1. “GOODS IN TRANSIT - THE MALTESE (MT) EXPERIENCE”
by Luigi A. Sansone
SALOMONE SANSONE

2. INTRODUCTION
Introduced into the Maltese StatuteBook on 29 February 2000, the Intellectual Property (Cross-Border Measures) Act, Cap. 414 Laws of Malta. This law is complimentary to – but separate from – the Trademarks Act.

3. Legal Basis Cap. 414 Article 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.
Cap. 414 Article 2.1(a)(i)
"goods infringing an intellectual property right" means: counterfeit goods, namely:
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;
NB: definition of “counterfeit goods” taken from TRIPS Agreement, Art 51, footnote 14(a)

4. LEGAL BASIS
When piloting the Bill which lead to the enactment of Cap. 414, our then Minister for Justice the Rt. Hon. Carm Mifsud Bonnici made it clear before MT Parliament that:-
“....this law will not be part of any other law but shall be separate and shall constitute the only law on the subject… .”
“By means of the Bill before us … Malta is providing an international guarantee that what is counterfeited outside of [this country] shall not find shelter here, even if a container laden with counterfeit merchandise is sent to our national freeport with the intent of moving it on en route to another country since, even in such an instance, the release of such goods shall be withheld. Therefore in light of all this one can say that the lock to the key into our country for this type of merchandise is completely sealed”.

5. The Results to date: In terms of NUMBER OF SUCCESSFUL COURT CASES
In terms of QUANTITY OF COUNTERFEIT GOODS CAPTURED IN TRANSIT
In terms of RESISTANCE TO “OUTSIDE PRESSURES”
In terms of an INSPIRATION TO LEGAL REFORM AT PAN-EU LEVEL

6. Successful Court CASES
500+ SINCE MALTA’S EU MEMBERSHIP
= an average of 40 lawsuits per annum, usually involving a 20ft or a 40ft container

7. QUANTITY OF COUNTERFEIT GOODS CAPTURED IN TRANSIT
Malta (smallest country in the EU by far), consistently ranking in the TOP 3 EU MEMBER STATES in terms of QUANTITY of counterfeit goods captured:
Ex: in 2012: MT 6.1M compared to DE 2.4M.
In 2014: MT 5.2M compared to DE 3.2M.

8. Counterfeit GOODS

9. RESISTANCE TO “OUTSIDE PRESSURES”
NOKIA/PHILIPS CJEU Preliminary Rulings sent shockwaves across the EU;
MT Courts continued to apply Cap. 414, on the basis of its autonomy and its compliance with GATT/TRIPS provisions, and in full respect of the notion of “legitimate” transit trade

10. INSPIRATION TO LEGAL REFORM AT PAN-EU LEVEL
The March 2013 Commission Proposal on Reform of EU law on the subject, was quasi identical to MT law on the subject in this context, both drawing from TRIPS Agreement, Art 51 footnote 14(a)

11. THE CURRENT POSITION
EUTM Art 9(4) already the subject of 40+ successful judgments for right holders since 23 March 2016 (less than a year ago)
CAP. 414 continues to work for right holders with locally- registered tms;
One eagerly awaits legislative reform to implement EU Directive 2015/2424 to bring Art. 10(4) thereof into the local statute book, on trademarks namely the Trademarks Act Cap

12. 84-85, MELITA STREET, VALLETTA
Thank you
SALOMONE SANSONE
84-85, MELITA STREET, VALLETTA
VLT1120, MALTA