Region: Italy

ECJ rejects Calvin Klein opposition action

The European Court of Justice has issued its ruling in <i>Calvin Klein Trademark Trust v Office for Harmonisation in the Internal Market</i>. The court held that where no similarity exists, the reputation of or goodwill attached to the earlier marks is insufficient to affirm a likelihood of confusion.

29 September 2010

Impact of EU enlargement on trademark protection

The accession of certain West Balkan states to the European Union is expected to take place within the next few years. The enlargement of the European Union will raise problems in connection with Community trademarks - such registrations will automatically become effective in the new member states, but conflicts with existing marks may occur.

23 June 2010

Italian opposition proceedings: from utopia to reality

Regulation 33/2010 has come into force, providing implementing regulations for opposition proceedings as set forth in the Code of Industrial Property. However, in practice, the procedure cannot yet be used and is unlikely to be available during 2010 for a variety of reasons.

19 May 2010

Board rules on confusingly similar device marks based on copyright protection

The Office for Harmonisation in the Internal Market Board of Appeal has upheld a claim by Gucci regarding its G logos and has revoked a Community trademark registration for the device mark G GLITZY. This case is significant because the board recognised the existence of an earlier right according to the national law of only one EU member state.

10 March 2010

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

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