WORLD TRADE 
ORGANIZATION 
Council for Trade-Related Aspects 
of Intellectual Property Rights IP1N/llMLT1E1l 
10 March 2000 
(00-0960) 
Original: English 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
MALTA 
By means of a communication from its Permanent Mission, dated 7 March 2000, the 
following notification has been received from Malta under Article 63.2 of the Agreement. 
Please find enclosed Act N° VIII of 20001 enacted by the Parliament of Malta 
on 29 February 2000. This Act establishes enforcement measures relating to the importation into 
Malta, and the exportation and re-exportation from Malta, of goods in contravention of intellectual 
property rights. 
At present three other bills have been published and are being discussed in Parliament. These 
bills, which shall be enacted before the end of this current month, concern patents, trademarks and 
copyright. We shall duly notify them to WTO upon their enactment. 
1 English only. IP/N/1/MLTIE/1 
Page 2 
511pplimem tai-Gazzeua ral-Gvem faJ Ma/ra, NrLl. 16,915,29 ta' Frar, 2000 
Tl)qsima A 
MALTA 
ATT Nru. VIII [a' 1·2000 
.A. TT mahrllg b 'Jigi m i II·ParlamC!it t(1' 
Ivfnlw. 
A TT 1a' 1·2000 biex jistabbilix:d mizuri li 
jirrigwarda w id·anu\ gewwa l\.Jalt'I, u I_ 
esporlazzjoni u ri-c$port:llljoni minn 
Maim, ta' l-oggetti li jikkonlraHjenu 
d-driHijiet dWHr Proprjerli Inti!llettwnli. ACT No. "'UI of 2000 
A!\i .A.CT enacted by (h~ Parliument of 
{\fnlta, 
AN ACT to estaulish measures relaling 10 
the importation into Malta, ~llId the 
exportation and re-exportation from 
1\lalta, of goods in contran~ntion of 
Intellectual Property rights. IP/N/l/ML TlE/l 
Page 3 
I assent. 
(LS.) GUIDO DE MARCO 
President 
29th February, 2000 
ACT No. VIII of 2000 
A/V ACT TO esrablish measures relaring lO the impOrlafioll into Malta. 
and The exporrarion and re-exportation from Malta, of goods in 
contravention of Intellectual Propercy righrs. 
BE IT ENACTED by the President, by and with the advice and 
consent of [he House of Representatives, in tills presenr Parliament 
assembled, and by the authority of [he same, as follows:~ 
1. This Act may be cited as the Intellectual Property Rights Short tillc. 
(Cross-Borde:- Measures) Ace, 2000. 
2. (1) In this Act, unless the context oche[\vise requires: 
"goods infringing an imelleccual propeny righL" means: 
(a) counterfeit goods, namely: 
(i) goods, including [he packaging thereof, 
bearing without authorisation a trademark which is 
identical to the trademark validly registered in respect 
of (he same type of goods, or which cannot be 
distinguished in its essential aspects from such 
tf:ldemark. and which thereby infringes the right5 of the 
holder of the trademark in question under Ma1tese law; 
(ii) any trademark symbol (logo, label. sticker, 
"brochure, instructions for use or guarantee document) 
whether presented separately or not, in the same 
circumslancc:s as tbe goods referred to in paragraph (i); 
(iii) packaging materials bearing the t.rademarks 
of counterfeit goods, presented sepfLraleiy in rbe· same 
circumstances as the goods referred to in paragraph (i): lr.(~rprcril!ion. IP /N1l/ML T /Ell 
Page 4 
ApplicflbiJi[l' of th<: 
,\CL (b) pirated goods. namely: goous, which are or embociy 
copies made without the consent of the holder of the 
copyright or neighbouring rights. or of the hold'.!r of a 
design right. whelher registered under national legislation 
or nor, or of a person duly authorised by [he holder in 
the country of production, v:here the making of those 
copies, if it had lake;) place jn Malla, ',.vould have 
infringed the right in question under Maltese law; 
Cc) goods infringing a pillem under ~Jaltt;'<: law: 
"declarant" mC2.l1S the importer, the consignee, the 
exporrer or the OWnei of the goods or any other person 
involved in the operations memioned in section 4 oftl1is 
Act; 
"holder of a right" means the holder of it tradem3.rk,. 
a patent or an intellectual property right or any ot~ler 
person a:Jthorised la use that trademark. patent or right, 
or a represent alive lhereof. The holder of a right or any 
other person authorised to use the right may be 
represented by a natural or legal person, Such a person 
shall include a collecting society, '\,\'hiC:;1 has as its sole 
or principal purpose the managel1lem, or adminis(rarion 
of copyrighl or neighbouring rights: 
"intellectual property right" means :.).Oy right 
referred to in [he definition of good!' infringing an 
intellectual propeny right. 
(2) Materials and implements the predominam llse of which 
has been for the manufacture of a counterfeit trademark or of goods 
bearing such a trudcmark, [or the manufaClUre of goods infringing a 
patent or for the manufacture of pirated goods shall he (reared as goods 
infringing an intellectual property right, provided that the use of such 
materials and implements infringes the rightS of thE holder of rhe right 
in question under Maltese law. 
3. (1) This Act shall not apply la goodg \;:hich bea.:' a trademark 
wilh the conser,t of the holder of that rrademillk or \vhic:h are protected 
by a parenl.by a copyright or neighbol!fing right or by a design righl 
and which have been manufactured with the consent of lhe: holder of 
[he right, not\.vithstanding that they may have been placed in one of [he 
sirmltions referred to in section 4 of [his Act without [he consent of [he 
holder of the right, trademark or p:.Hent. 
(2) This Ac[ shali nor apply to goods refel1'ed (0 in subsection 
( 1) of this section when rhe goods have been manuf,lC£ured or bear a 
trademark under conditions other than those agreed with [he holder of 
the fights in que.stion. (3) This Act shall nO( apply to goods of a non-commercia! 
nature contained in travellers' personal luggage within the limits laid 
tlown in respect of relief from customs duty. 
4. The entry jnto M,dca, export or re-export, release for free 
circulation, temporary impona[ion, placing in a free zone or free 
warehouse of goods found to be goods infringing an intellectual propcrry 
right shall be prohibited. 
5, (1 J The holder of a right may lodge an application in writing 
with the Comptroller of Cuscoms for action by the CustomS authorities 
\-vhere goods alleged to infringe intellectu2.l property fights arc placed 
in one of the siLUations rderred to in section 4 of this Act. 
(2) The applicJ.tion referred to in subsection (I) of 
this section shall include: 
Ci) a sumciently detailed descripion I)flh:: goods 10 cnaJk 
the Customs authorities to recognise [hem; 
and 
(ii) proof (ha( the applicant is the holder of [he right for the 
goods in question and that prima facie the goods infringe [har right. 
(3) The proof required for the purpose of suhsecrio!1 (2) of 
lhis section may be as follows: 
(a) \Vhert: the holder of the righc applies himself: 
(i) in [he case of fi right thilt is registered or for which 
an application has been lodged such as a trademark, patent or 
design right: proof of registration or lodging of the application 
with [he relevant office; 
(ii) in the ca.se of a copyright, n~ighb()uring Iigh{ or 
design right that .is unrcgiscered or for 'vvhich an application 
has not been lodged: any proof of authorship or the person'5 
status as original holder. 
(b) . Where the application is made by any Other person 
authorised to use an intellectual property right. in addition to the 
proof required under paragraph (a) oftills subsection: the document 
by vil1ue of which the person is authorised to use {he right in 
question shall also be produced or sufficiently quoted. 
(c) Where the application is made by a represenraeive of 
the holder of a right Of of any other person aurhorised to uSe an 
intellectual propeny right, in addition to the proof required under 
paragraphs (a) and (b) of this subsection, proof of authorisation 
10 act shall also be prodllced. IP/NI 1 IMLTIEI 1 
PageS 
Prohibition of 
3000.1 iniringiJlg 
certain inlclkc[u:J.l 
propeny righ[$. 
ApplicUli[)n fOT 
actio(l by th.:: 
c~s[orrt'\ 3ut;'11';llCJ. JP /N1l/ML T /Ell 
Page 6 
(4) The holder of the right shall also pro\'ide all other 
pertinent information available to him to enable the Comptroller of 
Customs to take a decision in full knowledge of the facts without, 
however, that information being a condirion of adnu5sibility of che 
application. 
(5) In the case of pirated goods or of goods infringing 
pateols, the said information shall, wherever possible. include hy way 
of indication: 
(i) (he place v/here the goods are siruated or the intended 
destination: 
(ii) particulars identj fyjng the consignment or packages: 
(iii) the scheduled date of arrival or departure of the goods: 
(iv) the means of rranspon LJsed; 
(v) the identity of the importer, exporter or holder. 
(6) The application shall specify the length of (he period 
during which the Comptroller of Customs .is requesred to take action. 
(7) (i) The applicant shall be responsible to cover the 
administrative C05tS incurred in dealing \.vith the applic.mion. 
(ii) The applicant or his representative sh311 also be 
responsible to cover the adminisrrative costs incurred in 
implementing the decision ofrhe Comptroller of Customs referr~d 
to in (his section. 
(iii) Such costs shall be detcnnined by the Comptroller of 
Customs and shall nOl be disproporrionate [0 the service provided. 
(8) The Comptroller of Customs shall deal with the 
application and shall forthwith notify the applicant in writing, of his 
decision. 
(9) Where the Comptroller of Cusroms grants the 
application, he shall specify the period during which the Customs 
authorities shall withhold the release of or detain the goods pending the 
initiation of civiljudieial proceedings. That period may, upon application 
by the:: holder of the right. be extended by the Comptroller of CustOms. 
(10) Any refusal to grant an application shall give {he 
reasons for refusal and shall be subject to appeal to the Minister 
responsible for Customs \vithin three working days from notice to the 
applicant of the refusal. (11) The appeal referred to in subsection (10) of this section 
shall: 
(i) be in writing and shall contain a brief statement of the 
facts and state the reasons for the appeal; 
CH) be notified to the Comptroller of Cus[Oms who shall 
reply within th.ree workjng days from receipr of the appeal. 
(12) The Comptroller of Customs may require the holder 
of a right, where his application has been granted, to provide a security: 
(i) to cover any possible liabiWy on the part of the 
Comptroller of Customs vis-a.-yis the persons involved 'in one of 
the operations referred to in section 4 where the procedure initiaced 
pursuant to section 5 is discontinued owing [0 an act or omission 
by [he holder of [he right or where (he goods in question are 
subsequently found not to be goods infringing an inteUecmal 
propeny right: 
(ii) to ensure payment of the costs incurred in accordance 
wirh this Act, in keeping the goods under Cusroms control pursuant 
to section 5. 
(13) The holder of the right shall inform the Comptroller of 
Customs forthwith if his right is no longer validly registered or if j[ 
c~>;.pires, 
(14) Subsections (1) to (13) of this section shall ilpply 
mutatis mutandis to the extension of the decision on the original 
application. 
Ex officio w:tion. 6. Where. in the course of checks made under one of the Cusroms 
procedureS referred to in section 4 of this Act and before an appJication 
by the holder of the right has been Jodge.d or approved, it appears prima 
facie evident ro che Comptroller of Customs that goods are goods 
infringing an intellectual property right, the Comptroller of Customs 
may notify che holder of the right. where known, of a possible 
infringement thereof. 
The Comptroller of Customs may suspend release of lhe goods or 
detain them for a period of five working days to enable the holder of 
the right to lodge an application for action in accordance with section 5 
of this Act IPINI1 IMLTIEI1 
Page 7 IP/N/IIMLTIEIl 
Page 8 
Conditions 
governing Dccion by 
the Comptroller of 
CUIIOIfI.>. 7. (1) WirhoUl prejudice 10 the provisions of section 6 of this 
Act, where the Comptroller of Customs is satisfied, after consulting 
the applicant where necessary. that goods placed in one of [he 
situations referred to in sectlon 4 of this Act correspond to the 
description of goods infringing an intellectual property right, he shall 
suspend release of the goods or detain them and the Comptroller of 
Customs shall fonhwith inform the declarant and the person who 
applied for action to be taken, if any. 
(2) Subject 10 any law on the protection llf personal dma, 
commercial and induSlrial secrecy. and professional and adminisrrative 
confidentiality, the Comptroller of Customs shall notify the holder of 
the right. at his request. of the name and address of the declaranr and, or 
the consignee so as [0 assist the holder of the right to be put in position 
(O initiate judicial proceedings to safeguard his interests. 
(3) Withom prejudice to the operation of any la\·'y' regarding 
the protection of confidential information, the Comptroller of Customs 
shall afford the applicant and [he persons involved in any of the 
operations referred to in seclion 4 of this Act the opportunity to inspect 
the goods, the release of \vhich has been suspended or which h3ve been 
detained. When exam.ining the goods the Comptroller of Customs may 
take samples in order to expedite the procedure related to the sa.id goods. 
(4) If. within a period oflen working days after the applicam 
has been served \-vith norice of the suspension of release of goods or of 
detention thereof further to a decision of the Comptroller of Customs 
taken in terms of subsection (9) of section 5 of this Act the Comptroller 
of Customs has not been given proof [hat civil judicial proceedings 
leading to a substantive decision on the merits of the case have been 
lnltiaced or if the Comptroller of Customs has not taken provisions or 
measures prolonging [he suspension of the release of the goods, the 
goods shall be released, provided all ocher conditions for importation 
or expOr1a(ion have been complied with. The said rime limit may be 
extended by another ten working days by the Comptroller of Customs: 
Provided that, if civil judicial proceedings have been initiated 
in connection with goods. the release of which has been detained by the 
Comptroller of Customs under this Act, the Coun may. at the request of 
any party. review the decisio!l of rhe Comptroller of Customs with a 
vie\\' to determining whether the goods should be released either 
absolutely or under such conditions as the Court may impose. 
(5) fn the case of goods suspected of infringing parcnrs or 
design rights, the owner, tbe importer or [he consignee of the goods 
shaH be able to have the goods in question released or their detention 
revoked against provision of a security provided that: Pro·;ision$ 
.appl ic.,ble to goods 
found to be goods 
infri nging IlJl 
imdlcclua] property 
fiSh!. (a) the Comptrollc:r of Customs has been informed within 
[he lime limit referred to in subsection (4) of this section that civil 
judicial proceedings have been initiated, leading to a substantive 
decision on the merits of the case, 
(b) on expiry of [h~ time limit, [he COUI1 has not imposed 
interim measures, and 
(c) aJl the Customs formalities have been compkrcd. 
The security must be sufficient to protect the inrerests of the 
holder of the flght and shall be either in the form of a deposit made in 
the hands of the Comptroller of Customs of such amount as may be 
fixed by the Comptroller of Customs or in the fonn of a guarantee by a 
bank acceptable to the Compt[oller of Customs, of such amount as may 
be fixed by the Comptroller of Customs. Provision of [he security shall 
be without prejudice to the other remedies open [Q the holder of the 
righL 
(6) Where the m/mer has been referred [0 the Comptroller 
of Customs other {han on ~he initiative of the holder of the right, the 
security paid hy the importer, the consignee. the exporter or the owner 
of the goods shall be released if the person applying for suspension of 
release of the goods or detention thereof does noe exercise his right to 
institute legal proceedings within [wcmy working days from the date 
on which he is notified of th.e suspension of release or detention: 
Provided that such period may be extended to a maximum of 
thirty days at the discretion of the Comptroller of Customs. 
(7) The conditions governing storage of the goods during 
the period of suspension of reJease or deltmion shall be as detcnnined 
by the Comptroller of Customs. 
8. (1) In proceedings related to rhe enforcenlent of the rights 
of the holder of a right the Court shall: 
(a) as a general rule, order the Comptroller of Customs to 
dispose of goods established to be goods infringing an intellectual 
property right outside the channe15 of commerce in such a way as 
to preclude injury to the hoJderofthe right o[ order the Comptroller 
of Customs to destroy such goods, in any case without 
compensation of any SOI1 to and, at the cost of, the importer, 
exponer or owner of [he goods; 
Cb) take, or order the Comp[[oller of Customs to take in 
respect of such goods, any other measures having the effe<;:t of 
effectively depriving the persons concerned of the economic 
benefits of the tran5action. IPIN/l/MLTIE/l 
Page 9 IP/NI1 IMLTIEIl 
Page 10 
Exemptions [TOm 
liability. Save in exceptional cases, simply removing the trademarks, 
which have been affixed to the counterfeit goods without 
authorisation, shall not be regarded as having such effect. 
Provided that in ordcring measures to be taken under (his 
section the Court shall rake due account of the need for 
proportionality between the seriousness of the infringement and 
the remedies ordered as weJl as of the interests of third panies. 
(2) In addition CO [he information given pursuant to 
subsection (2) of section 7 of this Act and under the conditions laid 
down therein, the Comptroller of CuslOms shall inform the holder of 
the right. upon reguesL of [he names and addresses of the consignor, of 
lhe: imponer or expoI1er and of the manufacturer of the goods estabJ ished 
to be goods infringing an inlcllc::ctual property right and of lhe qt1(lntity 
of the goods in question. 
9. (1) The holder of a right shaJl not be entitled to compensation 
where goods are not detected by the ClJstoms authorities and are released 
or where no action is taken to detain them or to withold release thereof. 
(2) Exercise by the ComprroUer of Customs of the powers 
conferred upon him \yith regards to counterfeit or pirnJed goods shall 
not render him liable towards the persons involved in I.he operations 
referred to in section 4. in the even! of their suffering loss or damage as 
a result of their action. 
10. In proceedings related to the provisions of this Act the COUrt 
shall Ix entitled to order the party at whose request measures were taken 
under [his Act and who is found to have abused enforcement procedures 
to provide to a party wrongfully enjoined or restrained adequate 
compensation for the injury suffered due [0 such abuse. Such 
compensarion may also include compensation for legal andjudicial costs 
and fees incurred. 
n. (1) If any person shall import or cause to be imported any 
goods infringing an inrellecmal property right. such person shall be 
liable; for every such offence to a fine (mulra) equiYalenl to double the 
value of such goods. 
(2) All proceedings under this section shall be taken before 
the Court of Magistrates and shall be in accordance with the provisions 
of rhe Criminal Code regu1ating the procedure before (he said Court or 
a Court of Criminal Judicature and the award and execution of the 
puni::;hments thereby imposed. Ab\J\o:of 
procWurc~. 
Offences and 
~n:!Jcics. (3) Notwithswnding the provisions of the Criminal Code) 
the Attorney Generul shall al\-v:l}'s have a right of appeal to the COllrt of 
Criminal Appe.al from any judgement given by the Court of Magistrates 
in respect of criminal proceedings ensuing out of this Act. IPINIlIML TIEl 1 
Page 11 
12. The follo\); ing provisions of the Industrial Property CC>n:icquenliaJ 
(Protection) Ordinance. Cap. 29, shall be amended as follows: amcnc1mcnllo Cap 29. 
(a) in section 104 the words" , or imports into Malta" shall 
be deleted; and 
(b) sections 119, 120, 121,122 and 123 shall be deleted. 
Passed by the House of Representatives at Sitting No. 249 of 23rd February, 
2000. 
RICHARD J. CAUCHI 
Clerk co the House of Representatives ANTON T ABONE 
Speaker 