Industrial property lawyers in Italy have been given cause for reflection following a recent European Court of Justice decision which was expected to clarify whether the legislatures of EU member states can grant copyright protection for designs subject to additional requirements to those required for all other copyrighted works. This issue is of particular importance in Italy, as copyright protection is granted to designs on the condition that they have 'artistic value', as assessed by the courts, as well as a creative aspect.
The Supreme Court of Cassation recently reversed a Milan Court of Appeal ruling on patent limitation. The Supreme Court of Cassation found that although the Milan Court of Appeal had held the patent at issue to be valid, it had not granted the patentee's claims for infringement because the patent had been subject to a limitation procedure and the acts of infringement had been carried out before the application for limitation had been filed.
Legislative Decree 15/2019, which implements the EU Trademarks Directive, entered into force on 23 March 2019. The decree's main innovations include the reinforcement of trademark protection (in particular, the possibility of using cross-border measures and reacting against certain preparatory acts of counterfeiting has been extended to transported goods) and the removal of the anachronistic requirement of graphic representation for the registration of non-conventional trademarks.
The so-called 'Growth Decree' has made provision for IP rights, particularly by introducing new regulations dedicated to 'Italian-sounding terms'. Specifically, the new regulations concern the adoption by foreign manufacturers of distinctive signs that evoke Italy and, more generally, trademarks linked to Italian territory. The adoption of such marks is now an act of piracy and considered substantially equal to counterfeiting.
The so-called 'Growth Decree' includes a rule which allows an Italian patent application to be filed based on an international patent application filed under the Patent Cooperation Treaty. The adoption of this provision offers companies a cheaper alternative where the potential exploitation of an invention does not justify the investment required to obtain a European patent. The provision responds to a pressing practical need and is a welcome change.