International Reports - More Updates

Jacobacci & Partners

20 Jun 2018
What’s mine is yours: employees’ economic rights under the Copyright Act

A recent case addressed an employee’s economic rights associated with software and databases created within the scope of his employment. The board held that the rights belong to the employer in the absence of an agreement to the contrary, pursuant to the Copyright Act. Full text

30 May 2018
General Court increases burden of proof for genuine use

The General Court has held that genuine use of a trademark can be proven only for sufficiently precise and narrowly claimed terms, rejecting a case citing ‘apparatus for the reproduction of sound and images’. In doing so, the court has placed a higher burden of proof on trademark owners. Full text

11 Apr 2018
Evidence of clear conflict required for declaratory judgment action

The Court of Milan recently decided that a non-specific reply by a patent owner to a request by a third party to provide written acknowledgement of non-infringement is an insufficient basis for instituting a court action for declaration of non-infringement. Full text

07 Mar 2018
Supreme Court rules on weak marks and likelihood of confusion

Italy’s highest court has confirmed that even minor modifications or additions can be sufficient for a later trademark to avoid likelihood of confusion with an earlier trademark that is considered weak. Full text

20 Dec 2017
File wrapper estoppel trumps infringement under doctrine of equivalents

The Court of Milan recently held that the text of a European patent application and the applicant’s actions during the prosecution history of the application limiting a claim to a compound’s specific salt form precluded a finding of infringement – including under the doctrine of equivalents – by other salt forms. Full text

06 Dec 2017
Lessons in unfair competition and misappropriation of confidential information

The Court of Milan recently held that the use of images that are highly similar to those of products shown in a competitor's catalogue constituted unfair competition, and that the use of non-identical technical drawings was insufficient to establish a claim of misappropriation of a competitor’s confidential information. Full text

15 Nov 2017
Revised EPO guidelines on computer-implemented inventions

The European Patent Office Guidelines 2017 recently entered into force. Like the previous edition, this year’s guidelines include substantial, extensive and comprehensive improvements with regard to guidance on the eligibility of computer-implemented inventions parts. Full text

08 Nov 2017
UIBM’s novel approach to finding sufficient spread between SPREAD and SPREAD

The Italian Patent and Trademark Office recently ruled that when two trademarks include the same word element but the graphic context is sufficiently different, a likelihood of confusion may not exist. Full text

11 Oct 2017
Supplementing your understanding of supplementary protection certificates

A recent finding of invalidity has raised the question of whether a supplementary protection certificate (SPC) application can refer to a third party’s first market authorisation in the absence of a specific contractual relationship between the SPC applicant and the first market authorisation owner. Full text

02 Aug 2017
Supreme Court recognises punitive damages

The Supreme Court of Cassation recently recognised for the first time that punitive damages may be applied in connection with civil liability under Italian law. The decision may allow Italian judges more leeway to grant increased damages in actions brought before Italian courts. Full text

12 Jul 2017
When reverse engineering is difficult, infringement of software trade secrets is confirmed

Confirming a judgment by the Court of Turin, a recent Court of Appeal decision provides useful guidance for the application of Articles 98 and 99 of the Industrial Property Code, which governs trade secret misappropriation. Full text

07 Jun 2017
Class 35: registering retail and wholesale services at the UIBM

Since 2016 the Italian Patent and Trademark Office (UIBM) has taken a harsh stance on registrations for ‘retail and wholesale services’ in Class 35. During this time, the UIBM has consistently refused to register applications directed to these services. Full text

03 May 2017
A tale of statues and camels: mass-produced items eligible for copyright protection

The Court of Cassation recently held, in a case involving porcelain statues manufactured and mass-marketed by Italian company Thun Spa, ruled that mass-produced items may include a creative, artistic element, and thus can be eligible for copyright protection. Full text

05 Apr 2017
CLINIQUE: reputation alone may not cure trademark's inherent weakness

In a recently published decision the Court of Cassation held that although the trademark CLINIQUE was well known in the European Union, its reputation was insufficient to overcome the weakness of the trademark and its inherent lack of distinctiveness. Full text

01 Mar 2017
Chemical intermediates: patentability and infringement under the doctrine of equivalents

The Italian Supreme Court has had the final word on a long-running dispute between Industriale Chimica and Bayer, holding that a chemical intermediate is not necessarily patentable, even if it is novel, inventive and provided in a stable form. Full text

11 Jan 2017
Patronymic trademarks in the fashion industry: what’s in a name?

In the fashion industry it is common to use and register the name of a designer as a trademark. But what happens when a designer assigns his or her company's IP assets, including trademarks associated with his or her own name, to a third party, and then continues using the name in new trademarks? Full text

07 Dec 2016
When employment contracts are silent: remuneration for employees' inventive activities

The Court of Cassation (Italy's highest court) recently issued a decision concerning whether a scientific director who contributed to an invention but whose employment contract did not specifically address remuneration for such activities was entitled to the payment of a fair premium. Full text

09 Nov 2016
The double identity of OSCAR: a trademark and a common term

The Supreme Court recently held that the trademark OSCAR was valid with respect to the film industry and thus gave its owner, the Academy of Motion Picture Arts and Sciences, exclusive rights in its use. However, the court also held that the trademark had become a common name in relation to other services – namely, teaching and performances in Class 41 of the Nice Classification. Full text

12 Oct 2016
Court of Cassation clarifies management of simultaneous validity and infringement proceedings

A recent Court of Cassation decision has affirmed the principle that when separate infringement and invalidity proceedings are pending simultaneously, the court managing the infringement action should stay those proceedings until conclusion of the validity action. Full text

10 Aug 2016
Claimed ranges and patent infringement under the doctrine of equivalents

In the recently published decision of Geratherm Medical AG v Gima SPA the Court of Milan ruled that patent protection for a numerical range of values cannot be extended under the doctrine of equivalents to cover a numerical value that falls even slightly outside that range. Full text

13 Jul 2016
Court of Milan considers claims of nullity and partial nullity against same mark

A Court of Milan decision ordered the partial nullity of a trademark, permitting the continued registration of the remainder of the mark. Although trademark litigation may not always be pretty, it might just save at least part of your trademark. Full text

08 Jun 2016
Court of Cassation rules on patent infringement by equivalence

A recent Court of Cassation decision has affirmed the principle that a variant of a patented invention that is not original over the patent (ie, does not exceed the technical skills of the skilled person) falls within the scope of the patent. Full text

04 May 2016
Reformulation of technical problem not permitted during litigation

A recent decision from the Court of Milan has confirmed the case law trend that the reformulation of a technical problem solved by a patented invention is inappropriate during legal proceedings. Full text

13 Apr 2016
Court rules stylised cowhide symbol can be freely used for leather goods

The Court of Milan has confirmed its partial previous decision declaring the nullity of the Italian collective mark consisting of a symbol portraying stylised animal skin. The mark was well known in Italy as 'vacchetta' ('cowhide') and was registered in Classes 16, 18, 21, 25 and 28, claiming goods made of leather in each class. Full text

09 Mar 2016
Foreign patent office decisions accepted as evidence of rights reinstatement

The Italian Board of Appeal recently held that the conclusions of foreign national patent offices are relevant evidence when evaluating whether a patent owner seeking the reinstatement of rights has demonstrated that its representative had adequate means to carry out the task entrusted to it. Full text

10 Feb 2016
Right to fair reward for employee inventor

A recent decision of the Court of Milan addressed the right to a fair reward which is available, in certain circumstances specified by patent law, to an employee working within the scope of his or her employment who contributes to an invention. Full text

13 Jan 2016
Appeal board confirms similarity of hairdressing products and services

In a recently published decision the Italian Board of Appeal confirmed that even if products and services are, by their nature, different, “hygienic and beauty care treatments to human beings and animals” in Class 44 with respect of “hair care products” in Class 3 can be found to be similar, taking into account all the relevant factors. Full text

02 Dec 2015
Wine and oil do not mix – except in trademark rulings

The Court of Cassation recently upheld a Milan Court of Appeal decision holding that, with respect to trademarks, wine and oil are similar goods. The decision is in line with past Italian jurisprudence, yet is inconsistent with both Office for Harmonisation in the Internal Market case law and the position of the Italian Trademark Office, which considers goods in Classes 29 and 33 to be dissimilar. Full text

11 Nov 2015
Sunstar redux: agent’s mistake no excuse for non-observance of renewal deadline

After 10 years of litigation the Court of Cassation recently ruled that an agent’s mistake does not excuse non-observance of a mandatory deadline for paying patent renewal fees. The court held that, in the absence of extraordinary circumstances, a patent owner is not free from the consequences of its agent's failure if it has not demonstrated that it monitored the execution of the tasks entrusted to the agent. Full text

07 Oct 2015
Reformulating patent claims: a re-introduction to new Article 79

In early 2015 the Court of Milan issued several decisions concerning the application of Article 79 of the Industrial Property Code, which was amended in 2010. In some of these cases the court addressed whether and under what conditions a patent holder may reformulate a set of claims contained in a granted patent. Full text

22 Jul 2015
Is a trademark consisting of two complex Chinese characters inherently distinctive?

A recent Italian Patent and Trademark Office decision to register a trademark consisting of two complex Chinese characters was based on the distinctiveness of two Chinese characters. However, this distinctiveness is questionable. Full text

01 Jul 2015
Misappropriation of trade secrets consisting of technical information

In a recent decision the Court of Turin held that when technical information meets all of the requirements for trade secret protection and reverse engineering is difficult, the burden of proof rests with the defendant to show that the technical information was acquired independently. Full text

10 Jun 2015
Revenge of the Pink Panther: stuffed animal toys can infringe 2D trademark

The Criminal Division of the Court of Cassation recently ruled in Metro-Goldwin-Mayer v Iervolino, holding that a three-dimensional reproduction of a two-dimensional trademark constituted trademark infringement. The ruling is expected to harmonise earlier conflicting decisions on this issue. Full text

13 May 2015
Admissibility of late-submitted invalidity grounds in patent litigation

The Court of Milan has held the Italian portion of a European patent invalid because the claims extended beyond the content of the original application as filed. This ground for invalidation was submitted after the deadline set for such submissions; however, the court concluded that new grounds which were not initially presented may be added under certain conditions. Full text

08 Apr 2015
Weak marks grown stronger: DIVANI & DIVANI trumps DIVINI & DIVANI

The Supreme Court recently ruled on the issue of secondary meaning. The judgment may lead to further developments on two key issues: the extent of the protection of weak signs, and the application of secondary meaning as a remedy to strengthen the distinctive character of such signs. Full text

11 Mar 2015
EU law concerning SPCs and interpretation of the SPC Regulation

The European Court of Justice has clarified whether certain active ingredients in medicinal products are eligible for supplementary protection certificate (SPC) protection. The court ruled that the relevant EU legislation contains no prohibition against obtaining an SPC for an active ingredient which is covered by a basic patent and which is covalently bound to another active ingredient in a medicinal product. Full text

04 Feb 2015
Interpretation of reciprocity of IP rights protection in Italy and San Marino

A recent official interpretation of the Convention of Friendship and Good Neighbourhood 1939 between Italy and San Marino concerning IP protection in the two states has concluded, among other things, that European patents should be validated separately in each country. Full text

17 Dec 2014
Patent opposition procedure in Italy – coming soon?

In a recent communication the Italian Patent and Trademark Office agreed to accept and consider third-party observations during the pendency of a patent application or during the process for obtaining supplementary protection certificates for medicinal products. The decision may augur the introduction of a true opposition procedure for patents in Italy. Full text

10 Dec 2014
Registered designs can now include slogans

A recent decision of the Italian Board of Appeal confirms that designs, including slogans, may be registered as ornamental models. The board explained that within the context of a design, slogans cannot be registered as such, but only as part of the particular graphic used by the slogan. This decision aligns Italian Patent and Trademark Office practice with that of the Office for Harmonisation in the Internal Market. Full text

19 Nov 2014
A rose by any other name does not necessarily cause confusion

In Viparis the Board of Appeal determined that when two trademarks include figurative elements and the earlier trademark also includes a distinctive verbal element, the two trademarks must be compared as a whole, without a separate analytical comparison of each of their components. Full text

08 Oct 2014
Defendant pokes holes in screen patent claims

The Court of Milan has denied injunctive relief under the doctrine of equivalents to a plaintiff which tried to base an infringement claim on subject matter explicitly disclaimed in the background section of its patent. The court emphasised that the patent specification represents the essential starting point for determining the correct weight to be ascribed to claimed features. Full text

23 Jul 2014
The deer makes the difference: autonomous protection for each part of composite mark

In a recently published decision the Supreme Court ruled that for a composite mark consisting of two autonomously distinctive elements, the imitation of one element amounts to an imitation of the trademark as a whole. The court recognised the risk of confusion between the composite marks of appellant Mast Jägermeister AG and appellee Zwack Unicum. Full text

09 Jul 2014
Hold your horses: overall impression governs evaluation of design infringement

A recent decision of the Court of Perugia addressed the criteria for evaluating infringement of a registered design. The judgment confirms the alignment of Italian design law with the consolidated Community design approach. Full text

07 May 2014
Software-based solutions for user-controlled presentation of information may be patentable

A recent decision of the Court of Turin addressed the patentability of software-based solutions involving the user-controlled presentation of information. The judgment encompassed two separate patentability issues and confirmed the alignment of Italian law with the consolidated European approach. Full text

02 Apr 2014
How strong is a fortress? Inconsistency over confusing similarity between trademarks

A recent Opposition Division decision held that the trademarks FORTEZZA (meaning 'fortress') and FORTENZA were not confusingly similar. The decision is inconsistent with other decisions in similar cases and confirms that the newly introduced opposition proceedings in Italy still come with the risk of highly unpredictable results. Full text

26 Mar 2014
Italian judicial proceedings stayed during EPO opposition proceedings

The Court of Turin recently stayed judicial proceedings involving a European patent while opposition proceedings were pending before the Opposition Division of the European Patent Office. This decision is a departure from prevailing legal opinion in Italy. Full text

08 Jan 2014
San Daniele: Italy fights for its ham

In a case involving the United Kingdom, Italy has confirmed that it will fight strenuously at the EU level in order to protect its geographical indication against infringements, particularly in the strategic food sector. Italian institutions are quite aggressive in protecting the sector against counterfeiting and infringement. Full text

18 Dec 2013
Court of Cassation rules on Galenic exception

The Court of Cassation recently ruled on the scope of the so-called 'Galenic exception', which allows pharmacists to prepare prescription medicinal products that may otherwise infringe a patent. The rationale of the Galenic exception is to balance the interest of the patent owner with the patient’s right to health. However, conditions and limits to the Galenic exception have been established. Full text

06 Nov 2013
It’s a family affair: FAMILYMART and FAMILY MART marks held "conceptually dissimilar"

The Opposition Division of the Italian Patent and Trademark Office has ruled that, although graphically and phonetically similar, the trademarks FAMILYMART and FAMILY MART were "conceptually dissimilar”. Nevertheless, the opponent succeeded as the trademarks were determined to be confusingly similar. However, the Opposition Division's conceptual analysis remains somewhat questionable. Full text

18 Sep 2013
Recent PTO decisions on complex marks: consistency optional

In April and May 2013 the Italian Patent and Trademark Office issued three separate decisions in opposition proceedings involving complex marks. All three decisions focused on a visual analysis of the conflicting trademarks, but the principles underlying the analyses were applied differently in each case. Trademark oppositions are still relatively new in Italy and further efforts are needed in order to provide consistency, and thus predictability, in this area of law. Full text

17 Jul 2013
Taking the German approach to Italian employees' inventions

A recently published decision by the Venice Court confirmed that the so-called "German formula" is the preferred method in Italy for calculating the reward to be paid by an employer for an invention created by an employee. This formula uses the reward to be paid, the value of the invention and a factor proportional to the employee’s contribution to the invention. Full text

19 Jun 2013
No monopoly for stylised cow skin symbol for leather goods

In its recent decision in Chaussures Eram SARL v Unic Servizi Srl the Court of Milan concluded that collective or certification trademark applications must, among other requirements, contain a novel element. As a consequence, it declared the nullity of the collective mark consisting of a symbol portraying stylised animal skin. Full text

29 May 2013
Pre-filing disclosure of invention to non-skilled audience may destroy novelty

According to a recently published decision of the Italian Board of Appeal, the level of skill and understanding of an audience to which a pre-filing disclosure is made has little or no bearing on whether the disclosure is novelty destroying. By holding that an analysis of the subjective profile is unnecessary, this new approach should simplify and speed up litigation involving pre-filing disclosures. Full text

01 May 2013
“Some use” of trademark by bankrupt company does not solve lack of use issue

In Jobo Limited v Riccadomus Group SRL the court determined that certain activities by a bankruptcy trustee did not constitute "use" of the bankrupt company’s trademark. Activities which were deemed insufficient included renewing the trademark and sending cease-and-desist letters to purported infringers. Full text

17 Apr 2013
Devices included in complex trademark may be independently protected – but the saga continues

After 20 years of litigation between Jägermeister and Zwack Unicum, the Court of Cassation has overturned two precedential decisions of the Court of Rome and the Rome Court of Appeal, arguing that the same trademark can be attacked separately for lack of novelty and non-use, and that devices included in a complex mark may be protected independently. But the saga is not over yet. Full text

06 Mar 2013
Late filing of Italian translation of European patent specifications allowed by Board of Appeal

A recent decision of the Italian Board of Appeal confirmed that it is possible to file the Italian translation of a European patent within two months of expiry of the corresponding term by paying a fee and filing a request under Article 192 of the IP Code. The decision is favourable to patent owners and criticises the strict policy of the Italian Patent and Trademark Office. Full text

12 Dec 2012
Italy creates database for certification trademarks

In order to comply with the EU Internal Market Services Directive, the Ministry of Economic Development has created an official database for Italian certification trademarks. Most of the signs included in the database are registered as Italian or Community trademarks, but some, particularly those regarding local ventures, are unregistered marks. Full text

07 Nov 2012
Patenting biotechnology inventions – peculiar procedural requirements

Article 170bis of the Industrial Property Code introduced procedural requirements on the filing of national patent applications in the biotechnology field. The majority of the biotechnological inventions provisions added to the code in 2010 mirror corresponding provisions of the relevant directive. However, certain provisions introduce new procedural requirements which are peculiar to Italian law. Full text

10 Oct 2012
Trademark aspects of the coffee capsule case: Nestlè v Vergnano

Sometimes there is nothing better than an Italian coffee conveniently dispensed from one of those colourful coffee capsules. Recently, the makers of two brands of capsules, Nestlè and Vergnano, brought several IP issues before the Court of Turin. Nestlè sought to prevent Vergnano from using its NESPRESSO trademark when marketing its own coffee capsules. Full text

19 Sep 2012
Patentability of intermediate chemical compounds – is it time for a change?

A 2011 decision of the Court of Turin addressed the controversial issue of the patentability of so-called "intermediate chemical products", following the Italian courts' general approach to prevent the patentability of such intermediates. It is hoped that the appeals court will reverse the Turin court's decision, thereby aligning Italy with many other jurisdictions throughout the world. Full text

18 Jul 2012
Is preliminary technical advice in IP disputes useful?

As part of a major amendment of the IP Code, Article 128 was completely redrafted to allow for the use of a procedure that was formerly applied only in civil law matters: the preliminary technical advice. The procedure represents a non-invasive investigative tool to discover another party's position with respect to commercial intentions and competitive fairness, allowing a rights holder to utilise this cost-effective process in cases where infringement is uncertain. Full text

20 Jun 2012
Principles of morality as absolute grounds for refusal

In Italy, principles of morality represent absolute grounds for refusal of a trademark registration. Trademarks including terms or devices regarded as being contrary to good morals are deemed to contravene public order, and cannot be registered. Two recent decisions provide examples of the interpretation of "good morals" as applied by the Italian Patent and Trademark Office Board of Appeal. Full text

23 May 2012
Issues arising from patent and trademark protection

Following San Marino's accession to the European Patent Convention in 2009, a key issue is whether, and if so to what extent, there is an interest in validating granted European patents in San Marino. In contrast, San Marino is not a member of the European Union and Community trademark registrations do not cover San Marino. Full text

09 May 2012
Preliminary declaration of non-infringement introduced – but with limitations

The Industrial Property Code now explicitly allows for a declaration of non-infringement in certain circumstances. Such a declaration could previously be issued only during the main judgment. A recent decision of the Court of Venice clarified the appropriate basis for such declaration by finding that a preliminary declaration of non-infringement is inadmissible if it is based only on a challenge to the validity of an IP right. Full text

11 Apr 2012
Copyright and industrial designs: the saga continues

The Italian provision granting copyright protection to works of industrial design has been amended five times in the past 11 years. Controversial provisions establishing a long grace period for infringers that commenced their activities before 2001 have been repeatedly amended under pressure from the European Commission. The most recent amendment has now extended the grace period for infringement to 13 years. Full text

07 Mar 2012
Re-establishment of rights and validation of European patents in Italy

A recent decision of the Board of Appeal of the Italian Patent and Trademark Office has introduced a more liberal interpretation of the re-establishment of rights following a missed deadline for filing an Italian translation of a European patent in connection with validation of the patent in Italy. Full text

15 Feb 2012
Establishing the Business Courts for intellectual property

In 2003 Italy set up specialised IP divisions at 12 Italian courts. Within the framework of a package of measures introduced to tackle the economic crisis, the new Italian government has now introduced the Business Courts, which will replace the specialised divisions and will also handle certain other matters. Full text

02 Nov 2011
Patent Office launches examination of national applications

The Italian Patent and Trademark Office has introduced examination proceedings for those national patent applications for which a search report and a preliminary patentability opinion has already been issued. The new examination stage on the merits of inventions is based on the results of the international search report and the written opinion annexed thereto. Full text

28 Sep 2011
Interpreting the provisions governing the registration of names as trademarks

In a recent decision the Grand Chamber of the Court of Justice of the European Union (CJEU) confirmed that the General Court had correctly interpreted Article 8(3) of the Italian Code of Industrial Property, which requires a party to give consent for his or her name to be registered as a Community trademark. The decision is a reminder that the CJEU examines only the application of procedural rules, and not the merits of a dispute. Full text

10 Aug 2011
Domain names: reform or revolution?

To date, private parties can register only second-level domains; they can decide which second-level domain they wish to register in association with a top-level domain selected in a pre-determined list approved by the Internet Corporation for Assigned Names and Numbers. All this will change in 2012, when individuals and companies will be admitted to file applications for new generic top-level domains. Full text

29 Jun 2011
Community trademarks in light of the Max Planck study

A study carried out by the Max Planck Institute for Intellectual Property and Competition Law and recently published by the European Commission may lead to amendments that will affect the Community trademark (CTM) system. Among the wide range of issues reviewed, some of the study's recommendations could lead to major changes in the protection of CTMs. Full text

13 Apr 2011
An overview of trademark oppositions

For many years Italy has lacked a trademark opposition procedure. Although efforts to introduce such a system have been ongoing for more than five years, implementation finally seems to be close. The forthcoming opposition procedure in Italy will be open immediately to all classes. Full text

23 Feb 2011
Trademark appeal court approves registration of Greek letter alpha

The European Trademark Court of Appeal (First Chamber) found the Greek letter alpha to be registrable as a trademark for goods in Class 33. The court considered that when faced with a word mark consisting of a Greek letter in an up-to-date font and without any graphic element, the principles applicable to word marks, rather than design marks, should be used. Full text

09 Feb 2011
Commissioned designs: an oral contract is not worth the paper it is not written on

The European Court of Justice recently issued a preliminary ruling concerning the interpretation of Articles 14(1) and 14(3) of the EU Community Designs Regulation. The court affirmed that Article 14(1) establishes that the right to the Community design vests in the designer, unless it has been assigned by way of contract. Full text

10 Nov 2010
Advocate general opines on scope of Community trademark court rulings

In a recent preliminary opinion, the advocate general considered that a prohibition originating from a national Community trademark court was effective throughout the entire European Union, as the Community trademark courts are considered to be specific jurisdictions of the European Union. Full text

29 Sep 2010
ECJ rejects Calvin Klein opposition action

The European Court of Justice has issued its ruling in Calvin Klein Trademark Trust v Office for Harmonisation in the Internal Market. The court held that where no similarity exists, the reputation of or goodwill attached to the earlier marks is insufficient to affirm a likelihood of confusion. Full text

23 Jun 2010
Impact of EU enlargement on trademark protection

The accession of certain West Balkan states to the European Union is expected to take place within the next few years. The enlargement of the European Union will raise problems in connection with Community trademarks - such registrations will automatically become effective in the new member states, but conflicts with existing marks may occur. Full text

19 May 2010
Italian opposition proceedings: from utopia to reality

Regulation 33/2010 has come into force, providing implementing regulations for opposition proceedings as set forth in the Code of Industrial Property. However, in practice, the procedure cannot yet be used and is unlikely to be available during 2010 for a variety of reasons. Full text

10 Mar 2010
Board rules on confusingly similar device marks based on copyright protection

The Office for Harmonisation in the Internal Market Board of Appeal has upheld a claim by Gucci regarding its G logos and has revoked a Community trademark registration for the device mark G GLITZY. This case is significant because the board recognised the existence of an earlier right according to the national law of only one EU member state. Full text

17 Feb 2010
Import of products from another EU country insufficient to exhaust trademark rights

The Tribunal of Turin has held that the import of products from another EU member state is not sufficient to exhaust trademark rights. It found that Young Importers had unlawfully sold decoded products without knowing the exact origin of those products, thus committing trademark infringement as it could not prove that the rights were exhausted. Full text

09 Dec 2009
Supreme Court rules on protection of three-dimensional trademarks

The Supreme Court has upheld an appeal filed against a decision of the Italian Trademark Office refusing registration of a three-dimensional trademark. The decision established in detail the steps and criteria for the examination of three-dimensional trademark applications. Full text

30 Sep 2009
Board of Appeals rules on the validations of European patents by successors to patent owners

The Patent Office Board of Appeals has ruled that the office is not obliged to verify an applicant’s right to patent validation and should simply presume that the applicant owns the patent right and is entitled to enforce it. The decision is good news for owners of transferred rights and should help them cut both costs and paperwork. Full text

09 Sep 2009
Protecting the shape of a product

As a general rule, product shapes may not enjoy protection as a trademark, but they can be protected as an industrial design provided that they are new and have individual character. However, an industrial design registration lasts for only 25 years - where this term of protection proves insufficient, is it possible to obtain protection under a different IP right? Full text

15 Jul 2009
The Republic of San Marino and IP rights

San Marino recently acceded to the European Patent Convention. Therefore, European patent applications filed on or after 1st July 2009 will automatically designate San Marino, unless the applicant expressly withdraws that designation, and nationals and residents of San Marino will be entitled to file Patent Cooperation Treaty applications with the European Patent Office. Full text

20 May 2009
Obligation to use registered Community trademark registrations

The EU Community Trademark Regulation requires the owner of a Community trademark to make genuine use of the mark within five years of registration. Advocate General Sharpston recently raised doubts as to whether "using a trademark in one member state only supposedly suffices to keep a [Community trademark] alive”. Full text

25 Mar 2009
Court finds VENUS and VENUS IV marks to be confusingly similar

In a recent decision the Supreme Court found that the mark VENUS, registered for cosmetics, and the mark VENUS IV, registered for herbal laxative beverages, were confusingly similar, notwithstanding the differences in the goods and the fact that they were registered in different classes of the Nice Classification. Full text

11 Feb 2009
IPTO Board of Appeals rules on validation application submitted by successor to patent owner

The Board of Appeals of the Italian Patent and Trademark Office recently reversed two IPTO pronouncements rejecting the validation in Italy of European patents where validation had been applied for in the name of the former patent owner which had ceased to exist due to a merger or assignment of its rights. Full text

19 Nov 2008
Restitutio in integrum: a recent Board of Appeals decision

The Board of Appeals of the Italian Patent Office has issued a decision confirming that an appeal must be decided according to the law in force at the time a petition for restitutio in integrum was rejected at first instance. It also confirmed that adequate diligence is a precondition for restitutio in integrum. Full text

30 Jul 2008
EPO prior art searches now apply to national patent applications

A new search and examination regime for patent applications has entered into force, according to which an Italian application filed on or after that date will be subject to a search report and patentability opinion issued by the European Patent Office, and to a further examination on the merits by the Italian Patent and Trademark Office. Full text

07 May 2008
PTO expected to relax its approach to restoration applications

The Patent and Trademark Office’s (PTO) practice in relation to restitutio in integrum is expected to relax following a recent decision involving a German holder of a European patent. The PTO Board of Appeals held that the law requires only that evidence be submitted that the degree of diligence demanded by the circumstances has been applied. Full text

16 Apr 2008
New law helps clarify reductions for pharmaceutical SPCs

The Italian Parliament has enacted a new law that, among other things, should help to clear up longstanding confusion over the duration of supplementary protection certificates (SPCs), which apply within the pharmaceutical market when basic patents expire. The new law confirms a provision from 2002 reducing the duration of Italian SPCs. Full text

30 Jan 2008
New EPO agreement signals the start of prior art searches

A new agreement between the Italian Patent and Trademark Office and the European Patent Office suggests that Italian patent applications could soon be subject to prior art searches. Although some of the details remain unclear, it is hoped that this initiative will make patent protection for new innovations more attractive and give Italian patents a higher presumption of validity than in the past. Full text

28 Nov 2007
Amended code sets new trend for industrial design case law

Following the amendment of the Copyright Act to acknowledge explicitly that design creations are entitled to protection under copyright law, Italian case law in the area of industrial designs is looking far more settled. Earlier this year, a Milan court affirmed this trend by finding that Arco floor lamps qualify for copyright protection. Full text

21 Nov 2007
Injunction u-turn suggests stringent inventiveness requirement

A Turin tribunal has revoked an earlier injunction granted for the alleged infringement of an Italian utility model application. The change of heart indicates that more stringent standards are to be expected from the Italian courts in evaluating the inventiveness requirement that must be met by utility model patents in Italy. Full text

14 Nov 2007
Ω is a valid and distinctive trademark, court finds

An Italian court has found that a purse clasp in the form of the Greek letter omega – Ω – amounted to valid use of a trademark registration. This is a departure from previous case law, which either refused to acknowledge the validity of marks represented by a single letter or restricted protection to identical forms by competitors. Full text

07 Nov 2007
How intellectual property can lead to better global competitiveness

New research on innovation policy in Europe shows that Italy is ranked 12th among EU member states – not the best result the country could have hoped for. However, strong creative industries, together with the likely ratification of the European Patent Convention 2000, could help to enhance Italy’s competitiveness. Full text

01 Jan 2007
Protection of Unregistered Trademarks – Seizure of Infringing Packaging Material Under art. 129 of t

The petitioner, Riseria Monferrato S.p.A., had been using its unregistered design mark comprising the representation of an Indian woman seated on a carpet while preparing bread on a background of columns of blue colour on a further background of red colour. This design mark was being used in a substantially identical form by a competitor, Riseria Roncaglia S.r.l., and such use was pursued notwithstanding warning letters dating back to 2005. Full text

01 Oct 2006
Exhaustion of Rights Principle in the European Union not Necessarily Applicable to Parallel Imports

A Bologna judge has rejected the arguments of the respondent based on exhaustion of rights. The judge held that this was not a case of admissible “parallel importation” since the goods manufactured in Holland and imported into Italy by the respondent were marketed without the consent of the trademark owner. Full text

01 Sep 2006
Labour controversies affecting IP right

The jurisdiction concerning IP litigation has been assigned in 2003 to a limited number of specialised IP chambers of Courts spread throughout the Italian territory. The Court of Cassation has now decided the debated question whether such specialised sections did also have jurisdiction over controversies relating to employees’ inventions or whether Court Chambers dealing with labour conflicts were in charge. Full text


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Issue 90