Answer ... In case of infringement of a registered trademark, the proprietor of the trademark may file a sworn application with the First Hall of the Civil Court. All relief that is generally available in respect of the infringement of any other property right is available to the plaintiff. Therefore, the plaintiff can request precautionary acts including injunctions, payment of damages and the permanent erasure, removal or destruction of any infringing goods, material or articles in the offender’s possession, custody or control.
Additionally, the Trademarks Act provides that, as part of the infringement proceedings, the proprietor of a registered trademark may, by application, ask the First Hall of the Civil Court for an order for delivery up to the proprietor, or such other person as the court may direct, of any infringing goods, materials or articles which a party has in its possession, custody or control in the course of business. In such cases, where infringing goods, materials or articles have been delivered further to an order of the court, an action by sworn application may be filed with the court by any party seeking their destruction or forfeiture in favour of such person as the court may think fit, or seeking a decision that no such order should be made.
Moreover, the proprietor or licensee of a registered trademark may, in accordance with the Enforcement of Intellectual Property Rights (Regulations) Act (Chapter 488 of the Laws of Malta), file an application with the First Hall of the Civil Court to:
issue a decree against the alleged infringer to:
- prevent any imminent infringement;
- forbid (on a provisional basis and subject, where appropriate, to a recurring penalty payment) the continuation of the alleged infringement; or
- make any continuation subject to the lodging of guarantees intended to ensure compensation for the rights holder;
- issue an interlocutory injunction, under the same conditions, against an intermediary whose services are being used by a third party to infringe an IP right; or
- order the seizure or delivery up of the goods suspected of infringing the right.
Apart for civil actions, infringers are also exposed to criminal liability. Any party that, with a view to making a gain for itself or another or causing loss to another, and without the consent of the proprietor, undertakes any of the actions listed in the Trademarks Act is guilty of an offence and liable to imprisonment for a term up to three years, a fine of not more than €23,295 or both. The actions listed in the act that constitute an offence should the necessary intent be present are mainly as follows:
- the application to goods or their packaging of a sign that is identical to, or likely to be mistaken for, a registered trademark;
- the unauthorised sale or distribution of packages and articles bearing a sign which is identical to, or likely to be mistaken for, a registered mark;
- the application or use of identical or similar marks that could be mistaken for a registered mark on labelling, business papers or advertising;
- the making of an article specifically designed or adapted to make copies of, or to make a sign likely to be mistaken for, a registered trademark; and
- the actual possession, custody or control in the course of business of any such goods, packaging or articles, with a view to undertaking any of the actions listed as amounting to an offence; or the possession of an article in the course of business in the knowledge or with reason to believe that it has been or will be used to produce infringing goods, labelling, packaging, business papers or advertising.
Answer ... The same remedies as are available for infringement are likewise available for claims of trademark dilution.
Answer ... Yes, Maltese trademark law also recognises the possibility to bring an action requesting revocation or invalidation of a registered trademark.
Answer ... Infringement of a registered trademark is actionable by the proprietor of the trademark by sworn application filed with the First Hall of the Civil Court. Such an application should contain as much detail as possible concerning the alleged infringement, together with any documentary evidence or testimony, through either affidavits, expert reports or witness evidence. As from January 2023 (or any date before as may be prescribed by the minister) invalidity and revocation proceedings must be initiated before the Industrial Property Registrations Directorate.
Such application may be accompanied or preceded by a request for the approval of a precautionary act – generally a request for a prohibitory injunction – against the alleged infringer. In such proceedings, the court will decide on a prima facie basis whether infringement has occurred and will grant or refuse the preliminary remedy request, which must be followed by the filing of the proper judicial proceedings for determination on the merits of the case.
A licensee may bring proceedings for trademark infringement only if the proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor, after formal notice, does not itself bring infringement proceedings within an appropriate period.
Answer ... Generally, the following defences are normally put forth by a defendant in trademark litigation:
- The disputed mark is not being used as a trademark;
- The disputed mark is being in relation to goods or services that fall outside the scope covered by the registered trademark, or in relation to goods or services that are dissimilar to those covered by the registered trademark;
- The disputed mark is not similar to the registered trademark;
- There is no likelihood of confusion or association; and
- The registered trademark has not been used for a continuous period of five years.
Should there be grounds for such actions, the defendant may bring a counterclaim, including an action for revocation or invalidation of a registered trademark.
Answer ... As is the case with all civil proceedings, the aggrieved party retains a right to appeal the decision before the Court of Appeal subject to the filing of an appeal application.