IP Law Galli
Headed and founded by Avv. Prof. Cesare Galli, Full Professor of IP Law at the Faculty of Law of the University of Parma and a former partner of Vanzetti e Associati, the firm operates mainly in the field of Intellectual Property law (Patents - with a specific experience in Biotech Patents and in Cross-Border Litigations -, Trademarks and Domain Names, Unfair Competition, Advertising, Licensing, Copyright and Related Rights), even if it works also in the fields of General Commercial law and Competition/Anti-trust.Show more
Following the implementation of the EU Trademark Directive in February 2019, there has been much debate in Italy over how to manage and choose between collective marks, individual multi-use marks and certification marks. While the new IP regime offers new opportunities, it also requires a careful review of existing regulations and a case-by-case verification of whether a collective mark can be maintained or whether it must be transformed into a certification mark.
Industrial property lawyers in Italy have been given cause for reflection following a recent European Court of Justice decision which was expected to clarify whether the legislatures of EU member states can grant copyright protection for designs subject to additional requirements to those required for all other copyrighted works. This issue is of particular importance in Italy, as copyright protection is granted to designs on the condition that they have 'artistic value', as assessed by the courts, as well as a creative aspect.
The Supreme Court of Cassation recently reversed a Milan Court of Appeal ruling on patent limitation. The Supreme Court of Cassation found that although the Milan Court of Appeal had held the patent at issue to be valid, it had not granted the patentee's claims for infringement because the patent had been subject to a limitation procedure and the acts of infringement had been carried out before the application for limitation had been filed.
Legislative Decree 15/2019, which implements the EU Trademarks Directive, entered into force on 23 March 2019. The decree's main innovations include the reinforcement of trademark protection (in particular, the possibility of using cross-border measures and reacting against certain preparatory acts of counterfeiting has been extended to transported goods) and the removal of the anachronistic requirement of graphic representation for the registration of non-conventional trademarks.
The so-called 'Growth Decree' has made provision for IP rights, particularly by introducing new regulations dedicated to 'Italian-sounding terms'. Specifically, the new regulations concern the adoption by foreign manufacturers of distinctive signs that evoke Italy and, more generally, trademarks linked to Italian territory. The adoption of such marks is now an act of piracy and considered substantially equal to counterfeiting.
The so-called 'Growth Decree' includes a rule which allows an Italian patent application to be filed based on an international patent application filed under the Patent Cooperation Treaty. The adoption of this provision offers companies a cheaper alternative where the potential exploitation of an invention does not justify the investment required to obtain a European patent. The provision responds to a pressing practical need and is a welcome change.
The government recently adopted provisions to coordinate national legislation with the EU Unitary Patent Regulation and the Unified Patent Court (UPC) Agreement. Italy has chosen a proactive approach to the UPC system, aligning its national law with the system's substantive rules in all respects.
The Court of Milan Companies and IP Specialised Division recently found three companies guilty of infringing a patent owned by Saima Sicurezza. The patent was held to be valid based on claims that the owner had made during the course of the proceedings under an application for limitation under Article 79 of the Industrial Property Code. This decision further aligns the Italian legal system with its EU counterpart and confirms Italian judges' attention to detail and reliability in patent cases.
The doctrine of equivalents, which forms the basis of the patent system and is codified in the original version of the Protocol on the Interpretation of Article 69 of the European Patent Convention, is fundamental for achieving a balance between the rights of patent owners and those of the market. In order to strike a balance between these different interests, equivalence must be determined based on what a patent owner has chosen to protect.
The Court of Brescia's Company and IP Specialised Division recently issued two landmark decisions that enhance the protection of trade secrets in Italy. The decisions coincide with Italy's implementation of the EU Trade Secrets Directive and confirm the high level of protection afforded to trade secrets, which are considered to be a form of intellectual property and benefit from protection under the EU IP Rights Enforcement Directive.
Lighting management systems represent both technical and legal challenges. Before disclosing a new creation, the relevant parties must assess the IP protection that is available and act accordingly. Companies that produce patentable inventions are advised to consult experts who can evaluate the best strategies to ensure that their innovation exploits its competitive advantage without being open to immediate and legitimate imitation by competitors.
The European Union Intellectual Property Office General Court recently dismissed an appeal against the revocation of the EU figurative trademark LA MAFIA SE SIENTA A LA MESA ('the Mafia takes a seat at the table'), in which 'La Mafia' was the dominant element. The trademark was deemed to be "contrary to public policy and to accepted principles of morality, since the word element 'Mafia' referred to a criminal organisation".
Italian case law on trademarks deemed contrary to public order and accepted principles of morality is fully consistent with EU case law. Two rulings by the Specialised IP Division of the Court of Milan are of particular note in this regard. It is clear that, for both the Italian case law and scholars, the criterion of public perception must be applied in the same way in order to assess the validity of a mark and verify whether other signs interfere with it.
The government recently submitted to Parliament the text of a draft legislative decree to implement the EU Directive on Trade Secrets. The main changes proposed include the alignment of domestic rules on trade secrets with international standards; the prohibition of trade in goods whose design, features, function, production or marketing significantly benefit from unlawfully obtained trade secrets; and the introduction of a regulation to protect the confidentiality of trade secrets in the course of judicial proceedings.
The European Delegation Act 2016 to 2017 contains significant changes concerning IP rights, including the potential destabilisation of a system that has been acknowledged unanimously as satisfactory. Other changes concern the implementation of an EU directive in Italy in order to approximate the trademark laws of EU member states and the amendment of the Industrial Property Code in order to bring it into line with the EU rules on the unitary patent and the Unified Patent Court.
Lawmakers recently intervened in matters concerning collecting societies and copyright through the introduction of Decree-Law 148/2017. This new regulatory amendment further weakens the unjustified monopoly of the Italian copyright collecting agency. However, a number of issues concerning the new wording of Article 180 of the Copyright Law remain, which could result in the retention of inadmissible limitations contrary to EU law and the liberalisation of the market being deferred once again.
With developments in three-dimensional printing allowing for the manufacture of building components, the protection of industrial designs and architecture has become of crucial importance for architects, designers and buyers – both private and public. A number of matters should be considered in this regard, including copyright, the reproduction of industrial designs and architectural works and the moral rights of authors.
Trademarks were recently removed from the list of IP rights that can benefit from the package of fiscal incentives known as the 'Patent Box'. However, a transitional system has been established for companies that have already exercised the Patent Box's three-year incentive option. This decision strengthens the credibility and therefore the attractiveness of these incentives for investors, but the onerous accounting requirements that must be met for a company to avail of these incentives remain in place.
A Court of Catania IP Specialised Division decision ended the infringing activities of a former official dealer at the expense of the prestigious global trademark BVLGARI. The decision is noteworthy as it granted protection against the illegal use of Bulgari's trademarks by the former official dealer of its jewels and expressly acknowledged the legitimacy of the selective dealership system implemented by Bulgari.
The Court of Rome's IP and Company Specialised Division recently issued a short and concise order which confirmed German-based multinational Vorwerk's constitutional right to defence in the form of customs protection against IP infringement activities undertaken in East Asia. The decision is a result of the balanced and efficient IP rights legal framework being developed in Italy, particularly with regard to the need for adequate legal means to protect such rights from the influx of imported copycats.
IP rights and competition rules have been affected by the recent changes to legislation on cinematic works. Law 220/2016 concerning cinematic and audiovisual works establishes special rules for works that benefit from state grants, as these works must be made available to the Italian Film Library and the Ministry of Cultural Heritage for non-profit purposes. The law also introduces protection against unfair competition in the film distribution field.
With its ratification of the agreement establishing the Unified Patent Court, Italy could play an active role in negotiations on the future of the court and the unitary patent in the context of Brexit. The ratification law also modifies the Code of Industrial Property, adding a new rule on contributory infringement that will have a significant impact on rights protection – especially with regard to new technologies, such as three-dimensional printing.
Italian law provides a general rule for the calculation of damages in IP matters, under which a rights holder can receive a sum corresponding to the greater of the infringer's profits or the rights holder's lost profits. The courts have progressively interpreted this rule as being based on full compensation for real damages suffered by the rights holder, as well as on the deterrent effect of further infringing activities.
The Supreme Court recently issued a decision in the ongoing saga between renowned stylist Elio Fiorucci and the company that he founded. The decision examined Fiorucci's rights to register his name as a trademark after leaving the company – which had registered his name as a trademark with his agreement – and the potential deceptiveness of a trademarked name when the relationship between the person and the trademark owner has ended.
A recent decision by the IP and Corporate Specialised Division of the Court of Milan addressed the relationship between the likelihood of confusion and consumers' perception of the different messages linked to the trademarks at issue, and between the limitation by coexistence and trademark acquiescence doctrines. The court found that the relevant customers could understand the different expressive meanings of the trademarks.
Italy is working on implementing EU Directive 2015/2436/EC, aimed at harmonising the national rules on trademarks. Under the new rules the requirement that a trademark be capable of graphic representation has been eliminated; the rules for shape marks have been extended to colour marks; and a new definition of the relationship between trademarks and appellations of origin has been introduced.
The Court of Milan's IP and Company Specialised Division recently rendered a landmark decision regarding trademark, software and trade secret violations as part of broader unfair competition activities which aimed to transfer the business of the Italian subsidiary of the multinational audit group Mazars to a competitor. The decision confirms the high level of protection afforded to IP rights in Italy.
A recent Florence Tax Court of Appeal decision established an important principle regarding the relevance of licence fees for IP rights when estimating the customs value of goods manufactured for a licensee by another party outside the European Union. The decision underlined the importance of drafting licence agreements correctly; parties should consider customs-related issues when drafting licence agreements.
The Court of Bologna (IP Specialised Division) recently issued a preliminary injunction prohibiting a hotel from using the business name Hotel Ink 124 and the domain name 'www.hotelink124.it', as they were confusingly similar with the registered trademark INC HOTEL. The court also placed an injunction on the use of links to the infringing domain name on other websites, thus requiring the infringer to remove all online references to the infringing mark.
The recently implemented Patent Box system makes it possible to derive significant fiscal benefits from the careful management of IP rights within a company group. The system reduces tax on income – particularly from licensing activity – and exempts from taxation capital gains deriving from the transfer of the IP rights that are reinvested into the development of similar rights.
Two important decisions on geographical indications (GIs) were recently issued that strengthen the protection of GIs in Italy. The corresponding Italian legislation has developed in a fragmentary manner, often through the adoption of special laws that relate to a specific context, but it has progressively acquired consistency and homogeneity in relation to international agreements and EU law.
Italy recently decided to endorse the European unitary patent. The decision will help significantly to keep the costs of patent registration and maintenance at a competitive level. Further, the enforcement strategies of patent owners will change when the unitary patent system enters into force, as will the defensive strategies of those suspected of counterfeiting.
In 2014 Italy was removed from the Office of the US Trade Representative Watch List, on which it had appeared since 1989. Its removal was mainly due to a new regulation addressing copyright piracy on the Internet. Following the introduction of this administrative remedy, and contrary to common belief, the Italian legislative instruments against IP infringement are quite efficient.
IP lawyers are facing problems and opportunities linked to the increasing popularity of three-dimensional (3D) printing technology in Italy, especially as it can be implemented at a low cost and through simple means. 3D printers permit the circulation of files that contain information suitable for the reproduction of many different types of object, which creates potential conflict for rights holders.
The Court of Milan recently issued an important decision concerning infringement of the copyright held by Flou in the shape of its well-known 'Nathalie' bed. The decision not only reaffirms the basic principles of Italian case law concerning the protection of industrial designs, including copyright protection, but also addresses the disputed interpretation of the transitional rule for works created before such protection was introduced.
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.