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.