Region: Italy

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.

18 September 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.

17 July 2013

No monopoly for stylised cow skin symbol for leather goods

In its recent decision in <i>Chaussures Eram SARL v Unic Servizi Srl</i> 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.

19 June 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.

29 May 2013

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

In <i>Jobo Limited v Riccadomus Group SRL</i> 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.

01 May 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.

17 April 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.

06 March 2013

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.

12 December 2012

Patenting biotechnology inventions – peculiar procedural requirements

Article 170<i>bis</i> 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.

07 November 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.

10 October 2012

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