IP Law Galli updates

Decision confirms efficiency of courts in protecting trade secrets
IP Law Galli
  • Intellectual Property
  • Italy
  • 23 July 2018

The Court of Brescia's Company and IP Specialised Division recently issued two landmark decisions that enhance the protection of trade secrets in Italy. The decisions coincide with Italy's implementation of the EU Trade Secrets Directive and confirm the high level of protection afforded to trade secrets, which are considered to be a form of intellectual property and benefit from protection under the EU IP Rights Enforcement Directive.

IP protection for lighting management systems
IP Law Galli
  • Intellectual Property
  • Italy
  • 28 May 2018

Lighting management systems represent both technical and legal challenges. Before disclosing a new creation, the relevant parties must assess the IP protection that is available and act accordingly. Companies that produce patentable inventions are advised to consult experts who can evaluate the best strategies to ensure that their innovation exploits its competitive advantage without being open to immediate and legitimate imitation by competitors.

Moral compass – case law on trademarks deemed contrary to public order
IP Law Galli
  • Intellectual Property
  • Italy
  • 30 April 2018

Italian case law on trademarks deemed contrary to public order and accepted principles of morality is fully consistent with EU case law. Two rulings by the Specialised IP Division of the Court of Milan are of particular note in this regard. It is clear that, for both the Italian case law and scholars, the criterion of public perception must be applied in the same way in order to assess the validity of a mark and verify whether other signs interfere with it.

Italy ready to implement EU Directive on Trade Secrets
IP Law Galli
  • Intellectual Property
  • Italy
  • 12 March 2018

The government recently submitted to Parliament the text of a draft legislative decree to implement the EU Directive on Trade Secrets. The main changes proposed include the alignment of domestic rules on trade secrets with international standards; the prohibition of trade in goods whose design, features, function, production or marketing significantly benefit from unlawfully obtained trade secrets; and the introduction of a regulation to protect the confidentiality of trade secrets in the course of judicial proceedings.

Delegation Act set to amend key matters concerning trademarks, patents and know-how
IP Law Galli
  • Intellectual Property
  • Italy
  • 15 January 2018

The European Delegation Act 2016 to 2017 contains significant changes concerning IP rights, including the potential destabilisation of a system that has been acknowledged unanimously as satisfactory. Other changes concern the implementation of an EU directive in Italy in order to approximate the trademark laws of EU member states and the amendment of the Industrial Property Code in order to bring it into line with the EU rules on the unitary patent and the Unified Patent Court.

Collecting societies and the SIAE – another step towards liberalisation
IP Law Galli
  • Intellectual Property
  • Italy
  • 11 December 2017

Lawmakers recently intervened in matters concerning collecting societies and copyright through the introduction of Decree-Law 148/2017. This new regulatory amendment further weakens the unjustified monopoly of the Italian copyright collecting agency. However, a number of issues concerning the new wording of Article 180 of the Copyright Law remain, which could result in the retention of inadmissible limitations contrary to EU law and the liberalisation of the market being deferred once again.

How to protect architectural works and designs in Italy: recent trends
IP Law Galli
  • Intellectual Property
  • Italy
  • 09 October 2017

With developments in three-dimensional printing allowing for the manufacture of building components, the protection of industrial designs and architecture has become of crucial importance for architects, designers and buyers – both private and public. A number of matters should be considered in this regard, including copyright, the reproduction of industrial designs and architectural works and the moral rights of authors.

Trademarks removed from Patent Box, but transitional rules implemented
IP Law Galli
  • Intellectual Property
  • Italy
  • 24 July 2017

Trademarks were recently removed from the list of IP rights that can benefit from the package of fiscal incentives known as the 'Patent Box'. However, a transitional system has been established for companies that have already exercised the Patent Box's three-year incentive option. This decision strengthens the credibility and therefore the attractiveness of these incentives for investors, but the onerous accounting requirements that must be met for a company to avail of these incentives remain in place.

Bulgari successfully enforces its selective dealership network following trademark violation
IP Law Galli
  • Intellectual Property
  • Italy
  • 10 July 2017

A Court of Catania IP Specialised Division decision ended the infringing activities of a former official dealer at the expense of the prestigious global trademark BVLGARI. The decision is noteworthy as it granted protection against the illegal use of Bulgari's trademarks by the former official dealer of its jewels and expressly acknowledged the legitimacy of the selective dealership system implemented by Bulgari.

Court rules on constitutional right to defence against IP infringement via customs protection
IP Law Galli
  • Intellectual Property
  • Italy
  • 05 June 2017

The Court of Rome's IP and Company Specialised Division recently issued a short and concise order which confirmed German-based multinational Vorwerk's constitutional right to defence in the form of customs protection against IP infringement activities undertaken in East Asia. The decision is a result of the balanced and efficient IP rights legal framework being developed in Italy, particularly with regard to the need for adequate legal means to protect such rights from the influx of imported copycats.

New cinema law affects IP rights
IP Law Galli
  • Intellectual Property
  • Italy
  • 27 March 2017

IP rights and competition rules have been affected by the recent changes to legislation on cinematic works. Law 220/2016 concerning cinematic and audiovisual works establishes special rules for works that benefit from state grants, as these works must be made available to the Italian Film Library and the Ministry of Cultural Heritage for non-profit purposes. The law also introduces protection against unfair competition in the film distribution field.

Italy ratifies UPC and implements new contributory infringement rules
IP Law Galli
  • Intellectual Property
  • Italy
  • 16 January 2017

With its ratification of the agreement establishing the Unified Patent Court, Italy could play an active role in negotiations on the future of the court and the unitary patent in the context of Brexit. The ratification law also modifies the Code of Industrial Property, adding a new rule on contributory infringement that will have a significant impact on rights protection – especially with regard to new technologies, such as three-dimensional printing.

Damages and legal costs in IP matters: recent case law trends
IP Law Galli
  • Intellectual Property
  • Italy
  • 17 October 2016

Italian law provides a general rule for the calculation of damages in IP matters, under which a rights holder can receive a sum corresponding to the greater of the infringer's profits or the rights holder's lost profits. The courts have progressively interpreted this rule as being based on full compensation for real damages suffered by the rights holder, as well as on the deterrent effect of further infringing activities.

Latest Supreme Court decision in Fiorucci saga
IP Law Galli
  • Intellectual Property
  • Italy
  • 15 August 2016

The Supreme Court recently issued a decision in the ongoing saga between renowned stylist Elio Fiorucci and the company that he founded. The decision examined Fiorucci's rights to register his name as a trademark after leaving the company – which had registered his name as a trademark with his agreement – and the potential deceptiveness of a trademarked name when the relationship between the person and the trademark owner has ended.

Court clarifies doctrine of trademark limitation by coexistence
IP Law Galli
  • Intellectual Property
  • Italy
  • 20 June 2016

A recent decision by the IP and Corporate Specialised Division of the Court of Milan addressed the relationship between the likelihood of confusion and consumers' perception of the different messages linked to the trademarks at issue, and between the limitation by coexistence and trademark acquiescence doctrines. The court found that the relevant customers could understand the different expressive meanings of the trademarks.

Implementation of Trademarks Directive on track
IP Law Galli
  • Intellectual Property
  • Italy
  • 13 June 2016

Italy is working on implementing EU Directive 2015/2436/EC, aimed at harmonising the national rules on trademarks. Under the new rules the requirement that a trademark be capable of graphic representation has been eliminated; the rules for shape marks have been extended to colour marks; and a new definition of the relationship between trademarks and appellations of origin has been introduced.

Court bars BDO from using Mazars' trademarks, software and trade secrets due to IP violations
IP Law Galli
  • Intellectual Property
  • Italy
  • 02 May 2016

The Court of Milan's IP and Company Specialised Division recently rendered a landmark decision regarding trademark, software and trade secret violations as part of broader unfair competition activities which aimed to transfer the business of the Italian subsidiary of the multinational audit group Mazars to a competitor. The decision confirms the high level of protection afforded to IP rights in Italy.

Court clarifies conditions for including IP licence fees in customs value of imported goods
IP Law Galli
  • Intellectual Property
  • Italy
  • 07 March 2016

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.

Court prohibits infringer from using retail and domain names
IP Law Galli
  • Intellectual Property
  • Italy
  • 21 December 2015

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.

Patent Box: new strategies for IP rights management
IP Law Galli
  • Intellectual Property
  • Italy
  • 19 October 2015

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.

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