Holders of intellectual property rights and those authorised to use intellectual property rights, particularly those having a licence of such rights are among persons entitled to avail themselves of the measures, procedures and remedies provided by the Enforcement of Intellectual property rights (regulation) Act, a court has ruled.
Mr Justice Ian Spiteri Bailey issued the decision on the basis of Clause 8 of Chapter 488 of the Laws of Malta following an application by a company that claimed that it held intellectual property rights over computer software.
He explained that persons who claim to enjoy intellectual property rights and who seek judicial remedies against others allegedly infringing their rights must hold reasonable evidence demonstrating that they are the right holders and that their rights are either being infringed by a third party or in imminent danger of being so.
Such persons may request the court to issue a decree , against the alleged infringer of an intellectual property right, intended to prevent any imminent infringement, subject, where appropriate, to a recurring penalty payment or compensation to the rights holder.
An interlocutory injunction may also be issued against an intermediary whose services are being used by a third party to infringe an intellectual property right.
Additionally, rights holders may also request the court to order the seizure of goods suspected of infringing an intellectual property right.
On a commercial scale, in cases where the applicant demonstrates the existence of circumstances likely to endanger the recovery of damages, the court may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of the same infringer’s bank accounts and other assets, the judge explained.
The case stemmed from an application filed by Egames Bond Limited, a Maltese company, against the American company, ‘Computools LLC’ and Swedish ‘OneSet Plan AB’.
The Maltese company asked the First Hall of the Civil Court to prohibit the defendants from breaching its intellectual property rights by the distribution and sale of its works, including computer software.
Egames Bond Limited explained that it had engaged Computools LLC to develop a software named ‘GoPlany’ and to provide consultancy consultation. They further agreed that Egames Bond Limited was the sole and exclusive intellectual property owner of the computer software which had been developed for it by Computools.
Egames Bond Limited said it paid Computools €132, 756.49 as part-payment for the software.
In August 2022, Egames Bond Limited was informed by Computools’s representative that the agreement had been unilaterally terminated and that there had been fresh negotiations with a third party, One Set Plan AB.
Egames was also informed that despite its payment of €132,756.49, One Set Plan AB was to continue making payments to Computools for the further development of the computer software.
The Maltese company argued before the court that the termination of the agreement was abusive and in breach of the same agreement.
It added that the Swedish entity was portraying itself as the owner of the software“GoPlany” and that it was offering it for sale to third parties. One Set PlanAB had even created a youtube channel with tutorials explaining how the software worked for those persons who purchased it.
The court declared that it was satisfied that the requisites required by law for it to accede to Egames’s request had been met.
The court further acknowledged that delays in such a fast-moving and delicate market caused huge losses to the detriment of the applicant company, which losses may not be remedied and it therefore acceded to the application to stop the respondent companies from using the software, even though the Maltese curators appointed to represent the respondents stated that they were not informed of the facts of the case.
The court however clarified that it was not in any way expressing itself on the merits or pretensions of the applicant, and it was only temporarily prohibiting the respondent companies from using the work forming the disputed software for distribution or sale. This order was delivered on pain of ‘reasonable penalties’ by those breaching the court order.
This decree was delivered by the court in chambers on the 3rd of January 2023, and the court also authorised the applicant company to notify the respondents by courier.
Dr Rebecca Mercieca is a Senior Associate at Azzopardi Borg and Associates, Advocates.