Region: Italy

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.

02 April 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.

26 March 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.

08 January 2014

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.

18 December 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.

06 November 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.

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

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