Every EU State must apply directives in conformity with the individual EU member state’s law

When the Maltese Parliament transposes a Directive in the Enforcement of Intellectual Property Rights (Regulation) Act, its application must be in conformity with the Maltese law. This was held by Mr Justice Mark Chetcuti on 26 June, 2017 in Dr Luigi Sansone as special mandatory of United States Polo Association -v- Corporate Trading Limited.

The applicant company, United States Polo Association, asked the Court to apply Articles 5, 6, and 8 of the Enforcement of Intellectual Property Rights (Regulation) Act, after it was found that the defendant company, Corporate Trading Limited, was selling original clothing intended for Turkey, but which were imported into an EU country.  This breached the trade mark property rights of the US company since it did not authorise the defendant company to import these products to Malta to be sold from their shop. The plaintiff asked the defendant company to produce the importation documents from Turkey.

The Court commented that Articles 5 and 6 of the Enforcement of Intellectual Property Rights (Regulation) Act show that the applicable measures are intended to preserve the evidence on the merits of the case. In a previous judgement Kind.com Ltd v Dr Louise Cassar Pullicino of 18 April, 2016 the Court held that Article 6 speaks of preservation of evidence even before the action is instituted. The Article of law allows the preservation of products which have allegedly infringed intellectual property laws.

In fact Articles 5 and 6 read:

“5. (1) Any person who is entitled to avail himself of the provisions of this Act may file an application in the competent Court requesting a Court order to the effect that evidence which is in the control of an opposing party be presented in Court by the opposing party, subject to the protection of confidential information:

Provided that for a person to be entitled to avail himself of the provisions of this article he shall, together with the application, file reasonably available evidence sufficient to support his claims.

For this purpose a reasonable sample of a substantial number of copies of a work or any other protected object shall be considered to constitute reasonable evidence.

6. (1) The competent Court may, even before the commencement of proceedings on the merits of the case, upon an application by a person who has filed reasonably available evidence to support his claim that his intellectual property right has been infringed or is about to be infringed, order such prompt and effective provisional measures as it considers appropriate to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information. Such measures may include the detailed description, with or without the taking of samples or the physical seizure of the infringing goods and, in appropriate cases, the materials and implements used in the production and, or distribution of the said goods and the documents relating thereto. The competent Court may also, if it considers it necessary, order that such measures be taken without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the rightholders or where the Court considers that there is an evident risk of the evidence being destroyed.

(2) When measures to preserve evidence are adopted without the other party having been heard, the parties affected shall be given notice without delay after the execution of the measures. A review, including a right to be heard by the Court, shall take place upon request by application of any of the parties affected with a

view to deciding, within a reasonable period after the notification of the measures, whether the measures shall be modified, revoked or confirmed.”

These articles are derived from Directive 2004/48.  The Commission staff working document analysis discussed the application of the Directive set a number of obligations on the member states on gathering evidence aimed at producing them at a later stage in Court.

In fact, this is based on the so-called “Mereva injunction”, which is a temporary injunction that freezes the assets of a party pending further order or final resolution by the Court.

Therefore, the Court is being asked whether the applicant company has a right to file a claim on the basis of Article 5 before the Court proceedings commence.  However, the Court commented that Article 5 does not give a right for its application before the institution of the proceedings.  Article 5 mentions “collection of evidence” and in the Maltese judicial system collection of evidence takes place during proceedings.

Then Article 6 makes reference to the Court giving permission to collect evidence aimed at preserving that evidence, before the merits of the case are held. This is shown in Article 5. Commentators of this Directive have held that the application of the Directive must take place in the framework of the law applicable in individual EU member states.  That Court did not uphold the request made in terms of Article 5.

As regards the claim based on Article 8, the Court held that there was enough evidence to show that the products in question were intended to be sold outside the EU. The representative of the applicant company told the Court that he was unaware that a shop had opened to sell this and did not give its consent. The defendant company did not provide any evidence or make any submissions. The tag on the products shows that they are coming from Romania, an EU member state.  However the Court held that this does not prove much as the tag also states that the products were manufactured in Turkey. No documentary evidence was provided to show from where they were imported.

The Court moved to order that the shop provisionally is not to operate using the brand US Polo Association Malta.

Dr Malcolm Mifsud, Partner, Mifsud & Mifsud Advocates