Search results - found 82
Court of Cassation rules on patent infringement by equivalence (International reports)
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.
The double identity of OSCAR: a trademark and a common term (International reports)
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.
The deer makes the difference: autonomous protection for each part of composite mark (International reports)
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.
Supreme Court recognises punitive damages (International reports)
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.
Court finds VENUS and VENUS IV marks to be confusingly similar (International reports)
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.
Late filing of Italian translation of European patent specifications allowed by Board of Appeal (International reports)
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.
Appeal board confirms similarity of hairdressing products and services (International reports)
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.
Court rules stylised cowhide symbol can be freely used for leather goods (International reports)
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.
It’s a family affair: FAMILYMART and FAMILY MART marks held "conceptually dissimilar" (International reports)
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.
Protecting the shape of a product (International reports)
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?
Reformulating patent claims: a re-introduction to new Article 79 (International reports)
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.
Devices included in complex trademark may be independently protected but the saga continues (International reports)
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.
Wine and oil do not mix except in trademark rulings (International reports)
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.
EPO prior art searches now apply to national patent applications (International reports)
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.
Import of products from another EU country insufficient to exhaust trademark rights (International reports)
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.
Lessons in unfair competition and misappropriation of confidential information (International reports)
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.
Misappropriation of trade secrets consisting of technical information (International reports)
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.
Pre-filing disclosure of invention to non-skilled audience may destroy novelty (International reports)
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.
File wrapper estoppel trumps infringement under doctrine of equivalents (International reports)
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.
How strong is a fortress? Inconsistency over confusing similarity between trademarks (International reports)
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.
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