Search results - found 86
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.
Labour controversies affecting IP right (International reports)
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.
Interpretation of reciprocity of IP rights protection in Italy and San Marino (International reports)
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.
Injunction u-turn suggests stringent inventiveness requirement (International reports)
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.
San Daniele: Italy fights for its ham (International reports)
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.
Hold your horses: overall impression governs evaluation of design infringement (International reports)
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.
Registered designs can now include slogans (International reports)
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.
What’s mine is yours: employees’ economic rights under the Copyright Act (International reports)
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.
Supreme Court rules on protection of three-dimensional trademarks (International reports)
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.
Principles of morality as absolute grounds for refusal (International reports)
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.
Italian judicial proceedings stayed during EPO opposition proceedings (International reports)
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.
CLINIQUE: reputation alone may not cure trademark's inherent weakness (International reports)
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.
Right to fair reward for employee inventor (International reports)
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.
New law helps clarify reductions for pharmaceutical SPCs (International reports)
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.
UIBM’s novel approach to finding sufficient spread between SPREAD and SPREAD (International reports)
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.
Is preliminary technical advice in IP disputes useful? (International reports)
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.
When reverse engineering is difficult, infringement of software trade secrets is confirmed (International reports)
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.
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