A recent Florence Tax Court of Appeal decision established an important principle regarding the relevance of licence fees for IP rights when estimating the customs value of goods manufactured for a licensee by another party outside the European Union. The decision underlined the importance of drafting licence agreements correctly; parties should consider customs-related issues when drafting licence agreements.
The Court of Bologna (IP Specialised Division) recently issued a preliminary injunction prohibiting a hotel from using the business name Hotel Ink 124 and the domain name 'www.hotelink124.it', as they were confusingly similar with the registered trademark INC HOTEL. The court also placed an injunction on the use of links to the infringing domain name on other websites, thus requiring the infringer to remove all online references to the infringing mark.
The recently implemented Patent Box system makes it possible to derive significant fiscal benefits from the careful management of IP rights within a company group. The system reduces tax on income – particularly from licensing activity – and exempts from taxation capital gains deriving from the transfer of the IP rights that are reinvested into the development of similar rights.
Two important decisions on geographical indications (GIs) were recently issued that strengthen the protection of GIs in Italy. The corresponding Italian legislation has developed in a fragmentary manner, often through the adoption of special laws that relate to a specific context, but it has progressively acquired consistency and homogeneity in relation to international agreements and EU law.
Italy recently decided to endorse the European unitary patent. The decision will help significantly to keep the costs of patent registration and maintenance at a competitive level. Further, the enforcement strategies of patent owners will change when the unitary patent system enters into force, as will the defensive strategies of those suspected of counterfeiting.
In 2014 Italy was removed from the Office of the US Trade Representative Watch List, on which it had appeared since 1989. Its removal was mainly due to a new regulation addressing copyright piracy on the Internet. Following the introduction of this administrative remedy, and contrary to common belief, the Italian legislative instruments against IP infringement are quite efficient.
IP lawyers are facing problems and opportunities linked to the increasing popularity of three-dimensional (3D) printing technology in Italy, especially as it can be implemented at a low cost and through simple means. 3D printers permit the circulation of files that contain information suitable for the reproduction of many different types of object, which creates potential conflict for rights holders.
The Court of Milan recently issued an important decision concerning infringement of the copyright held by Flou in the shape of its well-known 'Nathalie' bed. The decision not only reaffirms the basic principles of Italian case law concerning the protection of industrial designs, including copyright protection, but also addresses the disputed interpretation of the transitional rule for works created before such protection was introduced.
The Court of Rome has held that a trademark consisting of the words 'facce da rugby' ('faces of rugby'), together with a series of small squares containing portraits of rugby players, lacked distinctiveness, even though its component elements were neither generic nor descriptive. The decision seems to indicate that, with regard to distinctiveness, Italian case law is now fully aligned with that of the European Court of Justice.
The Court of Milan recently issued two important decisions concerning the validity of supplementary protection certificates (SPCs) granted for the same patented invention. Contrary to a previous decision, in these cases the court cancelled the SPC for a drug whose active ingredient was a combination of telmisartan (by itself covered under a previous SPC that had expired) and hydrochlorothiazide.
The Court of Milan recently issued a landmark decision in a case concerning the right of a fashion designer to continue using his name as a trademark after leaving the company that he founded and that still holds the rights to both the trademarks containing the designer's name and the company name. The case concerned well-known fashion designer Alviero Martini, creator of the famous 'map' print.
New effective tools have become available to IP rights holders that have been the victims of pirate websites offering copies of original products or fake copyright works, often at rock-bottom prices. The antitrust and telecommunications authorities have recently taken the lead in this field, closing down hundreds of clone websites, while other similar measures are following at a fast pace.
The Milan Court of Appeal has issued a landmark decision in which it ordered the revocation for non-use of the famous LAMBRETTA trademark for motorcycles. The decision seems to take the view that 'reputation' is not merely an abstract element that can be used and marketed independently; rather, reputation is a quality attached to a trademark, which needs to be valid and used on the market (ie, not expired).
One of the most debated topics of a recent IP law conference was the parodistic use of a trademark for both identical and unrelated products. Italian scholars have found that parody falls within the concepts of unfair advantage and damage to the reputation of a trademark. However, others have wondered whether the parody of a trademark could be based on a 'legitimate cause' that would exclude the unlawfulness of such use.
The Senate has adopted a report confirming the government's commitment to implement the EU unitary patent system. While trade associations have overwhelmingly expressed their favour for joining the system, professional circles are torn on the issue. A recent conference organised by the Polytechnic University of Milan addressed the opponents' arguments while pointing out the numerous advantages of patent unification.
The Court of Milan recently upheld an injunction prohibiting the manufacture, marketing, offer for sale and advertising of more than 200 types of copycat product (eg, tables and chairs) in the biggest case of unfair competition for imitation and infringement of unregistered shape trademarks ever heard in Italy. The case confirms the high level of protection granted in Italy to the shape of products, whether registered or not.
Contrary to common belief, the legislative instruments available in Italy against IP infringement are quite efficient. The legal framework for anti-counterfeiting enforcement has been reinforced through the Code of Industrial Property, which consolidated most of the principal IP laws; moreover, a draft bill aimed at strengthening the protection of IP rights against online infringement is under consideration by Parliament.
The Court of Turin has issued a decision protecting the Italian trademark ERACLIT against use of the trademark HERAKLITH – owned by an Austrian company, but never used as such in Italy – for similar products. The court thus implicitly applied settled EU case law which recognises that similar – or even identical – trademarks belonging to different parties might co-exist in different EU member states.
Within the space of a few months the Italian government has intervened twice on the sensitive issue of patent linkage for generic drugs, through two opposing decrees. The second decree, which provides that generic drugs cannot be reimbursed by the Italian National Health Service (thus making them uncompetitive) until the relevant patent or supplementary protection certificate expires, has been heavily criticised.
An order by the specialist IP division of the Court of Turin to withdraw infringing products from the market has additionally compelled the infringer to buy back the illicit products directly from stores at their retail price. This is the first time in Italy that an order of withdrawal has been extended in this manner, which is consistent with the judicial defence of IP rights under the EU Enforcement Directive.