INTRODUCTION

The protection of intellectual property rights has been identified as one of the key issues for the strengthening of the internal market in the European Union and case law relating to this subject is becoming increasingly prolific. This trend is prevalent throughout the European Union (“EU”) and Malta is no exception. In actual fact, a thorough legislative framework and proper application of intellectual property laws by the Maltese courts, has proven key to establishing Malta as a jurisdiction in which IP rights are held through Maltese holding companies.

By way of example, in the case of King.com Limited (C42504) vs. Avukat Dottor Louis Cassar Pullicino noe. (First Hall Civil Court, 18 April 2016) the Maltese Court, acting as the European Union Trade Mark Court, entered into uncharted territory in clarifying the interaction between Council Regulation No. 207/2009 on the Community trade mark (the “Regulation”), Directive 2004/48 of 29 April 2004 on the enforcement of intellectual property rights (the “Enforcement Directive”) and national procedural laws in relation to the imposition of provisional, including protective measures. In particular, Article 103(1) of the aforementioned Regulation allows for European Union trade mark (“EUTM”) holders to apply for the same provisional, including protective measures available in a Member State in respect of a national trade mark.

In the fi rst instance, following the application by King.com Limited for the issuing of a warrant of prohibitory injunction to stop Team Lava LLC from using the “Candy” EUTMs (word marks and fi gurative marks), the Maltese Court was requested to decide whether or not to limit itself to the principles of Maltese procedural laws or whether there were additional principles, emanating from the Enforcement Directive, to be applied by the Court in determining whether there existed the requisite criteria for the imposition of the injunction.

The Court upheld the position advocated by the defendant and held that, when applying Article 103 of the Regulation, this being a provision of European law, utmost importance had to be paid to the Enforcement Directive's provisions since this was the proper instrument to be applied by the Court in giving effect to the measures found in the Regulation.