Enforcement

IP Enforcement Services
Intellectual Property Rights protection has always been important for companies operating in market economies.  If a company does not protect its innovation everyone is free to copy and benefit from it.  However, over the last two decades the level of infringements, piracy and counterfeiting has risen drastically.  With the markets becoming more open, this type of crime has developed into a major source of income for the violators.  A huge turnover combined with potential sentences/punishment significantly lower than is the case for drugs and human trafficking makes it attractive for organised crime to generate money via these types of activity.
 
Not only are IPR violations illegal, they also pose a serious threat to private companies and innovators whose existence is solely dependant on the surplus they make through their innovation.  An analysis from the European Commission shows that 7% of all world trade relates to pirated or counterfeited goods.  Should this trend continue unchecked it could hamper the global economy.  Immediate action is needed in order to enhance the procedures related to various aspects of Intellectual Property Rights.
 
Defensive Measures

The enforcement of IP rights is provided for within the gamut of existing IP legislation in Malta.
 
The registration of a Trademark may be revoked when: -
  • within a period of five (5) years from the date of registration the proprietor has not put the trademark to genuine use in Malta;
  • in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; or
  • in consequence of the use made of it by the proprietor or with his consent, it is liable to mislead the public in relation to the goods or services for which it is registered, particularly as to the nature, quality or geographical origin of those goods or services.
 
A Trademark may also be declared Invalid on the basis of Absolute Grounds while Patents and Designs are also subject to Revocation, Invalidity and Limitation by the Courts of Malta.
 
Under Malta's Trademarks Act 2000, the Articles dealing specifically with Criminal Offences in the areas of Unauthorised Use, Falsification and Penalties are: 72-86.
 
Under Malta's Copyright Act 2000, the Articles dealing specifically with Infringement are: 42-44.
 
Under Malta's Patents and Designs Act 2000, the Articles dealing specifically with Infringements in the areas of Unknown Ownership, Forfeiture, Compensation, Limitation, Damages, and Employer-Employee relationships are: 50-57, 117, 119.
 
Under Chapter 9 of Malta's Criminal Code, Article 298 deals specifically with offences and penalties for Commercial or Industrial Fraud and Violation of Copyright.
 
View the following additional notes on Patent Litigation in Malta
 
Proactive Measures
 
IP rights are enforceable under other complimentary legislation found in Malta's Civil Code and Competition Law.
 
Competition Law addresses the behaviour in the market of undertakings to ensure competition in the relevant market.  The law is not intended to address IP issues directly but the filing of a complaint is possible under Chapter 379 of the Laws of Malta so that any person may bring forward a complaint to the Director of the Office for Fair Competition.  Eventually the Office will examine whether to take the on the case or not.  Action for damages under anti-competitive practices are possible under Chapter 16 of the Civil Code.
 
A meeting may be held with the Director of the Office of Fair Competition and guidance will be provided accordingly.  Further information is available by visiting the Consumer and Competition Department's website by clicking here.
 
IP Alliance

One way of improving the efforts to prevent IPR infringement is via better coordination between the IPR active authorities through the establishment of an IP Enforcement Alliance to enhance the fight against IPR infringements.
 
The active institutions involved in this Alliance are: the Commerce Department, the Attorney General, the Malta Police Force and the Customs Department.
 
The Commerce Department
Responsible for policy, international relations, legislation of copyright, legislation and registration of patents, trademarks and designs as well as creating awareness regarding the action to be taken to protect one's IP and to respect the IP owned by others.
 
In providing IPR support services to SMEs, the CD has also participated in an EU-wide Transnational Project aimed at enhancing such services, and the following online presentation entitled: "Enforcement support services. The key components" is an interesting online learning tool developed for staff in IP Offices and Intermediaries to make available better services for the SMEs employing a user-driven approach.
 
The learning tool is a presentation with English voice-over lasting 6 minutes and is also of interest to SMEs and the public in general. 
 
You can view the presentation here.
 
The Attorney General's Office
 
Responsible for vetting of legislation, prosecution, litigation and legal advice.
 
Customs
Responsible for border actions and customs legislation.
 
The Customs Department's IPR Section provides specific services to SMEs and IPR owners that are essential in order to safeguard and protect these intellectual assets.
 
Customs Seizure means the confiscation of any good that is considered to be counterfeit or unauthorised to prevent it from entering the market as specified under the Customs Cross Border Measures legislative framework.
 
An application may be filed for Customs action when it is established by the Customs Department's IPR Unit that counterfeit or unauthorised goods are being imported, following which ex-officio proceedings will be commenced by the Customs Department.
 
The Customs Department preserves the evidence in cases of suspected infringement through all possible means including photos, recordings, witnesses, testimonials, samples and so on - as provided for in the Criminal Code and the laws of Malta in general.
 
When confiscation is involved the Courts of Malta would be required to provide the necessary authorisations so that the goods are either kept unused or confiscated within the custody of the Police or other authorities, depending on the case.
 
More information about these services along with the corresponding Application Forms providing rights holders with Customs protection at both national and EU-wide levels are available by clicking here.

Police
Responsible for investigations and actions against criminal offences.
 
Whilst substantial effort is undertaken by each Government entity above, and an ongoing co-operation exists to a degree, the following initiatives are being undertaken:

-          The development of a holistic strategy in the Intellectual Property area;
-          The development of adequate Awareness and Training Dissemination on Enforcement;
-          Ongoing assistance to the Police and Customs in the area of identification of counterfeit goods;
-          Greater exposure to case law and procedures in these areas.
 
Cooperation activities have been and continue to be developed intended to address the above shortcomings.

Report IP Piracy & Counterfeit Goods
 
You may report an IP Crime for Piracy and/or Counterfeit by filling in the form below, for which all fields are optional except for the last.  This Report will be directed to the Police Economic Crimes Unit: