This country-specific Q&A provides an overview to intellectual property laws and regulations that may occur in Italy.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/practice-areas/intellectual-property-third-edition/
What different types of intellectual property rights exist in your jurisdiction to protect: (a) Inventions; (b) Brands; (c) Other creations, technology and proprietary interests
Under Italian Law, the following rights are protected:
Patents for invention: Under Italian Law, inventions must meet several requirements to be eligible for patent protection.
These include, in particular, that the claimed invention:
- Consists of patentable subject-matter; discovery, scientific theories and mathematical methods; b) plans, principles and methods for intellectual activities, plays or commercial activity and computer programs; c) information presentations are not patentable.
- Is new (requirement of novelty);
- Involves an inventive step (requirement of non-obviousness);
- Is capable of industrial application (requirement of utility); and
- Is disclosed in a clear and complete manner in the patent application (requirement of disclosure, sufficiente descrizione).
Utility models: consists in a shape of a product capable to confer effectiveness or ease of application to machines or parts of them, instruments, tools or objects of general use. Therefore, utility model always consists of a new form of a known product.
Trade secret: Article 98 of the Italian Legislative Decree 30/2005 (the Italian Intellectual Property Code, or the "IPC") — which is consistent with Article 39.2 of the TRIPs Agreement — the elements for the constitution of the IP right for trade secret protection require that "business information and technical-industrial expertise, including commercial ones":
a) be secret, meaning that they shall not be generally well-known or readily accessible for experts and operators in the field;
b) have an economic value because they are secret; and
c) have been subject, by their "owner", to measures that may be deemed reasonable to keep them secret.
Marks, business names and trade names are the typical forms of distinctive sign in the Italian legal system (segni tipici). There are also distinctive signs that are non-typical (segni atipici) but nonetheless have the function of identifying the business and communicating, including advertising slogans, trade dress and domain names.
With specific respect to trademarks, there are various categories, which differ based on the nature of the sign. Using the list set out in the law as a reference and in particular in IPC and further amendments a trademark can be comprised of (i) words, be they actual or fanciful, or (ii) drawings. Typically, trademarks are classified, in the first case, as word trademarks and in the latter case as figurative trademarks. Trademarks comprised of both words and images, on the other hand, are typically classified as complex trademarks. The complex marks are typically made up of a distinctive core and further secondary elements (marchi complessi). There are also marks that combine elements that would not be distinctive when taken alone (marchi d'insieme). A trademark can also be a person's name, in which case it is classified as a patronymic trademark. In addition to words and images, the law also allows registration as trademarks of numbers and letters in the alphabet. The IPC does not expressly mention the possibility for the applicant to file a trademark application for other types of signs, such as smell, position, movement, tactile and gustative marks. Despite this fact, Italian undertakings are increasingly focusing their attention on these kind of signs as trademarks. Nowadays, amongst the elements that can be granted trademark protection, especially in the fashion industry, there are some elements of the products. These elements, originally created as decorative or merely aesthetic signs, are becoming a symbol, like the essence of the 'exclusive style' of a certain brand.
Legislative Decree no. 15 of 20 February 2019 which implemented EU Directive 2015/2436 ("LD 15/2019") no longer requires the graphic representation of the sign in order to register it as trademark. This amendment broadens the scope of protection of the trademark, considering that also new types of signs (such as smells or sounds) may be protected as a trademark.
The Italian system also recognizes unregistered trademarks (or de facto trademarks).
The fundamental condition to be met to obtain trademark protection for unregistered trademarks, but also to ground an unfair competition claim, is to demonstrate that the unregistered mark is perceived by the general public as an indication of the origin of the product or has become well known/notorious in the relevant market (so called "notorietà qualificata").
This burden of proof is up to the unregistered trademark owner and it is not always an easy proof.
If the unregistered trademark is known only at a local level, the registration of a following identical trademark is permitted, but the owner of the previous unregistered trademark is always allowed to continue the use of the sign within the limits of such use (so-called diritto di preuso).
Any legal person or associations of manufacturers, producers, suppliers of services or traders can register a "collective trademark". The collective trademark is a sign capable of distinguishing the goods or services deriving from the members of the legal person/association owner of the trademark from the goods or services of other undertakings.
Under Italian law, a collective trademark may also consist in signs or wording that designate the geographical origin of goods or services. In this case, any person whose goods or services originate from such geographical location may be entitled to use the collective trademark or to become a member of the association that registered the collective trademark.
Recently LD 15/2019 has introduced the possibility for any natural or legal person, including institutions, authorities and bodies governed by public law, to apply for "certification trademarks". The certification mark is a sign capable of distinguishing goods or services that are certified by the owner of the trademark as to materials, mode of manufacture, quality, accuracy or other characteristics, from goods and services that are not so certified. Moreover, it is possible for certification trademark to be a signs or wording to designate the geographical origin of the goods or services; in this case the owner of the certification trademark cannot prevent third parties from using the signs or wording, provided that the third party uses them in accordance with honest practices.
Moreover, Law no. 58 of 28 June 2019 has introduced the so-called historic trademark of national interest ("Marchio storico di interesse nazionale").
Law no. 58 of 28 June 2019 enables the owners or the exclusive licensees of signs that (i) have been registered for more than 50 years and (ii) are used for goods or services deriving from a company of national excellence and historically linked to the national territory, to register their trademark in the special register of historic trademarks of national interest. In this case the owners or exclusive licensees of the registered historic trademark of national interest are entitled to use the related logo for marketing and promotional purposes. Some Italian scholars have criticized this new category of historic trademark of national interest and the amendments introduced by Law no. 58 of 28 June 2019. Particularly they point out that the initial proposal for the Law provided that the relocation of production from the original territory to another would lead to the cancellation of the historic trademark of national interest. This provision would have forced a company to maintain the production/manufacture of the product in the specific territory designated in the special register of historic trademark of national interest in order to be allowed to use the sign. The subsequent version provides that in case of relocation of production, the owner or the licensee of the historic trademark of national interest should promptly notify the Italian Ministry of Economic Development. The Italian Ministry of Economic Development may start a procedure to determine the appropriate actions to be taken, including purchasing the company' s obligations on market terms.
(c) Other creations, technology and proprietary interests
Copyright protects works of the mind having a creative character and belonging to literature, music, figurative arts, architecture, theatre or cinematography, whatever their mode or form of expression. Italian Copyright Law (Law 22 April 1941, no. 633, "ICL") indicates no specific level of creativity required to qualify for protection; in practice, according to the prevailing case law and scholars, a minimum of creativity is generally regarded as sufficient. The assessment by the courts as to whether there is a sufficient level of originality is a question of fact.
Article 2 ICL sets out a list of protected works that may be afforded copyright protection. Please note that such list is not exhaustive. Indeed, case law has considered several cases of works such as TV formats, multimedia works, website, maps and recipes not included in the above-mentioned list, recognizing copyright protection provided that the works fulfil the requirement of originality.
Pursuant to the Italian legal framework, as amended in 2001, industrial design is granted copyright protection on condition that it displays not only creative features, but also 'artistic value' (valore aristico). The 'artistic value' is a special, additional requirement applicable only to industrial design works; it requires, as interpreted by the Italian Courts, evidence of public rewards or acknowledgments by art critics, museums or exhibits. A part of the copyright protection (subject to the special additional requirement of the 'artistic value'), the industrial design, can be registered as a design model, according to Articles 31 and following of the IPC. The registration as a design model is subject to the requirement of novelty, individual character (i.e., the general impression of the appearance of the design) and lawfulness. The duration of the protection is five years, renewable for up to a maximum of 25 years.
In Italy, industrial designs may enjoy double protection, although the requirements for copyright protection and registered design model are very different and both can seldom be proven in relation to the same work.
Article 2 ICL expressly lists software among copyrightable subject-matters and allows copyright protection on condition that the software is original and the result of the author’s intellectual creation. In accordance with the European Patent Treaty, software cannot be protected by patent law as such, but only if has a technical effect that is new and non-obvious.
Copyright law protects databases, which are defined as a compilation of data or other materials that are arranged according to a system or a method and are individually accessible by electronic or other means. This type of work is afforded copyright protection on condition that it is original, i.e., the criterion of selection and/or arrangement is non-technically imposed and is non-obvious.
Article 2 ICL specifies that copyright law does not extend to the contents included in the database, and covers only the database's structure, i.e., the manner in which the materials are selected and arranged. In other words, the copyright protection to database may offer protection to a limited scope, since copyright covers the way data is compiled and not the content of the compilation (data) or the algorithm used. This limitation has led to the establishment of a sui generis regime of protection for databases, on the basis of which the maker of the database, who has made quantitative or qualitative substantial investment in collecting, verifying and presenting the contents, may enjoy broader protection, of up to 15 years, and renewable providing that a new investment is made. The sui generis right consists in the exclusive right to control the extraction and the re-utilization of the data put into the database.
These two forms of protection can be cumulative, although the holders of the right may be different: the copyright protection to the creative database is granted to the 'author', who does not necessarily coincide with the 'maker, i.e. the person who made the substantive investment, who is the holder of the sui generis right.
The right to a new plant variety may consist of a group of plants in a botanical taxon of the lowest grade known that, whether it is or is not entirely consistent with the conditions set for the granting of the breeder's right, can be: (i) defined based on characteristics resulting from a given genotype or a given combination of genotypes; (ii) distinguished from any other group of plants based on the expression of at least one of said characteristics; and (iii) considered as a unit with regard to its suitability to be reproduced unchanged.
Exclusive rights may be granted for topographies if they are the result of the creative intellectual efforts of their author that are not common or familiar within the semi-conductor product industry. Exclusive rights may also be granted for topographies resulting from the combination of common or familiar elements, provided that as a whole they meet the requirements of creative intellectual efforts of their author that are not common or familiar to the industry.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents have a duration of twenty years starting on the date of filing of the application and may not be renewed, nor may their duration be extended.
The utility model has a duration of ten years from the date the application is filed.
Trademarks are protected for ten years starting from the application date and can be renewed with respect to the same signs and the same products and services for ten-year periods, for an indefinite number of times.
The registration of a design or model has a duration of five years starting from the date of filing of the application. The owner may obtain an extension of the duration for one or more periods of five years until a maximum of twenty-five years from the date of filing of the application for registration.
Semi-conductor topography rights arise as of the first of the following dates, in order of time: a) the date of the first commercial exploitation of the topography in any part of the world; b) the date on which the application for registration was presented in proper form. They shall be terminated ten years after the first of the following dates, in order of time (i) the end of the calendar year in which the topography was commercially exploited for the first time in any part of the world; (ii) the end of the calendar year in which the application for registration was filed in the proper form.
The breeders right has a duration of twenty years starting from the grant date. For trees and vines that right has a duration of thirty years from the grant thereof. The effects of the patent right take effect from the date on which the application, accompanied by the descriptive elements, is made accessible to the public. In respect to the persons to whom the application, accompanied by the descriptive elements, has been notified by the breeder, the effects of the patent rights begin from the date of that notification.
In Italy, economic rights in copyright generally are protected for 70 years after the death of the author; a special duration is established for public entities, whose economic rights expire after 20 years, starting from the first publication of the work. Further special terms of duration are provided for specific figures, such as non-artistic photography, sui generis right on databases, producers of audio-visual works and films. The moral rights are perpetual and are not subject to any kind of fixed term of duration.
The exclusive rights of the maker of a database last for fifteen years from the first of January of the year following the date of completion of the database.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
In general, the first owner of an intellectual property right is the inventor, designer or author who created the work.
Some specific rules are stated with reference to the ownership of the IP rights over the inventions realised during the employment relationship by employees of private companies and public bodies. Article 64 of the IPC distinguish between:
- Remunerated inventions: inventions realised by an employee during an employment relationship governed by a contract that expressly provides for the employee to receive compensation for the inventive activity;
- Non-remunerated inventions: inventions realised by an employee during an employment relationship governed by a contract that expressly provides for the employee to receive which no compensation for the inventive activity;
- Occasional inventions: inventions realised by an employee outside the scope of the duties of the employee, in accordance with the employment contract with the employer, that is nevertheless related to the employer's business and realised using the employer's means.
Article 64 of the IPC does not govern inventions by researchers working within a public university or a public research entity, which are governed by Article 65 of the IPC.
Most employee inventions will fall within either the remunerated invention or the non-remunerated invention category, with occasional inventions occurring far less often.
For remunerated and non-remunerated inventions, the related IP automatically belong to the employer (i.e. economic rights), with the employee however retaining the right to be recognised as the author of the invention (i.e. moral rights).
For occasional inventions, both the economic rights and the moral rights belong to the employee, who can choose to transfer them by a contractual agreement to the employer subject to receipt of a payment.
Payment for remunerated inventions is already provided for pursuant to the employment contract as a part of the total employee remuneration. For non-remunerated inventions the employee has a right to receive "fair compensation" (i.e. equo premio) and this right cannot be waived.
The IPC states that the fair compensation must be determined considering the importance of the invention, the role played by the inventor and the inventor's duties under the employment relationship, and the existence of any contribution granted by the employer; however, the IPC does not offer suggestions as to how these criteria should be applied in practice.
Enacted Law 81, of 22 May 2017, ("Law 81/17") specifically provides rules to govern inventions by free-lance workers, thus creating a difference in the treatment of independent contractors, compared to subordinate employees. Before Law 81/17, Italian courts tended to apply by analogy Article 64 ICP and the rules governing innovations by employees also to inventions by free-lancers.
As a result of Law 81/17, in absence of a specific contractual provisions in the contract with the free-lance worker, the principal will not have any economic right on any inventions by the free-lancer, not even those created in performance of the contract for services.
Therefore, except when the contract provides for the inventive activity to be specifically remunerated, it becomes a crucial issue for both parties to address and specifically regulate this matter from the outset, when drafting or renewing the contract for services.
Apart for patents, a general principle can be derived from some specific disposals, according to which, unless otherwise agreed between the parties, the works created by the employees in the course of their job do not belong to them but to their employers. In particular, this principle is expressly stated for software and database works in the Article 12 bis ICL, for design in Article 12 ter ICL and also for photographic works in the Article 88 ICL. The same provision is also applicable with reference to the works created by the workers employed in public entities such as the State or Universities which, therefore, retain every and all rights arising from those works.
Which of the intellectual property rights described above are registered rights?
Inventions, utility models and new plant varieties may be patented. Trademarks, designs and models, and topographies of semiconductor products may be registered.
Works which are subject to the requirement of deposit shall be entered in the registers, together with the name of the author, the producer, the date of publication and other particulars specified in the law. In the absence of proof to the contrary, registration shall be accepted as proof of the existence of the work and of its publication. The authors and producers entered in the register shall be deemed, in the absence of proof to the contrary, to be the authors and producers of the works attributed to them. Failure to deposit shall not prevent the acquisition or exercise of copyright in respect of works protected under the provisions of ICL.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Individuals or legal entities can register intellectual property rights. All applications and requests, with the exception of what is provided for by international conventions and agreements, are to be filed at the Italian Patent and Trademark Office ("IPTO"), the Chambers of Commerce, Industry and Crafts, and at the other relevant public offices or entities.
Once filed, the IPTO carries out its examination and checks the (i) formal and (ii) substantial requirements of the application (such as the distinctive character for the trademark).
For plant varieties the examination of the requirements of validity as well as the compliance with the provisions laid down in the IPC is carried out by the Ministry of Agricultural and Forestry Policies.
The IPTO, for the purpose of evaluating the patentability of biotechnological inventions, may request an opinion from the National Committee for Biosafety and Biotechnologies.
Copyright protection arises automatically with the creation of the work and the author does not need to comply with any kind of formal requirement or registration to access copyright protection. In Italy there is a public register for copyrighted works, which is physically kept by the Ministry of Culture (Ministero per i Beni e le Attività Culturali) and is annotated and managed by the Italian Society for Authors and Editors (SIAE), the Italian collecting society. Although the copyright will exist automatically with the creation of the work and without any formality for the author, including the record in SIAE register, this optional record gives evidence of the existence and publication of the work itself and the person mentioned in the register is presumed to be the author.
Deposit shall be optional for computer programs and subject to payment of a fee. Photographs shall not be subject to the requirement of deposit.
How long does the registration procedure usually take?
Duration of the registration procedure may vary depending on the IP right.
For patents and utility models the registration procedure usually takes from two to three years.
The procedure to register a trademark lasts roughly 15/18 months.
Do third parties have the right to take part in or comment on the registration process?
Any interested party, without thereby assuming the role of a party in the registration proceeding, may address written observations to the IPTO, reporting observations and oppositions and specifying the reasons for which a trademark should not be registered under Article 175 IPC.
Recently, the number of cases of deposit by third parties of observations or oppositions to the IPTO in relation to patent application for inventions has gradually increased. It is a procedure provided for by other legal systems but not specifically regulated by the IPC in relation to patents. The position of the IPTO has always been that of not considering the content of such observations but merely transmit them to the owner of the application just to inform the latter and to allow the owner of the application to present replies. Both observations and replies are simply stored in the dossier without being examined and therefore without affecting the granting procedure.
What (if any) steps can the applicant take if registration is refused?
Under Article 135 IPC, the decision of IPTO refusing to grant IP rights, may be contested by interested parties before the Commissione dei Ricorsi which is a panel made up of judges and university professors of Law, appointed by the Government. The panel, after hearing the parties, decides the case issuing a decision. Under LD 15/2019, the decision issued by the Commissione dei Ricorsi (i) may be challenged in the last instance before the Italian Supreme Court of Cassation or (ii) revoked ("revocazione") in the specific cases set out in Article 395 of the Italian Civil Procedural Code ("ICPC"), including when the ruling was issued on the basis of evidence that is revealed to be false or was the result of intentional misconduct by the judge or one of the parties involved.
What are the current application and renewal fees for each of these intellectual property rights?
The fees for filing the patent application may vary depending on a number of factors such as the type of application (online or paper-based application), the number of pages of the paper-based application and the number of patent claims. Generally speaking the fees start from 50.00 euro. As for the renewal fees, the price for the first four years from the application are included in the application fees, therefore the patent applicant must pay from the fifth years after the filing and the fees increase from one years to the next and start from 60.00 euro for the fifth year.
The fees for filing the utility model application may vary depending on the type of application (online or paper-based application). Generally speaking the fees start from 50.00 euro. As for the renewal fees, the price for the first five years from the application are included in the application fees, therefore the utility model applicant must pay during the sixth year from the filing a fixed fee of 500.00 euro.
The fees for filing the design application may vary depending on a number of factors such as the type of application (online or paper-based application), the number of design registered. Generally speaking the fees start from 50.00 euro. As for the renewal fees, they are calculated for a period of five years and the price for the first five years from the application are included in the application fees, therefore the design applicant must pay from the fifth years after the filing a price that start from 30.00 euro.
The fees for filing the trademark application may vary depending on the number of class for which the sign is going to be registered. The fees start from 101.00 euro plus 34.00 euro for each additional class and 337.00 euro for a collective trademark for one or more classes. The renewal fees to be paid every ten years from the trademark filing application start from 67.00 euro and 34.00 for each additional class.
The fees for the topographies of semi-conductor products application and registration are calculated in 1011.00 euro for the application and 809 euro for the registration.
The fees for filing the new plant variety application are 236.00 euro, while the renewal fees increase from one years to the next and start from 101.00 euro.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
The IP right owner who fails to pay the renewal fees within the due time may in any case renew it by paying not only the renewal fees but also an extra fee for the late payment within the six months after the expiration of the deadline.
What are the requirements to assign ownership of each of the intellectual property rights described in section A?
Although Italian law does not require any specific procedure or formal requirement, the IP assignments are made in writing, for the purpose of evidence and to be recorded with the IPTO.
Copyrights can be transferred through assignment or licence agreement; the transfer of the rights must be evidenced in writing (Article 110 ICL).
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
According to Article 138 IPC, any IP rights assignment must be recorded with the IPTO. Without recording (at least according to the main interpretation), any agreement is enforceable and binding for the signing parties, but the record is required in order to be the assignee capable of exercising the rights arising under the IP rights also against third parties. Registration is therefore strongly recommended in any scenario. The recording procedure has become easier (in connection with the assignment agreements) under the IPC. Under the IPC, as a fall-back option it is possible to file a declaration in place of filing a copy of the agreement (dichiarazione di avvenuta cessione), even though the IPTO may also require that the declaration is notarised by a public notary and subsequently legalised.
As for copyright, although Italian law does not require a specific or pre-defined type of contract in order to transfer/license/sale copyrights, normally the transfer of the rights must be evidenced in writing pursuant to Article 110 ICL.
What are the requirements to licence a third party to use each of the intellectual property rights described in section A?
Although Italian law does not require any specific procedure or formal requirement, licenses of IP rights are made in writing for the purpose of evidence and to be recorded with the IPTO.
Sometimes the intra-group license may be agreed orally.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Please see answer to question n.12.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Under Italian Law, the owner and the exclusive licensee of an IP right can enforce the IP right. The possibility for the non-exclusive licensee to enforce the licensed IP right remains unclear, although is generally admitted by Italian case-law. Recently LD 15/2019 has expressly set out the possibility for a licensee to file an infringement action to protect a licensed trademark. More specifically, under Article 122 bis of the IPC, a licensee may start infringement proceedings with the prior consent to do so of the trademark owner. Moreover, an exclusive licensee may file an infringement claim if the trademark owner does not start an action soon after being asked to act against the infringement. The licensee is also entitled to intervene in pending infringement proceedings started by the trademark owner, to seek compensation for the damages the licensee suffered.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
There are few provisions related to criminal sanctions set out for the infringement of IP rights. Firstly, there is Article 127 of the IPC that punishes any third party that refused to disclose to the Court the information on the origin and distribution networks of the infringing goods or services advertised/marketed/sold required under Article 121 bis IPC or give false information.
It should be mentioned also Articles 473 and 474 of the Italian Criminal Code that punish any third party that infringe, use, introduce within our country and sell counterfeited goods.
If the infringement is particularly serious, criminal action based on these provisions may be brought by the Public Prosecutor, i.e. ex officio without private prosecution.
The criminal route is frequently invoked in Italy to induce a deterrent effect against the infringement.
As for copyright, the general provision is set out in Article 171 ter ICL that expressly punishes with a fine and imprisonment many types of conducts of third parties who acting for non-personal purposes and without the consent of the copyright holder, duplicate, reproduce, transmit sell or made available to the public in any way protected work. This rule also punishes the conduct of third parties who, although not having taken part in the duplication and reproduction of the protected work, introduce in the territory of the States, sell, rent and in any way make available to the public the work itself. Article 171 bis ICL is dedicated to the punishment of duplication, reproduction, distribution, sale or rent of software and database. The residual provision stated in Article 171 ICL punishes with a fine the conducts that are not included in the above-mentioned rules and further provides that, if the said fact harms the right of paternity, is able to prejudice the reputation of the author or concerns work not publicly available, it will apply the sanction of imprisonment.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in section A? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Under Italian Law the IP owner may react through civil, administrative remedies against the violation of its IP rights.
As for civil court proceedings see answer to question n.19.
As for administrative proceedings, Article 127 (2) IPC punishes with a fine the conduct of anyone who uses untrue words or indications on products that make people believe that there is an IP right. Moreover, unless the facts constitute a criminal offence and even if the fact does not harm third parties, Article 127 (3) IPC also punishes with a fine the conduct of anyone who deletes the trademark of the manufacturers and traders from whom he/she received the goods or uses a registered trademark declared invalid because it is contrary to public order or morality.
With specific regard to copyright, the general rule is set out in Article 174 bis ICL, which states that, without prejudice to the criminal sanctions, every copyright infringement may also be punished by means of a fine, the amount of which is double the price of the copyrighted work and is applied for every and each violation ascertained or for each counterfeit product made. This administrative sanction can be applied together with the criminal sanction at the end of the criminal proceeding. Another provision is set out in Article 174 ter ICL that shall apply residually, only if the conduct cannot be qualified as a crime. Under this rule, a third party who uses, duplicates or reproduces copyrighted works without the consent of the copyright-holder is to be punished with a fine, the seizure of the copyrighted materials and also through the publication of the administrative sanction in one or more journals. This measure, in contrast to the previous one, can be applied only if the infringement does not qualify as a crime. Finally, under Article 171 (4) ICL, an infringer who exceeds the limit established for the personal copy of protected work and does not pay the related fees, may be punished with the administrative fine and the suspension of copy or reproduction activity.
As for alternative dispute resolution, the parties to a dispute can opt for mediation through the service rendered by ADR entities. A mediation clause could also be inserted in a previous agreement concerning the licence or the assignment of an IP rights. Furthermore, in the context of a legal dispute, the judge can suspend the proceedings, ordering the party to attempt a mediation.
Currently, the predominant view that disputes concerning Italian intellectual and industrial property rights can be resolved by way of arbitration finds its bases in Italian law. This is namely the notion that IP rights are disposable and, following a recent change in law, that IP disputes no longer require the involvement of the public prosecutor. It is also possible to defer to arbitration matters involving liability in tort, subject to an agreement including a specific covenant that expressly provides that "future disputes relating to one or more specific non-contractual relationships will be deferred to arbitration." Often, however, the above wording is not included in arbitration clauses that govern trademark license agreements, which provide for arbitration exclusively in the case of disputes arising from the license agreement.
What is the length and cost of such procedures?
As for the length of such procedures, there is no timeframe fixed by statutory provisions, but ordinarily the first instance proceedings may last for 1-3 years, while the appeal proceedings on the merits last about 2-3 years.
The cost of such procedures may vary. Typically, the costs are mainly related to the administrative filing fee, which is twice the normal administrative filing fee established for proceedings before the Tribunal, to the collection of evidence (such as, for example, the opinion of the technical expert) during the proceedings and to the lawyer's fees. With reference to the lawyer's fees, lawyers and their clients may agree in writing different legal fees. The most common legal fee structures are: hourly rates, estimated fees with a cap and flat fees. If no agreement has been reached, Italian law provides for a mandatory fixed tariff system, which sets out the amount of fees due by the client for every stage of the proceedings. Moreover, according to Article 91 of the ICPC, the judge in the sentence condemns the losing party to reimburse the legal fees of the prevailing party. In the case that the judge held only in part or rejected reciprocal claims, the fees could be declared reciprocal compensated.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The owner has several options to react against infringement of IP rights depending on the scale and type of infringement, and the value of the infringed trademark. The owner might commence civil and/or criminal proceedings and can alert the customs authorities in the case of counterfeiting. A range of interim measures is available in civil proceedings.
In proceedings on the merits, the right-holder can request declaratory judgment, definitive injunction, definitive removal from the market of the counterfeit goods, their destruction, assignment of infringing goods, publication of the judgment and award of damages.
As from 1 July 2003, specialized divisions, spread all over the Italian territory, have exclusive jurisdiction on IP matters. Article 2 of Law Decree No 1 of 24 January 2012 renames the Special Section in Industrial and Intellectual Property as the Special Section for Enterprises (Sezioni per le Imprese).
Infringement proceedings can be established before the forum of the alleged infringer (forum rei) or before the court where the infringement has occurred (forum commissi delicti).
Italian Law does not require formalities such as a cease-and-desist letters or mediation before commencing infringement proceedings, but it is rather common in Italy for the IP rights owner to send a cease-and-desist letter as a first action, in order to reach a solution – and stop the infringement – faster and without commencing judicial action. However, under Italian law, whilst the granting of injunction is based on strict liability principles (i.e. regardless of any culpability), the compensation for damages can be awarded only if the infringing party have acted with malice or in a negligent way. Typically, the subjective element is presumed for those who manufacture/import a patented product, whilst a greater degree of awareness must be proven for those who merely offer and market a patented product. In that case, the previous sending of the warning letter informing the recipient of the existence of the IP right and requesting it to restrain from or cease carrying out any act that may constitute an infringement of such a patent could be helpful. In any event, the pros and cons of sending warning letters should be assessed on a case-by-case basis.
After this stage, a claimant that wants to bring an action, has to serve upon the counterparty a writ of summons (atto di citazione). The writ of summons is drafted and signed by legal counsel with authority (by power of attorney) to sign on behalf of his client. The writ of summons must contain all the elements necessary to identify the claim and causes of action, and must contain the vocation in ius (summons to court). Between service of the writ of summons and the date given for the first hearing, the defendant has at least 90 days (or 150 days in the case of a defendant residing abroad) to prepare its defence. The writ of summons must be filed at the court after service in order for the case to be entered on the court register and assigned to a specific judge. Italian ordinary civil proceedings are essentially “written”, based on the filing of pleadings exchanged between the parties and made up of a number of hearings fixed by law, each devoted to certain activities. After the statement of the defendant, the plaintiff can slightly modify or amend his/her claims, in the light of the objections and possible counterclaim raised by the defendant; however, the plaintiff cannot submit a completely new claim (the so- called mutatio libelli is forbidden).
As for the duration of such proceedings, see answer to question 18.
The first instance decision may be appealed before the specialised section of the competent Court of Appeal, which also has full authority to revoke the first decision on the merits.
The decisions of the Court of Appeal may be challenged before the Italian Court of Cassation only on certain grounds, therefore it is excluded a new scrutiny on the factual background of the dispute.
What customs procedures are available to stop the import and/or export of infringing goods?
The IP owner may seek the assistance of the Italian customs authority to prevent the importation of counterfeit products.
In this regard, the European Parliament and the Council have introduced Reg. 608/2013/EU repealing the earlier Reg. 1383/2003/CE. The new Regulation, which took effect on 1 January 2014, creates procedural rules for customs authorities to detain counterfeit or pirated goods. In particular, in order to protect its rights, the IP owner can activate the customs surveillance by filing an application in writing before the customs Authority providing accurate and detailed information of the original products. Therefore, if the customs Authority has valid grounds to suspect that infringing goods are going to be introduced in the market or detect infringing goods at the border, it will proceed immediately, suspending the release of those goods for a limited period of ten days. After that period, the customs Authority may proceed to the destruction of the infringing goods if the owner of the suspected products does not file an objection or agrees with the decision of destruction. Further, the customs authorities may act not only when requested by the copyright-holder, but also on their own initiative. Therefore, if they suspect that counterfeit goods are going to be introduced and marketed, they will suspend the release of those goods.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Under Italian Law the claimant does not have to comply with any preliminary requirement or condition such as dispute resolution mechanisms or non-court enforcement options before commencing judicial proceedings.
What options are available to settle intellectual property disputes in your jurisdiction?
The parties involved in an IP related dispute, may decide to settle their issue by entering into a private settlement agreement through which the parties withdraw their action and waive any claim in relation with the issue at hand. The parties can settle the case at any stage and phase of the proceedings. The settlement could be reached even before (in order to avoid the litigation) or after the decision (in order to avoid or modify the enforcement of the decision). Generally, the settlement is reached through negotiations, including between lawyers.
Alternatively, the parties may settle their issue and opt for a mediation through the service rendered by ADR' entities. In the context of a legal dispute, the judge has also the power to invite the parties to settle the case and can schedule a specific hearing for this purpose.
What is required to establish infringement of each of the intellectual property rights described in section A? What evidence is necessary in this context?
Generally speaking an IP rights is considered to be infringed when a third party starts using and exploiting the related rights without the IP owner's consent.
Particularly with regard to trademarks, the claimant should prove that third parties (i) are using signs which are identical to the prior trademark for identical goods or services; (ii) using signs which are identical or similar to the prior trademark for identical or similar goods or services and creates a likelihood of confusion for the consumer; (iii) are using signs which are identical or similar to a well-known trademark provided that the use of such sign cause to its user unfair advantage arising from the distinctive character of the well-known trademark and is detrimental for the well-known trademark's owner. In the latter case, under Article 20 of the ICP, as amended by LD 15/2019, a trademark owner may prevent third parties from using signs that are identical or similar to a well-known trademark even if such identical or similar signs are not used to indicate the source of goods or services. Therefore, under Article 20 of the ICP, as amended by LD 15/2019, even the "non trademark use" constitutes an infringement.
With reference to the design, the claimant should demonstrate that the counterfeited design or model produces the same visual impression as of the prior design or model.
As for the copyright the claimant should establish that third parties are exploiting the economic rights connected to the protected work for example reproducing, making available to the public or anyway using the copyrighted work without the prior authorization of the copyright holder.
In the patent related disputes, the claimant should prove the infringement, that is to say the unauthorized making, using, offering for sale or selling of any patented invention (the so called "direct infringement"). It should be noted that in the past, only direct infringement was codified in the IPC while indirect infringement was based on case law only. With the implementation of the Unified Patent Court Agreement by the Law no. 214/2016, Italy has introduced a specific rule on indirect infringement. More specifically under Article 66 (2bis) IPC a patent confers the patent owner the exclusive right to prevent any unauthorised third party from supplying or offering to supply any unauthorised person with means, relating to an essential element of that invention, for putting it into effect therein. This applies only when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.
With reference to trade secrets, the trade secret holder should prove that a third party used or disclosed the trade secret without his/her consent. Under article 99 of the ICP as amended by Legislative Decree 63/2018, also the acquisition, use or disclosure of a trade secret shall be considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew or, under the circumstances, ought to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secret unlawfully. Moreover, article 99 of the ICP, as amended by Legislative Decree 63/2018, further specifies that the production, offering or placing on the market of infringing goods, or the import, export or storage of infringing goods for those purposes, shall also be considered an unlawful use of a trade secret where the person carrying out such activities knew, or, under the circumstances, ought to have known that the trade secret was used unlawfully.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular – a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Under Italian Law the evidence and information must be provided by the parties involved in the proceedings and the court should freely assess them (see also answer to question n.25).
With this regard the interested party, in order to collect evidence before trial, may ask to the Court for the search order (descrizione). The search order can be asked for as an interim measure, before the opening of the ordinary proceedings, or during the ordinary proceedings of infringement. The disclosure/discovery is enforced with a clerk of the court and a court's expert appointed by the judge. The disclosure/discovery order shall be confirmed by the judge in following a hearing with all the parties involved.
Moreover, during the proceedings, the IP owner is also entitled to request the infringer to disclose any information on the origin and distribution networks of the infringing goods or services advertised/marketed/sold ("right of information"). Such information might include the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, and information on the quantities produced, manufactured, delivered, received or ordered, in addition to the price obtained for the goods or services thereof.
Additionally, further information in the form of a technical opinion may be provided for during the proceedings by experts in IP related matters. Particularly, experts in IP related matters can be involved in the court proceeding both as consultant of the parties concerned or as neutral counsellors who are appointed by the Tribunal to provide an informed opinion on the case subject as a neutral third party whenever the case at hand is technically complex.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Art. 116 Italian Civil Procedural Code states the principle pursuant to which the Court is free to assess the evidence provided by the parties, unless otherwise stated by the Law. Therefore, there is no kind of pre-fixed rules for the evaluation of the evidence for the judges, but they must explain their motivation in their rulings.
Under Italian Law cross-examination is not admissible.
What defences to infringement are available?
The alleged infringer may use some defences in order to paralyse the infringement legal action brought against it. Therefore, the alleged infringer may claim for example:
- the invalidity of the contested IP right,
- the existence of a license of the contested IP right,
- the use of the contested patent for private, non-commercial or experimental purposes,
- the study or experimentation made to obtain the marketing authorisation for medicinal products,
- the nullity and/or the weakness of the trademark;
- the lack of genuine use of the trademark; and
- the fact that the trademark has been made in bad faith. Under Italian law, registration of a trademark in bad faith is prohibited. According to Italian scholars and case law, there is a lack of clear criteria for what constitutes bad faith. However, opinions suggest that trademarks may be considered to be made in bad faith if they are not used but obstruct the registration of a third-party trademark.
Who can challenge each of the intellectual property rights described above?
The grounds of challenge are distinguished between absolute and relative grounds.
Absolute grounds of cancellation are ones in which there are no prior private rights or interests violated by the registration of the IP rights. According to Article 122 (1) of the IPC, absolute grounds of cancellation could be invoked by everyone with a legitimate interest (e.g., a competitor in the case of a deceptive trademark) and by the public prosecutor.
Relative grounds of cancellation concern a prior right owned by a third party (e.g., prior registered or non-registered trademark). In those cases, the claim could be made only by the right-holder (Article 122 (2), IPC).
The grounds of revocation are considered absolute grounds and therefore could be invoked by everyone with a legitimate interest and by the public prosecutor (Article 122 (1), IPC).
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Under Italian Law, the validity of the IP rights may be challenged by the interested parties after the granting of the IP rights by bringing legal action against the IP owner, while for the trademark it is possible to challenge the validity of the right also during the registration process through the opposition phase. Particularly, Article 176 of the IPC states legal grounds for the opposition as:
- the rights deriving from the registration of a national trademark or a foreign trademark with effect in Italy that is identical to the trademark to be opposed and registered for identical products and services (Article 12 (1) let. (c) of the IPC);
- the rights deriving from the registration of a national trademark or a foreign trademark with effect in Italy that is similar and registered for identical or similar products and services (Article 12 (1) let. (d) of the IPC); or
- the lack of consensus by the natural or legal person entitled to the name, surname or personal image, in the case of registration of a trademark of a name, surname or image belonging to person different to the registrant (Article 8 of the IPC).
The deed of objection must be filed before the IPTO within three months from:
- the date of publication in the Official Gazette of company trademarks of the application for registration of a trademark considered recordable by the IPTO (Article 170 let. (a) of the IPC);
- the date of publication in the Official Gazette of company trademarks of registration of a trademark, the application of which has not been published (Article 179 (2) of the IPC); or
- the first day of the month following the publication in the WIPO International Trademark Gazette of the registration of the international trademark.
The deed opens the administrative proceedings before the IPTO, which lasts from 24 to 36 months.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Under Article 120 IPC, the IP related proceedings shall be brought before the court where (i) the defendant has its residence or domicile; if not applicable, where (ii) the plaintiff has its residence or domicile; or, if not applicable, (iii) before the Court of Rome. The domicile could be determined considering the domicile indicated in the IP rights registration form. In the case of claim of infringement, the proceedings can also be brought before the court where the infringement occurred.
As for the procedure, see answer to question n.19.
The invalidity of the IP rights may be claimed on the basis of certain grounds:
- The invalidity of the patent can be declared when the invention (i) does not fall within patentable subject matter, (ii) is not new; (iii) does not imply an inventive step; (iv) is not capable of industrial application.
- As for design, the claimant should demonstrate that the design is not new and that (i) it does not have individual character, (ii) that is contrary to public order or morality or (iii) that its features are dictated by the technical function performed.
- With regard to trademarks, the claimant, in order to obtain a declaration of invalidity of the sign, should demonstrate that the trademark (i) lacks distinctive character, (ii) is identical or similar to previous registered or unregistered trademarks, (iii) is contrary to law, public order and morality, (iv) infringes other IP rights.
- With reference to copyright, considering that a copyrightable work should be the expression of the author's creativity and the result of its intellectual creation, the claimant may claim the invalidity of the copyright by proving that the work lacks originality, that is to say it is similar to prior works.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?
In Italy a method frequently used to remove the effect of the IP rights (particularly for trademark and patent) are the non-declaratory infringement claim. In other words, the potential defendant may start interim proceedings or proceedings on the merits requesting to the Court a declaration that its conduct or activities do not infringe the IP rights at hand and a compensation for damages eventually suffered.
The prior use represents another case where the effect of the IP rights may be limited. As for the prior use of an unregistered trademark, under Article 2571 Italian Civil Code and Article 12 IPC the owner of an unregistered sign which has been used before the registration of the second trademark, may keep going on using the unregistered trademark provided that this sign (i) is not well-known, or (ii) is well-known only locally. As for the prior use of an invention identical to patented invention, under Article 68(3) IPC whoever has used the invention within the period of 12 months before (i) the filing of the patent application or (ii) the priority date, may keep going on using the said invention in the same manner and with the same limits as before.
Finally, we should consider also the compulsory licenses. In Italy, the IPTO may grant compulsory license when (i) the patent holder does not exploit the rights arising from the patent within 3 years from the granting or 4 years from the filing patent, or when (ii) the patent holder cannot exploit its rights because of the existence of a prior patent; therefore the holder of the second patent may be granted a compulsory license of the first patent (Article 70-73 IPC).
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?
According to Articles 129 and 131 of the IPC and in compliance with the rules of the ICPC concerning precautionary proceedings, a registered trademark owner could request:
- the measure of injunction from manufacturing, trading and using anything infringing the right;
- the seizure of any infringing goods; and
- an order to recall of any of the same infringing goods.
The granting of preliminary measures requires two fundamental conditions. Firstly, fumus boni iuris, which implies, on the balance of probabilities, the existence of infringement and 'apparent' IP right validity.
In other words, full evidence of the infringement is not requested; in fact, fumus boni iuris implies that the claimant has to prove that he is entitled to enforce his alleged rights and that there are good reasons to believe that these rights are indeed being infringed by the defendant. Secondly, periculum in mora (urgency) needs a demonstration that the delay incurred in ordinary litigation will generate an 'irretrievable loss'. According to certain case law, periculum is in re ipsa whenever the infringement implies a concrete risk of passing off potentially irreversible and, at the same time, damage quantification is difficult.
According to general Italian civil proceeding law, the content of certain precautionary judgments can become stable without the need to start an action on the merits, upon the condition that the precautionary judgment is suitable to anticipate the content of the hypothetical final decision to be delivered by the judge at the end of a proceeding on the merits (Article 669-octies (6), (7) and (8) of the ICPC).
With specific reference to Italian IP legislation, according to some scholars, the interim injunction (which prevents an entity from keeping an unlawful behaviour concerning an IP right) falls within the scopes of application of the above-mentioned rule set forth by Article 669-octies (6), (7) and (8) of the ICPC. In particular, the content of an interim injunction (i.e., the order to stop a determined behaviour) is mostly the same as one of an injunction ordered at the end of an action on the merits and, therefore, if none of the parties starts the action on the merit, the effects of the interim injunction remain stable, as confirmed by Article 131 (1-quarter) of the IPC.
On the other hand, a different doctrine retains that the above-mentioned rule contained in the IPC breaches the principles set forth in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), where it is stated that measures taken on an interim basis shall "cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer" (Article 50 (6), TRIPs Agreement). Therefore, on the basis of the here mentioned theory, the party that obtained an IP interim injunction should go on the merits to try to stabilize the effects of the same injunction, in order to comply fully with the provisions of the TRIPs Agreement.
The final remedies are regulated by Articles 124-127 of the IPC and they include (i) final injunctive relief and/or withdrawal from the market of the products with the infringing sign, with possible penalty for each day of delay in the enforcement of the measure; (ii) seizure or destruction of the counterfeiting products; and (iii) publication of the decision in the Italian press.
The owner may also claim for damages.
They can include the actual damage and the loss of profits, and could be quantified in three alternatives as follows:
- damages award to be evaluated (often after appointment of a court expert) on the basis of the following criteria (or combination of them): all negative economic consequences, including loss of profits suffered by the right-holder; counterfeiter’s profits and benefits; and, in appropriate cases, non-economic factors, such as moral damages;
- as an alternative, a lump sum based on equity (without the appointment of a court expert), but an award for loss of profits cannot be lower than a reasonable royalty; and
- in any event, a trademark owner's right to ask for the full recovery of the counterfeiter’s profits instead of compensation for damages (for loss of profits) or to the extent to which they exceed such damages.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
In principle, lawyers and their clients can agree in writing different legal fees. The most common legal fee structures are hourly rates, estimated fees with a cap and flat fees. If no agreement has been reached, Italian law provides for a mandatory fixed tariff system, which sets out the amount of fees due by the client for every stage of the proceedings. According to Article 91 of the ICPC, the judge in the sentence condemns the losing party to reimburse the legal fees of the prevailing party. In the case that the judge held only in part or rejected reciprocal claims, the fees could be declared reciprocal compensated.