Civil litigationi Forums
A dispute between an applicant or an interested party and the Office concerning a decision it has made is referred to the Court of Appeal in its Inferior Jurisdiction.
The following forms of dispute are referred to the First Hall of the Civil Court as a court of first instance (with a ‘once only’ appeal to the Court of Appeal in its superior jurisdiction):
- a dispute between an interested party and a registered trademark proprietor; and
- a dispute between an injured party and a trademark infringer.
An interlocutory, pretrial injunction is available either under general law (a warrant of prohibitory injunction) or under a specific law (Article 6 of the Enforcement of Intellectual Property Rights (Regulation) Act).
Furthermore, the applicant may request measures aimed at preserving evidence.
In each case, an application is filed with the court and, if acceded to, it needs to be followed by the filing of a lawsuit within a specific period.
Pretrial discovery is available at the time the lawsuit is filed, or after.iii Causes of action
Causes of action may range from one to the other of the following:
- trademark invalidation (e.g., a lawsuit based on relative or absolute grounds, for invalidation of a registered trademark);
- trademark revocation (e.g., a lawsuit based on revocation of a registered trademark, for a declaration of non-use of a registered trademark as a ground for revocation);
- trademark infringement (e.g., a lawsuit for damages and a permanent injunction as well as destruction of the infringing goods, as a result of infringement of a registered trademark); and
- unfair competition (e.g., a lawsuit for damages and a permanent injunction as well as destruction of the infringing goods, as a result of an infringement of a registered or unregistered trademark, company name, trade name, business name, geographical indication or domain name).
Pretrial proceedings are initiated by means of an application filed before the First Hall of the Civil Court, and at this stage an interlocutory injunction or a request for preservation of evidence, or both, may be requested. The adversarial party is given an opportunity of reply, and the Court may, or may not, fix one or more hearings, following which it makes a decision by decree. In the event that the Court accedes to a pretrial request, the applicant is obliged to follow up matters through the filing of a lawsuit within 31 days and, a lawsuit having been filed, discovery may be requested and the trial proper takes place, with each party presenting its own evidence and the Court issuing its judgment after the parties have filed written and verbal observations. These proceedings may take between one and three years in total.
Following the judgment of the court of first instance, an appeal is possible by filing an application before the Court of Appeal in its Superior Jurisdiction within 20 days of the date of judgment. No new evidence may be produced before the Court of Appeal (save for exceptional circumstances), and the parties appear, on average, between one and three times before the Court of Appeal pronounces judgment. These proceedings may take between three and five years in total.
The losing party is normally ordered by the Court to pay the winning party’s judicial costs. The parties are each represented by locally qualified legal counsel. In the case of a non-resident litigant, legal counsel normally acts as the mandatary.v Remedies
Typical remedies requested in a trademark infringement action or in an unfair competition action are as follows:
- a declaration of infringement;
- an order for permanent prohibition of the infringing action;
- a declaration of damage caused;
- a request for quantification of damage caused;
- an order for payment of damages thus quantified; or
- a request for payment of all judicial costs.
In the case of an unfair competition action, the court may be requested to impose a fine (of between €465.87 and €4,658.70) in lieu of damages.
Other enforcement proceedings
Anti-counterfeiting is often tackled through the intervention of Maltese Customs in applicable procedures available under Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No. 1383/2003, and Malta’s corresponding law, namely the Intellectual Property Rights (Cross-Border Measures) Act.
In the event of suspect merchandise discovered in the course of checks on goods entering a customs point in Malta (including a free zone), Maltese Customs informs the right holder of a suspicion that the goods may involve an infringing act. If the right holder is a ‘holder of an IP right’, as recorded with Maltese Customs, and in circumstances in which the goods are counterfeit, the right holder is given the opportunity (at the discretion of Maltese Customs) of having the goods destroyed through the ‘simplified procedure’ (or ‘standard procedure’) within 10 working days of the date of notification of detention. Alternatively, the right holder is required to file judicial proceedings within that same period, extendable once only (on good grounds shown to Maltese Customs) by a further period of 10 working days. In any such lawsuit (filed before the First Hall of the Civil Court against the declarant or the holder of the goods), the right holder typically requests a declaration of infringement, followed by a request for a court order of destruction of the goods and disposal of waste generated thereby, at the defendant’s expense, and an order for all relevant costs to be borne by the defendant. In any such court case, a right of appeal to the Court of Appeal in its Superior Jurisdiction is available.