Region: Italy

The Supreme Court recently ruled on the issue of secondary meaning. The judgment may lead to further developments on two key issues: the extent of the protection of weak signs, and the application of secondary meaning as a remedy to strengthen the distinctive character of such signs.

08 April 2015

The European Court of Justice has clarified whether certain active ingredients in medicinal products are eligible for supplementary protection certificate (SPC) protection. The court ruled that the relevant EU legislation contains no prohibition against obtaining an SPC for an active ingredient which is covered by a basic patent and which is covalently bound to another active ingredient in a medicinal product.

11 March 2015

A recent official interpretation of the Convention of Friendship and Good Neighbourhood 1939 between Italy and San Marino concerning IP protection in the two states has concluded, among other things, that European patents should be validated separately in each country.

04 February 2015

In a recent communication the Italian Patent and Trademark Office agreed to accept and consider third-party observations during the pendency of a patent application or during the process for obtaining supplementary protection certificates for medicinal products. The decision may augur the introduction of a true opposition procedure for patents in Italy.

17 December 2014

A recent decision of the Italian Board of Appeal confirms that designs, including slogans, may be registered as ornamental models. The board explained that within the context of a design, slogans cannot be registered as such, but only as part of the particular graphic used by the slogan. This decision aligns Italian Patent and Trademark Office practice with that of the Office for Harmonisation in the Internal Market.

10 December 2014

In <i>Viparis</i> the Board of Appeal determined that when two trademarks include figurative elements and the earlier trademark also includes a distinctive verbal element, the two trademarks must be compared as a whole, without a separate analytical comparison of each of their components.

19 November 2014

The Court of Milan has denied injunctive relief under the doctrine of equivalents to a plaintiff which tried to base an infringement claim on subject matter explicitly disclaimed in the background section of its patent. The court emphasised that the patent specification represents the essential starting point for determining the correct weight to be ascribed to claimed features.

08 October 2014

In a recently published decision the Supreme Court ruled that for a composite mark consisting of two autonomously distinctive elements, the imitation of one element amounts to an imitation of the trademark as a whole. The court recognised the risk of confusion between the composite marks of appellant Mast Jägermeister AG and appellee Zwack Unicum.

23 July 2014

A recent decision of the Court of Perugia addressed the criteria for evaluating infringement of a registered design. The judgment confirms the alignment of Italian design law with the consolidated Community design approach.

09 July 2014

A recent decision of the Court of Turin addressed the patentability of software-based solutions involving the user-controlled presentation of information. The judgment encompassed two separate patentability issues and confirmed the alignment of Italian law with the consolidated European approach.

07 May 2014