From the bank: Forged in the Freeport
The brand of a single product or service can be defined as the words, phrases, symbols, designs or a combination of such that distinguish and communicate the differences between one product and another.
A trademark is a unique element that directs the consumer to a specific product or service, which helps to differentiate between similar products and identify the difference between them while simplifying the consumer’s choice of what they really want. In most cases, an identifiable trademark also allows you to develop trust between the person offering the product / service and the consumer based on the good reputation of the product / service.
Trademark protection is territorial in scope. The protection granted by a Maltese trademark is limited to the territorial boundaries of Malta; however, European trademarks also exist, and they provide protection through a single unitary trademark in all European countries.
The concept of unregistered trademark rights is also present under Maltese law and stems from general principles of Maltese law in the Commercial Code. In this regard, the Commercial Code provides that regardless of whether a distinctive name, trademark or device has been registered as a trademark under the Trademark Act, traders may not use any distinctive name, trademark or device. capable of causing confusion with any other name, mark or other distinguishing device legally used by others.
Consequently, its primary trademark rights are established by use. Trademark registration allows for greater resilience to the trademark used to identify his / her trademark for an initial renewable period of 10 years.
At their core, trademark rights prevent unfair competition between traders and misleading consumers when they come across two or more products or services that appear identical or can easily be associated together. Trademark rights also prevent producers of counterfeit goods from gaining an unfair advantage in trade, which could be detrimental to the reputation of the EU’s ‘original’ distinctive trademark.
EU trade mark proprietors are entitled to prevent all third parties from using, in the course of trade, signs which are identical with or similar to the EU trade mark, in respect of goods or services which they are identical to theirs. This applies in the absence of authorization by the owners to such third parties.
Fakes, or ‘dupes’, are considered to be infringing intellectual property rights in Malta. These include goods (and their packaging) that have a trademark that is identical to a validly registered trademark in respect of the same type of goods. Such goods are prohibited from entering Malta, such as exporting, re-exporting, releasing for circulation and placing them in a free zone or free warehouse of goods.
The First Chamber, the Civil Court and the Court of Appeal are the competent courts in Malta for the protection of intellectual property rights. On 11 May, the First Chamber, Civil Court, presided over by Judge Mark Chetcuti, delivered two judgments relating to this subject; which has case number 1019/2020 on Nike dupe shoes and case number 990/2021 on the Adidas brand.
At their core, trademark rights prevent unfair competition between traders and misleading consumers.
In both lawsuits involving the Adidas and Nike trademarks, the applicant companies sought a court statement stating that the goods held in customs were ‘counterfeit’ and were therefore in breach of both local and Community law. EU.
With regard to case number 990/2021, in its judgments, the court stated that the applicant companies were, inter alia, owners of the trade marks known as ‘three stripes device’, ‘three stripes device on footwear’. , ‘trefoil device’, ‘adidas’ and ‘ADIDAS’, whose brands appear on various products, including shoes, sandals, flip-flops, clothing and caps. Such marks had been registered as EU trade marks with their own distinctive numbers.
In addition, it turned out that back in August 2021, customs officials at the Freeport in Marsaxlokk had found a total of 7,752 pairs of shoes, unloaded by the Yantian Express, which raised suspicion about the authenticity of the products. The suspected products were indeed found to be counterfeit after being tested.
As a result of these findings, the court ordered the destruction of the goods within 90 days from the date of the judgment, at the expense of the shipper, and without any compensation due to the same defendant for the same destruction. .
Similarly, in case number 1019/2021, the plaintiff Nike Innovatove CV proved sufficiently that it was the owner of Nike and other trade marks such as ‘Swoosh Design’ used on various products by the plaintiff company. and such trademarks had been registered as EU trademarks.
The court found that on 17 May 2021, a total of 2,400 pairs of Nike shoe dupes had been unloaded at the Marsaxlokk Freeport, which were also found to be false following tests carried out by a representative of the plaintiff company. As in the Adidas case, the court also ordered the destruction of the shoes within 90 days of the date of the judgment at the expense of the shipper, which is the defendant company.
Despite the claim made by the plaintiffs in both Adidas and Nike cases for the court to declare any other remedy in terms of law in favor of the plaintiffs, such remedies were not deepened and the court subsequently abstained. from gaining more knowledge of such. claims in the two respective judgments.
Rebecca Mercieca is associated with Azzopardi, Borg & Associates Advocates.
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