Region: Italy

Class 35: registering retail and wholesale services at the UIBM

Since 2016 the Italian Patent and Trademark Office (UIBM) has taken a harsh stance on registrations for ‘retail and wholesale services’ in Class 35. During this time, the UIBM has consistently refused to register applications directed to these services.

07 June 2017

A tale of statues and camels: mass-produced items eligible for copyright protection

The Court of Cassation recently held, in a case involving porcelain statues manufactured and mass-marketed by Italian company Thun Spa, ruled that mass-produced items may include a creative, artistic element, and thus can be eligible for copyright protection.

03 May 2017

CLINIQUE: reputation alone may not cure trademark's inherent weakness

In a recently published decision the Court of Cassation held that although the trademark CLINIQUE was well known in the European Union, its reputation was insufficient to overcome the weakness of the trademark and its inherent lack of distinctiveness.

05 April 2017

Chemical intermediates: patentability and infringement under the doctrine of equivalents

The Italian Supreme Court has had the final word on a long-running dispute between Industriale Chimica and Bayer, holding that a chemical intermediate is not necessarily patentable, even if it is novel, inventive and provided in a stable form.

01 March 2017

Patronymic trademarks in the fashion industry: what’s in a name?

In the fashion industry it is common to use and register the name of a designer as a trademark. But what happens when a designer assigns his or her company's IP assets, including trademarks associated with his or her own name, to a third party, and then continues using the name in new trademarks?

11 January 2017

When employment contracts are silent: remuneration for employees' inventive activities

The Court of Cassation (Italy's highest court) recently issued a decision concerning whether a scientific director who contributed to an invention but whose employment contract did not specifically address remuneration for such activities was entitled to the payment of a fair premium.

07 December 2016

The double identity of OSCAR: a trademark and a common term

The Supreme Court recently held that the trademark OSCAR was valid with respect to the film industry and thus gave its owner, the Academy of Motion Picture Arts and Sciences, exclusive rights in its use. However, the court also held that the trademark had become a common name in relation to other services – namely, teaching and performances in Class 41 of the Nice Classification.

09 November 2016

Court of Cassation clarifies management of simultaneous validity and infringement proceedings

A recent Court of Cassation decision has affirmed the principle that when separate infringement and invalidity proceedings are pending simultaneously, the court managing the infringement action should stay those proceedings until conclusion of the validity action.

12 October 2016

Border seizure in the European Union

Featured in IAM Yearbook 2017

Many products commercialised in the European Union today are manufactured not in EU member states, but rather in countries outside the internal market, either in Europe or further afield (eg, Asia and the Americas). Although the import and export of…

12 October 2016

Claimed ranges and patent infringement under the doctrine of equivalents

In the recently published decision of <i>Geratherm Medical AG v Gima SPA</i> the Court of Milan ruled that patent protection for a numerical range of values cannot be extended under the doctrine of equivalents to cover a numerical value that falls even slightly outside that range.

10 August 2016

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