A consignee is considered to be a legitimate respondent in intellectual property proceedings. This was outlined in LVMH Fragrance Brands vs Globtainer Logistique Algerie SARL decided by the Court of Appeal (Superior Jurisdiction) on 16th March 2023. President Giannino Caruana Demajo, Judge Tonio Mallia and Judge Anthony Ellul presided over the case.
By means of a court application, the plaintiff company declared that 23,436 aerosol cans which were being held by the Customs Authority in Malta following its decision to suspend the release of a container, contravene its intellectual property’s rights in relation to its trademarks registered in Malta. It alleged that the products were not genuine and original, and requested that the Customs Authority dispose of the said products at the expense of the defendant company, which was the consignee of the shipment.
In its sworn reply, the respondent stated that it was not to be considered as the legitimate respondent in the action because it only acted as a correspondent in Algeria of the non-vessel owning common Turkish carrier Anko Anadolu Konteyner, and was simply an intermediary. The importer of the shipment was EURL Merdhia Packaging which is listed as the notified party in the waybill presented by the plaintiff.
In its decision, the First Hall Civil Court stated that a consignee is a person to whom the merchandise is sent to and who secures the release of such cargo, while a notify party is a person who is notified that the merchandise has arrived but has no title over it. Since the defendants failed to contact the importer EURL Merdhia Packaging to become a joinder of the proceedings to respond to the allegations, the Court upheld the plaintiff’s claims and ordered the defendant company to pay the expenses.
The defendant company decided to appeal the judgement given by the First Hall, Civil Court on the grounds that it wrongfully interpreted the law and the evidence submitted by it. It said that it was not the consignee of this shipment and presented a copy of the Bill of Lading which indicated Aryumn Metal Tup Imalat San Dis Tic A.S. as the shipper and EURL Merdhia Packaging as the consignee. They presented an affidavit whereby Mr Nait Ibrahim Hassane declared that Globtainer Logistique Algerie SARL was listed as the consignee to permit it to collect the delivery orders from CMA CGM at the port of discharge, and that Anko Anodolu Container SA gave them instructions to mention Globtainer Logistique Algerie SARL as the consignee on the transport document. Therefore, they were not to be held responsible for the expenses to dispose of the cargo.
The Court of Appeal examined the documents and said that whilst the sea waybill identifies Globtainer Logistique Algerie SARL as the consignee, the insurance certificate shows EURL Merdhia Packaging as the consignee. An invoice also indicated EURL Merdhia Packaging as the importer of goods.
Article 4 of the Intellectual Property Rights (Cross-Border Measures) Act states that the entry into Malta, export or re-export, release for free circulation, temporary importation, placing in a free zone or free warehouse of goods found to be goods infringing an intellectual property right shall be prohibited.
The Court outlined that since the defendant is listed as a consignee on the waybill, it forms part of those persons involved in any of the operations outlined in Article 4. Therefore, the Customs Authority is obliged to give their name and address to the intellectual property rights’ holder to be able to institute proceedings in Court, where necessary.
The Court quoted Article 2(14) of EU Regulation 608/2013 on Customs Enforcement of Intellectual Property Rights which states that the ‘object holder’ is that person who has the physical control over the objects, in this case, the defendant company. Therefore, it decided that Globtainer Logistique Algerie SARL was deemed to be a legitimate respondent in the proceedings and confirmed this part of the judgement given by the First Hall Civil Court.
Nevertheless, The Court reformed the part of the judgement whereby the defendant company was ordered to pay for the expenses to dispose of the goods. It outlined that according to Article 8 of the Intellectual Property Rights (Cross-Border Measures) Act, it is the importer, exporter or the owner of the goods which must pay such expenses.
Av. Malcolm Mifsud
Partner
Mifsud & Mifsud Advocates
The article may also be accessed on Malta Today.
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