Region: Italy

Court of Milan considers claims of nullity and partial nullity against same mark

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

Court of Cassation rules on patent infringement by equivalence

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

Reformulation of technical problem not permitted during litigation

A recent decision from the Court of Milan has confirmed the case law trend that the reformulation of a technical problem solved by a patented invention is inappropriate during legal proceedings.

04 May 2016

Court rules stylised cowhide symbol can be freely used for leather goods

The Court of Milan has confirmed its partial previous decision declaring the nullity of the Italian collective mark consisting of a symbol portraying stylised animal skin. The mark was well known in Italy as '<i>vacchetta</i>' ('cowhide') and was registered in Classes 16, 18, 21, 25 and 28, claiming goods made of leather in each class.

13 April 2016

Foreign patent office decisions accepted as evidence of rights reinstatement

The Italian Board of Appeal recently held that the conclusions of foreign national patent offices are relevant evidence when evaluating whether a patent owner seeking the reinstatement of rights has demonstrated that its representative had adequate means to carry out the task entrusted to it.

09 March 2016

Right to fair reward for employee inventor

A recent decision of the Court of Milan addressed the right to a fair reward which is available, in certain circumstances specified by patent law, to an employee working within the scope of his or her employment who contributes to an invention.

10 February 2016

Appeal board confirms similarity of hairdressing products and services

In a recently published decision the Italian Board of Appeal confirmed that even if products and services are, by their nature, different, “hygienic and beauty care treatments to human beings and animals” in Class 44 with respect of “hair care products” in Class 3 can be found to be similar, taking into account all the relevant factors.

13 January 2016

Good news for SEP owners, growing NPE interest, EPO turmoil, UPC progress & more - Europe's IP market in 2015

Following on from my colleagues identifying the big stories and trends in both the Asian and US IP markets in 2015, it is my job to do the same with Europe. Having spent a bit of time thinking about this, I can’t identify anything really huge that…

20 December 2015

To truly facilitate innovation, standard-setting must benefit everyone, not just a few big implementers

Last month, this blog reported on a landmark victory for Italian patent licensing business Sisvel in a German suit relating to SEPs and FRAND it had brought against Chinese company Haier. In the decision, thought to be the first handed down by a…

04 December 2015

Wine and oil do not mix – except in trademark rulings

The Court of Cassation recently upheld a Milan Court of Appeal decision holding that, with respect to trademarks, wine and oil are similar goods. The decision is in line with past Italian jurisprudence, yet is inconsistent with both Office for Harmonisation in the Internal Market case law and the position of the Italian Trademark Office, which considers goods in Classes 29 and 33 to be dissimilar.

02 December 2015

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