Region: Italy

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

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

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

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 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

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

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

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

A Court of Milan decision ordered the partial nullity of a trademark, permitting the continued registration of the remainder of the mark. Although trademark litigation may not always be pretty, it might just save at least part of your trademark.

13 July 2016

A recent Court of Cassation decision has affirmed the principle that a variant of a patented invention that is not original over the patent (ie, does not exceed the technical skills of the skilled person) falls within the scope of the patent.

08 June 2016