Region: Italy

Weak marks grown stronger: DIVANI & DIVANI trumps DIVINI & DIVANI

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

EU law concerning SPCs and interpretation of the SPC Regulation

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

Interpretation of reciprocity of IP rights protection in Italy and San Marino

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

Patent opposition procedure in Italy – coming soon?

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

Registered designs can now include slogans

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

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

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