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.