Region: Italy

A rose by any other name does not necessarily cause confusion

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

Defendant pokes holes in screen patent claims

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

The deer makes the difference: autonomous protection for each part of composite mark

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

Hold your horses: overall impression governs evaluation of design infringement

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

Software-based solutions for user-controlled presentation of information may be patentable

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

How strong is a fortress? Inconsistency over confusing similarity between trademarks

A recent Opposition Division decision held that the trademarks FORTEZZA (meaning 'fortress') and FORTENZA were not confusingly similar. The decision is inconsistent with other decisions in similar cases and confirms that the newly introduced opposition proceedings in Italy still come with the risk of highly unpredictable results.

02 April 2014

Italian judicial proceedings stayed during EPO opposition proceedings

The Court of Turin recently stayed judicial proceedings involving a European patent while opposition proceedings were pending before the Opposition Division of the European Patent Office. This decision is a departure from prevailing legal opinion in Italy.

26 March 2014

San Daniele: Italy fights for its ham

In a case involving the United Kingdom, Italy has confirmed that it will fight strenuously at the EU level in order to protect its geographical indication against infringements, particularly in the strategic food sector. Italian institutions are quite aggressive in protecting the sector against counterfeiting and infringement.

08 January 2014

Court of Cassation rules on Galenic exception

The Court of Cassation recently ruled on the scope of the so-called 'Galenic exception', which allows pharmacists to prepare prescription medicinal products that may otherwise infringe a patent. The rationale of the Galenic exception is to balance the interest of the patent owner with the patient’s right to health. However, conditions and limits to the Galenic exception have been established.

18 December 2013

It’s a family affair: FAMILYMART and FAMILY MART marks held "conceptually dissimilar"

The Opposition Division of the Italian Patent and Trademark Office has ruled that, although graphically and phonetically similar, the trademarks FAMILYMART and FAMILY MART were "conceptually dissimilar”. Nevertheless, the opponent succeeded as the trademarks were determined to be confusingly similar. However, the Opposition Division's conceptual analysis remains somewhat questionable.

06 November 2013

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