Region: Italy

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

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

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

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

The Patent and Trademark Office’s (PTO) practice in relation to <i>restitutio in integrum</i> is expected to relax following a recent decision involving a German holder of a European patent. The PTO Board of Appeals held that the law requires only that evidence be submitted that the degree of diligence demanded by the circumstances has been applied.

07 May 2008

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.

16 April 2008

A new agreement between the Italian Patent and Trademark Office and the European Patent Office suggests that Italian patent applications could soon be subject to prior art searches. Although some of the details remain unclear, it is hoped that this initiative will make patent protection for new innovations more attractive and give Italian patents a higher presumption of validity than in the past.

30 January 2008

Following the amendment of the Copyright Act to acknowledge explicitly that design creations are entitled to protection under copyright law, Italian case law in the area of industrial designs is looking far more settled. Earlier this year, a Milan court affirmed this trend by finding that Arco floor lamps qualify for copyright protection.

28 November 2007

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.

21 November 2007

An Italian court has found that a purse clasp in the form of the Greek letter <em>omega</em> – Ω – amounted to valid use of a trademark registration. This is a departure from previous case law, which either refused to acknowledge the validity of marks represented by a single letter or restricted protection to identical forms by competitors.

14 November 2007