Counterfeit Goods and the Current Maltese Customs Cross Border Measures & Controls

The applicable law in Malta with regards to counterfeit goods and the relevant procedure for intervention is in line with the relevant European Union Regulations and Directives.

It is important to note that the protection granted by virtue of this act to the right holder, will not be enjoyed in cases where goods bearing trademarks, or protected by patents, copyrights and design rights have been manufactured with the consent of the right holder even though they have been subsequently put into circulation without the consent of the right holder.

In cases where a right holder has reason to believe that counterfeit goods which are allegedly infringing his intellectual property rights are entering Maltese Customs Borders, he should follow the procedure of filing a Customs Intervention Application in writing with the Controller of Customs to suspend the release of the goods, as provided for under Article 5 of the Intellectual Property Rights (Cross-Border Measures) Act, 2000’, (Act VIII of 2000) (the ‘Act’).

The application should:

• bear a detailed description of the goods so as to make it clear for Customs to recognize such goods,
• bring proof that the he/she is the holder of the rights in question
• and prima facie evidence that such goods infringe the rights of the holder

It is imperative that the applicant provides all the information available regarding the goods in question. Finally the application should indicate the length of the period during which the Controller of Customs is requested to take action.

Consequent to receiving such application, the Controller of Customs will, if satisfied of the contents of the application, suspend the release of the goods or detain them and inform the right holder. Following the suspension of release of the goods, Customs provide the right holder with the necessary information regarding the consignee, thus the right holder would be able to initiate judicial proceedings to safe guard his rights. If the Controller of Customs does not receive proof of the initiation of such proceedings within 10 working days from informing the applicant of the suspension of release of the goods, the alleged counterfeit goods will be released.

Following judicial proceedings, the Court may order the Controller of Customs the disposal or destruction of the counterfeit goods at the cost of importer, exporter or owner of the goods in question and any other additional measures which effectively deprive the consignee of the economic benefits of the transaction.

It is highly advisable that by way of prevention, right holders lodge such application by customs even though they might have no immediate suspicion of counterfeit goods entering Maltese borders.

Finally, in cases where in the course of checks, customs intercept goods before an application by the right holder has been lodged, and there exists prima facie evidence that such goods are infringing IP rights, Customs officials may act ex-officio. The procedure is that the Customs official notifies the right holders/representative concerned and release of goods is suspended for 3 working days. Within the prescribed 3 days, the right holder should file an application for action as per Article 5. Again, in this case if the right holder fails to lodge the necessary application, after the 3 day lapse, the goods will be released.

Notwithstanding that the Maltese law per se does not provide for the possibility of a private agreement between the right holder and the consignee, in practice private agreements reached within 20 days from the original date of notification of suspected goods between the right holder and the consignee are accepted.

Finally, one must keep in mind that the EU Regulation only applies to goods coming from outside the Community, in cases of goods coming from within the Community, the Regulation is not applicable. Moreover, in cases of counterfeit goods entering EU borders via travelers’ personal baggage within the limits of duty-free allowances, the Regulation is also inapplicable.