The applicability and potential adoption of article 11 of EC regulation 1383 of 2003 into Maltese intellectual property rights cross-border measures legislation

Abstract

Enforcement of Intellectual Property Rights (IPRs) is a very dynamic matter, since it is closely related to global economic and trade development coupled with the evolution of International treaties, European Union (EU) legal and economic agendas, and national courts and European Court of Justice (ECJ) rulings. The issue became of interest to the author immediately upon being assigned to the IPR Enforcement Unit within the Malta Customs Division in 2008, obtaining first hand insight into both the development of regulations and case-law, and the changing trends of illicit trade. An overview of what constitutes Intellectual Property (IP) and the socio-economic impacts of counterfeiting introduces this essay, which follows with a retrospective indication of the history of IP treaties and legislation at global, EU and National levels. This essay mainly concerns the applicability and adoption into Maltese legislation of a simplified, extra judicial procedure available in EU regulation 1383 of 2003 (OJ L 196, 2.8.2003 pp.7-14), which due to the disagreeing positions of existing Member States (MS) at the time of its proposal, remained elective. Those states opposing the simplified procedure's introduction were mainly concerned with its compatibility with their National Constitutional law. The interviewed official from the Attorney General's office observes no such incompatibilities with the Constitution of Malta. Since the enlargement of the EU in 2004 most of the new MS as well as many of the former, including some of those which had originally opposed, have adopted the simplified procedure, albeit to varying degrees and employing dissimilar methods and timeframes. An initial hypothesis that there may be a relation between the availability of the simplified procedure and the number of registered cases is discredited. Past ECJ rulings have attracted different interpretations by MS' national courts, at times proving to be a challenge for customs authorities and right-holders to find comfort in the regulation. Due to pending ECJ pronouncements in respect of recent UK and Belgian court decisions, this essay is constrained to conclude in a conservative approach. In general, evaluating other Member States' approach and the views of those consulted, one could conclude that nothing should obstruct the implementation of the simplified procedure, albeit with certain reservations which shall be explained. Eventually the simplified procedure, if implemented would simply provide an additional legal instrument which does not preclude any of the present available options, and which predominantly benefit the right-holders. Since right-holders are counselled by professional legal practitioners, it is to be expected that they are aware of their legal responsibilities and possible consequences when opting for the simplified alternative.