The impact and effects of EU Directive 2015/2436 on the legal framework in Malta with regard to counterfeit goods in transit

Abstract

European trademark law underwent a significant overhaul in December 2015 with the enactment of Directive 2015/2436 and Regulation 2015/2424. This overhaul was not conceived overnight but was the product of several inter-related factors, such as international agreements, delegations at EU institutional level and compelling decisions taken at CJEU level and by national courts, amongst others. During deliberation at EU institutional level, Member States had contradictory opinions, in particular on Article 10(4) of the Directive which granted a remedy to rightholders against counterfeiters in the context of goods in transit. Notwithstanding this, a balance was reached which safeguarded both international trade and rightholders, such that rightholders are now able to legitimately impede transiting goods that infringe their IPRs if they can lawfully prevent the marketing of such goods in the country of destination. However, Maltese law was ahead of its time in the sense that even prior to the reform rightholders were granted a remedy in a transit situation on the basis of Chapter 414 of the Laws of Malta, which introduced the concept of extraterritoriality of trademark rights in domestic law. This therefore begs the question, did the reform really change anything within the context of goods in transit in Maltese law? The author finds that even though the reform was not as essential to Malta as it was to other Member States, it still affected Maltese law such that the remedy provided by our new Trademarks Act is now streamlined across the EU. However, even though the reform provided an adequate framework that applies to Malta, Cap. 414 retains its importance insofar as it is interpreted in light of EU law and therefore Maltese law in the context of goods in transit remains truly unique.