Region: Italy

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.

17 February 2010

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.

09 December 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.

30 September 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?

09 September 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.

15 July 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”.

20 May 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.

25 March 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.

11 February 2009

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 <i>restitutio in integrum</i> was rejected at first instance. It also confirmed that adequate diligence is a precondition for <i>restitutio in integrum</i>.

19 November 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.

30 July 2008

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