"They shall not pass": Maltese make a fake-trader cross

Cunningly disguised, the Maltese Customs officers could approach importers
of infringing goods without arousing any suspicions ...
Who needs the Court of Justice of the European Union to ponder over the question whether you can seize infringing goods in transit, when you've got the Maltese courts to rely on?  The IPKat has learned how, last Thursday, the Maltese courts handed down a decision in a cross-border seizure case (regarding trade marked pharmaceuticals) against the defendant.  What were the facts?  It seems that the defendant was transporting the goods between India and Libya, and therefore between non-EU member states. The defendant argued that goods were not destined for local market and did not therefore infringe any trade mark right in Malta.  After all, if there is going to be an infringement, there has to be some use in the course of commerce in that country, and it is well known that external transit does not amount to use in the course of trade.  In other words, the defendant raised all arguments as per Montex and a whole fleet of other ECJ and UK case law (as cited and applied by Mr Justice Kitchin in Nokia).

However, in a judgment delivered a week or two after the AG’s opinion on Nokia was issued, the Maltese judge stated that the interpretation of whether the goods are infringing or not could be assessed by examining the Cross Borders Measures legislation, and need not be examined in the light of the Trade Marks Act (and Regulation). He said that the Cross Borders Measures legislation was a stand-alone piece of legislation, which did not require an interpretation of trade mark infringement in order to be operative.

Thank you, Jeanine Rizzo (Associate, Fenech & Fenech Advocates), for this fascinating news.  Jeanine has offered some tasty chunks of translated judgment which the Kats excitedly await.

How to make a Maltese Cross here, here, here, here
How to make a Venetian Blind here
How to make a Swiss Roll here
"They shall not pass": Maltese make a fake-trader cross "They shall not pass": Maltese make a fake-trader cross Reviewed by Jeremy on Tuesday, March 01, 2011 Rating: 5


  1. This is not a first for the Maltese courts, rights holders have been routinely successfully getting judgment on in transit consignments in Malta for some time.

  2. Interesting news. The only case from that region which I hitherto knew about was that of the counterfeit Maltese Falcon. ;-)

  3. Could it be that the what the Maltese court has held is derived from better legislation? Who knows, maybe the once colony has spurned wiser legislators than its former glorious ruler?
    Cannot wait for a contextual translation of the entire judgement, as 'chunks' would not quench the thirst for truth. And by the way, I understand we are dealing with counterfeit medicine here not a couple of 'fake' but not counterfeit NOKIAs.
    Just a little bit sceptic....

  4. Fenech is the Maltese for rabbit. The most popular meat on the island.

  5. Hmm still no full or bits translation! I am tempted to ask some acquaintances from the practice to do this for us, unless Ms Rizzo obliges.

    .... Still more sceptic


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