INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES) [ CAP. 414.  1
CHAPTER 414
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES) ACT
To establish measures relating to the importation into Malta, and the
exportation and re-exportation from Malta, of goods in contravention of
Intellectual Property rights.
29th February, 2000
ACT VIII of 2000.
Title. 
Border Measures) Act.
Interpretation.
"goods infringing an intellectual property right" means:
( a ) counterfeit goods, namely:
(i) goods, including the packaging thereof, bearing
without authorisation a trademark which is
identical to the trademark validly registered in
respect of the same type of goods, or which
cannot be distinguished in its essential aspects
from such trademark, and which thereby
infringes the rights of the holder of the
trademark in question under Maltese law;
(ii) any trademark symbol (logo, label, sticker,
brochure, instructions for use or guarantee
document) whether presented separately or not,
in the same circumstances as the goods referred
to in sub-paragraph (i);
(iii) packaging materials bearing the trademarks of
counterfeit goods, presented separately in the
same circumstances as the goods referred to in
sub-paragraph (i); 
( b ) pirated goods, namely: goods which are or embody
copies made without the consent of the holder of the
copyright or neighbouring rights, or of the holder of a
design right, whether registered under national
legislation or not, or of a person duly authorised by the
holder in the country of production, where the making
of those copies, if it had taken place in Malta, would
have infringed the right in question under Maltese law;
( c ) goods infringing a patent under Maltese law; 
"declarant" means the importer, the consignee, the exporter or
the owner of the goods or any other person involved in the
operations mentioned in article 4;
"holder of a right" means the holder of a trademark, a patent or
an intellectual property right or any other person authorised to use
that trademark, patent or right, or a representative thereof. The
2 [ CAP. 414.
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES)
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, which has as its sole or principal
purpose the management, or administration of copyright or
neighbouring rights;
"intellectual property right" means any right referred to in the
definition of goods infringing an intellectual property right.
(2) Materials and implements the predominant use of which has
been for the manufacture of a counterfeit trademark or of goods
bearing such a trademark, for the manufacture of goods infringing a
patent or for the manufacture of pirated goods shall be treated as
goods infringing an intellectual property right, provided that the
use of such materials and implements infringes the rights of the
holder of the right in question under Maltese law.
Applicability of the 
Act.
3. (1) This Act shall not apply to goods which bear a
trademark with the consent of the holder of that trademark or which
are protected by a patent, by a copyright or neighbouring right or
by a design right and which have been manufactured with the
consent of the holder of the right, notwithstanding that they may
have been placed in one of the situations referred to in article 4
without the consent of the holder of the right, trademark or patent.
(2) This Act shall not apply to goods referred to in sub-article
(1) when the goods have been manufactured or bear a trademark
under conditions other than those agreed with the holder of the
rights in question.
(3) This Act shall not apply to goods of a non-commercial
nature contained in travellers’ personal luggage within the limits
laid down in respect of relief from customs duty.
Prohibition of 
goods infringing 
certain intellectual 
property rights.
4. The entry into Malta, export or re-export, release for free
circulation, temporary importation, placing in a free zone or free
warehouse of goods found to be goods infringing an intellectual
property right shall be prohibited.
Application for 
action by customs 
authorities.
5.  (1) The holder of a right may lodge an application in
writing with the Comptroller of Customs for action by the Customs
authorities where goods alleged to infringe intellectual property
rights are placed in one of the situations referred to in article 4.
(2) The application referred to in sub-article (1) shall include:
(i) a sufficiently detailed description of the goods to
enable the Customs authorities to recognise
them; and
(ii) proof that the applicant is the holder of the right
for the goods in question and that  prima facie
the goods infringe that right.
(3) The proof required for the purpose of sub-article (2) may
be as follows:
( a ) Where the holder of the right applies himself:
(i) in the case of a right that is registered or for
which an application has been lodged such as a
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES) [ CAP. 414.  3
trademark, patent or design right: proof of
registration or lodging of the application with
the relevant office;
(ii) in the case of a copyright, neighbouring right or
design right that is unregistered or for which an
application has not been lodged: any proof of
authorship or the person’s 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 ) of
this sub-article: the document by virtue of which the
person is authorised to use the right in question shall
also be produced or sufficiently quoted.
( c ) Where the application is made by a representative of
the holder of a right or of any other person authorised
to use an intellectual property right, in addition to the
proof required under paragraphs ( a ) and ( b ) of this
sub-article, proof of authorisation to act shall also be
produced.
(4) The holder of the right shall also provide 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 condition of admissibility of the
application.
(5) In the case of pirated goods or of goods infringing patents,
the said information shall, wherever possible, include by way of
indication:
(i) the place where the goods are situated or the
intended destination;
(ii) particulars identifying the consignment or
packages;
(iii) the scheduled date of arrival or departure of the
goods;
(iv) the means of transport used;
(v) the identity of the importer, exporter or holder.
(6) The application shall specify the length of the period
during which the Comptroller of Customs is requested to take
action.
(7) (i) The applicant shall be responsible to cover the
administrative costs incurred in dealing with the
application.
(ii) The applicant or his representative shall also be
responsible to cover the administrative costs incurred
in implementing the decision of the Comptroller of
Customs referred to in this article.
(iii) Such costs shall be determined by the Comptroller of
Customs and shall not be disproportionate to the
service provided.
4 [ CAP. 414.
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES)
(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 Customs 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 civil judicial 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 the reasons
for refusal and shall be subject to appeal to the Minister responsible
for Customs within three working days from notice to the applicant
of the refusal.
(11) The appeal referred to in sub-article (10) shall:
(i) be in writing and shall contain a brief statement
of the facts and state the reasons for the appeal;
(ii) be notified to the Comptroller of Customs who
shall reply within three working days from
receipt 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 liability on the part of the
Comptroller of Customs vis-à-vis the persons
involved on one of the operations referred to in
article 4 where the procedure initiated pursuant
to article 5 is discontinued owing to an act or
omission by the holder of the right or where the
goods in question are subsequently found not to
be goods infringing an intellectual property
right;
(ii) to ensure payment of the costs incurred in
accordance with this Act, in keeping the goods
under Customs control pursuant to article 5.
(13) The holder of the right shall inform the Comptroller of
Customs forthwith if his right is no longer validly registered or if it
expires.
(14)  Sub-articles (1) to (13) shall apply  mutatis mutandis  to the
extension of the decision on the original application.
Ex officio  action.  6. Where, in the course of checks made under one of the
Customs procedures referred to in article 4 and before an
application by the holder of the right has been lodged or approved,
it appears  prima facie  evident to the Comptroller of Customs that
goods are goods infringing an intellectual property right, the
Comptroller of Customs may notify the holder of the right, where
known, of a possible infringement thereof.
The Comptroller of Customs may suspend release of the
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 article 5.
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES) [ CAP. 414.  5
Conditions 
governing action 
by the Comptroller 
of Customs.
7. (1) Without prejudice to the provisions of article 6, where
the Comptroller of Customs is satisfied, after consulting the
applicant where necessary, that goods placed in one of the
situations referred to in article 4 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 forthwith inform the declarant and the person who applied for
action to be taken, if any.
(2)  Subject to any law on the protection of personal data,
commercial and industrial secrecy, and professional and
administrative confidentiality, the Comptroller of Customs shall
notify the holder of the right, at his request, of the name and
address of the declarant and, or the consignee so as to assist the
holder of the right to be put in position to initiate judicial
proceedings to safeguard his interests.
(3)  Without prejudice to the operation of any law regarding the
protection of confidential information, the Comptroller of Customs
shall afford the applicant and the persons involved in any of the
operations referred to in article 4 the opportunity to inspect the
goods, the release of which has been suspended or which have been
detained. When examining the goods the Comptroller of Customs
may take samples in order to expedite the procedure related to the
said goods.
(4)  If, within a period of ten working days after the applicant
has been served with notice of the suspension of release of goods or
of detention thereof further to a decision of the Comptroller of
Customs taken in terms of article 5(9), the Comptroller of Customs
has not been given proof that civil judicial proceedings leading to a
substantive decision on the merits of the case have been initiated or
if the Comptroller of Customs has not taken provisions or measures
prolonging the suspension of the release of the goods, the goods
shall be released, provided all other conditions for importation or
exportation have been complied with. The said time 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 Court
may, at the request of any party, review the decision of the
Comptroller of Customs with a view to determining whether the
goods should be released either absolutely or under such conditions
as the Court may impose.
(5) In the case of goods suspected of infringing patents or
design rights, the owner, the importer or the consignee of the goods
shall be able to have the goods in question released or their
detention revoked against provision of a security provided that:
( a ) the Comptroller of Customs has been informed within
the time limit referred to in sub-article (4) that civil
judicial proceedings have been initiated, leading to a
substantive decision on the merits of the case,
( b ) on expiry of the time limit, the Court has not imposed
6 [ CAP. 414.
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES)
interim measures, and
( c )  all the Customs formalities have been completed.
The security must be sufficient to protect the interests of
the holder of the right 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 form of a
guarantee by a bank acceptable to the Comptroller of Customs, of
such amount as may be fixed by the Comptroller of Customs.
Provision of the security shall be without prejudice to the other
remedies open to the holder of the right.
(6) Where the matter has been referred to the Comptroller of
Customs other than on the initiative of the holder of the right, the
security paid by 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 not
exercise his right to institute legal proceedings within twenty
working days from the date on which he is notified of the
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 release or detention shall be as determined
by the Comptroller of Customs.
Provisions 
applicable to goods 
found to be goods 
infringing an 
intellectual 
property right:
8.  (1) In proceedings related to the enforcement 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 channels of
commerce in such a way as to preclude injury to the
holder of the right or order the Comptroller of
Customs to destroy such goods, in any case without
compensation of any sort to and, at the cost of, the
importer, exporter or owner of the goods;
( b ) take, or order the Comptroller of Customs to take in
respect of such goods, any other measures having the
effect of effectively depriving the persons concerned
of the economic benefits of the transaction.
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 ordering measures to be taken under this
article the Court shall take due account of the need for
proportionality between the seriousness of the infringement and the
remedies ordered as well as of the interests of third parties.
(2) In addition to the information given pursuant to article 7(2)
and under the conditions laid down therein, the Comptroller of
Customs shall inform the holder of the right, upon request, of the
names and addresses of the consignor, of the importer or exporter
INTELLECTUAL PROPERTY RIGHTS 
(CROSS-BORDER MEASURES) [ CAP. 414.  7
and of the manufacturer of the goods established to be goods
infringing an intellectual property right and of the quantity of the
goods in question.
Exemptions from 
liability.
9. (1) The holder of a right shall not be entitled to
compensation where goods are not detected by the Customs
authorities and are released or where no action is taken to detain
them or to withhold release thereof.
(2) Exercise by the Comptroller of Customs of the powers
conferred upon him with regards to counterfeit or pirated goods
shall not render him liable towards the persons involved in the
operations referred to in article 4, in the event of their suffering
loss or damage as a result of their action.
Abuse of 
procedures.
10. In proceedings related to the provisions of this Act the
Court shall be entitled to order the party at whose request measures
were taken under this 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 to
such abuse. Such compensation may also include compensation for
legal and judicial costs and fees incurred. 
Offences and 
penalties. 
11.  (1) If any person shall import or cause to be imported any
goods infringing an intellectual property right, such person shall be
liable for every such offence to a fine  (multa)  equivalent to double
the value of such goods.
Cap. 9.
(2)  All proceedings under this article shall be taken before the
Court of Magistrates and shall be in accordance with the provisions
of the Criminal Code regulating the procedure before the said Court
or a Court of Criminal Judicature and the award and execution of
the punishments thereby imposed.
Cap. 9.
Attorney General shall always have a right of appeal to the Court of
Criminal Appeal from any judgement given by the Court of
Magistrates in respect of criminal proceedings ensuing out of this
Act.
