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 dependent 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 Cap 597, the Articles dealing specifically with Criminal Offences in
the areas of Unauthorised Use, Falsification and Penalties are: 108 - 122.
Under
Malta's Copyright
Act Cap 415, the Articles dealing specifically with Infringement are: 42 -
44.
Under
Malta's Patents
and Designs Act Cap 417, the Articles dealing specifically with
Infringements in the areas of Unknown Ownership, Forfeiture, Compensation,
Limitation, Damages, and Employer-Employee relationships are: 50 - 57, 117 and
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 for Fair Competition and guidance
will be provided accordingly. Further information is available by visiting
the Malta Competition and Consumer Affairs Authority 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.