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Professor Cesare Galli Senior Partner IP Law Galli - Lawyer biography - International Law Office

International Law Office

Cesare Galli

Professor Cesare Galli

Published updates

Intellectual Property

The Court of Rome has held that a trademark consisting of the words 'facce da rugby' ('faces of rugby'), together with a series of small squares containing portraits of rugby players, lacked distinctiveness, even though its component elements were neither generic nor descriptive. The decision seems to indicate that, with regard to distinctiveness, Italian case law is now fully aligned with that of the European Court of Justice.

The Court of Milan recently issued two important decisions concerning the validity of supplementary protection certificates (SPCs) granted for the same patented invention. Contrary to a previous decision, in these cases the court cancelled the SPC for a drug whose active ingredient was a combination of telmisartan (by itself covered under a previous SPC that had expired) and hydrochlorothiazide.

The Court of Milan recently issued a landmark decision in a case concerning the right of a fashion designer to continue using his name as a trademark after leaving the company that he founded and that still holds the rights to both the trademarks containing the designer's name and the company name. The case concerned well-known fashion designer Alviero Martini, creator of the famous 'map' print.

New effective tools have become available to IP rights holders that have been the victims of pirate websites offering copies of original products or fake copyright works, often at rock-bottom prices. The antitrust and telecommunications authorities have recently taken the lead in this field, closing down hundreds of clone websites, while other similar measures are following at a fast pace.

The Milan Court of Appeal has issued a landmark decision in which it ordered the revocation for non-use of the famous LAMBRETTA trademark for motorcycles. The decision seems to take the view that 'reputation' is not merely an abstract element that can be used and marketed independently; rather, reputation is a quality attached to a trademark, which needs to be valid and used on the market (ie, not expired).

One of the most debated topics of a recent IP law conference was the parodistic use of a trademark for both identical and unrelated products. Italian scholars have found that parody falls within the concepts of unfair advantage and damage to the reputation of a trademark. However, others have wondered whether the parody of a trademark could be based on a 'legitimate cause' that would exclude the unlawfulness of such use.

The Senate has adopted a report confirming the government's commitment to implement the EU unitary patent system. While trade associations have overwhelmingly expressed their favour for joining the system, professional circles are torn on the issue. A recent conference organised by the Polytechnic University of Milan addressed the opponents' arguments while pointing out the numerous advantages of patent unification.

The Court of Milan recently upheld an injunction prohibiting the manufacture, marketing, offer for sale and advertising of more than 200 types of copycat product (eg, tables and chairs) in the biggest case of unfair competition for imitation and infringement of unregistered shape trademarks ever heard in Italy. The case confirms the high level of protection granted in Italy to the shape of products, whether registered or not.

Contrary to common belief, the legislative instruments available in Italy against IP infringement are quite efficient. The legal framework for anti-counterfeiting enforcement has been reinforced through the Code of Industrial Property, which consolidated most of the principal IP laws; moreover, a draft bill aimed at strengthening the protection of IP rights against online infringement is under consideration by Parliament.

The Court of Turin has issued a decision protecting the Italian trademark ERACLIT against use of the trademark HERAKLITH – owned by an Austrian company, but never used as such in Italy – for similar products. The court thus implicitly applied settled EU case law which recognises that similar – or even identical – trademarks belonging to different parties might co-exist in different EU member states.

Within the space of a few months the Italian government has intervened twice on the sensitive issue of patent linkage for generic drugs, through two opposing decrees. The second decree, which provides that generic drugs cannot be reimbursed by the Italian National Health Service (thus making them uncompetitive) until the relevant patent or supplementary protection certificate expires, has been heavily criticised.

An order by the specialist IP division of the Court of Turin to withdraw infringing products from the market has additionally compelled the infringer to buy back the illicit products directly from stores at their retail price. This is the first time in Italy that an order of withdrawal has been extended in this manner, which is consistent with the judicial defence of IP rights under the EU Enforcement Directive.

The president of the IP Division of the Court of Milan has granted protection to a well-known bed design. The 'Nathalie' was created in 1978 and is considered a masterpiece of Italian design. The decision is important because it demonstrates that the Italian courts are no longer prejudiced against the possibility of protecting industrial designs with copyright.

The IP Division of the Court of Milan has issued a landmark decision concerning the protection in Italy of a Swiss protected denomination of origin, 'Emmentaler/Emmental Svizzero'. The court found that the denomination in question should be protected in Italy, although it was not registered at EU level, on the basis of the Stresa Convention 1951.

Dissatisfaction with recovery of damages is a perennial issue for IP stakeholders - and one which is not confined to Italy. However, significant improvements over the past decade have made it easier for rights holders to obtain appropriate damages in clear cases of counterfeiting.

The European Commission has brought an infraction procedure against Italy over a rule in the Code of Industrial Property whereby "the process for obtaining a marketing authorisation for a generic drug may start one year before the expiry of the supplementary patent protection related to the active pharmaceutical raw material". It is hoped that the intervention may lead to the repeal or clarification of the rule.

A decree from the Ministry of Economic Development has finally implemented new rules on opposition proceedings conducted by the Patent and Trademark Office. The effects of the new opposition proceedings on brand owners will be positive, although not revolutionary - brand owners in Italy are already in a strong position, partly due to increased efficiency in the civil enforcement of IP rights.

Contrary to common belief, the legislative instruments available in Italy to combat IP infringement are relatively efficient and were recently further improved. Rights holders have a range of measures at their disposal to protect their intellectual property, whether through criminal prosecution or civil enforcement.

A European Court of Justice decision appears to have resolved a 10-year controversy over Italy's interim rules on copyright protection for industrial designs. On the basis of the new rule in the Code of Industrial Property, all copy products manufactured in Italy after April 19 2006 (and those imported after April 19 2001) are pursuable as counterfeit.

The IP Division of the Court of Bari has found that Adidas's well-known three-stripe mark was infringed by the use of four stripes on similar products. The decision indicates that all of Italy's specialist IP divisions take a common stance in according enhanced protection to famous marks.

Italian case law has dealt extensively with the protection of designs. Decisions in the past few years have highlighted key issues, such as the relationship between validity and scope of protection, the importance of overall impression and the definition of the term 'informed user'. More recently, the reform of the Code of Industrial Property has introduced a significant change to the copyright protection available to designs.

A legislative decree which brings Article 239 of the Code of Industrial Property into line with the EU Design Directive is now in force. The article provides for a transitional regime for works created before copyright protection for industrial designs was introduced in April 2001. It has taken nine years and five legislative interventions for Italy to recognise that industrial designs created before 2001 benefit from full copyright protection.

Far-reaching changes to Italy's IP framework touch on many aspects of procedure. A new measure provides that the same judge is competent to allow protective measures, seizure and preliminary injunctions; it also clarifies that such measures may be jointly sought. Among other changes, the right to obtain an assessment of non-infringement will help to prevent wrongful uses of IP rights, particuarly invention patents.

The newly reformed Code of Industrial Property takes a practical approach to patent law. Together with procedural changes that aim to facilitate protection and encourage out-of-court dispute settlement, it promises to consolidate the positive results already achieved in recent Italian case law and will help to persuade both Italian and foreign enterprises that patenting pays in Italy.

The revised Code of Industrial Property aims to protect IP rights on the basis of market realities, balancing exclusivity and competition. This update considers the origins and scope of the reform. Among other things, new trademarks rules elevate public perception as the decisive factor - both in deciding whether a sign is protectable and in defining the limits of protection - and protect enterprises from new forms of infringement.

Under Italian law, parallel imports are generally considered legitimate if the goods come from an EU member state in which they have been marketed either by the rights holder or with its consent. Parallel importers can use an associated trademark in advertisements, provided that the limits indicated by EU case law are observed. However, original products may not be sold in a way that abuses the trademark's reputation.

Italy is seeking to tackle the issue of the geographical origin of products with two new rules: one relating to designations of origin, the other to the term 'made in Italy'. The protection of designations of origin is vital, but the legislature's approach contradicts the recent positive evolution of IP law in Italy.

A recent ruling by the Court of Rome recognizes the liability of hosting service providers - in this case, the video-sharing website YouTube - for the infringement of IP rights on the Internet. The court also outlined the issues to consider in determining whether an internet service provider is liable for infringement.

A number of key developments in the reform of Italy's IP framework, implemented in the course of 2009, are likely to remain influential - and in some cases controversial - throughout 2010 and beyond. Chief among these is a package of revisions to the Industrial Property Code.


Professor Cesare Galli