avenues of appeal are available?

Decisions of the Malta IPRD and the Civil Court may be appealed to the Court of Appeal, whereas decisions of the Criminal Court may be appealed to the Criminal Court of Appeal.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The defences available include:

  • that the mark was not used as a trademark;
  • that the mark was used in relation to goods or services that fall outside the remit covered by registration;
  • that the mark is not similar to the extent that there is no likelihood of confusion or association;
  • use in relation to goods and services not covered by the trademark;
  • use by a person of their own name or address;
  • use of a sign that is descriptive or indicative of characteristics of goods or services that are necessary to indicate the intended purpose of a good or service; and
  • acquiescence to infringing use for a continuous period of five years.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The civil remedies available include the destruction of the infringing items, recall from circulation within the channels of commerce or the definitive removal from circulation within the channels of commerce. The court may, on application of the plaintiff in situations where an infringement of an IP right has occurred, issue an injunction to prevent continued infringement (preliminary and permanent). It is also within the courts’ discretion to award pecuniary damages to the injured party and it may also be possible for a successful party to recover legal costs.

With regards to criminal remedies, the Criminal Court may order both fines and imprisonment depending on the nature of the specific criminal offence.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Recourse to arbitration proceedings is generally slowly gaining traction, largely because arbitration is seen to be cheaper, faster and a more flexible form of dispute resolution. However, it is to be noted that Malta provides for concurrent jurisdiction of courts and arbitral tribunals.