Italy: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in Italy.

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

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/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).

    (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
    Inventions can be protected under Italian law through:

    Patents: provided that inventions (i) are new; (ii) imply an inventive activity; and (iii) are suitable for industrial application;

    Supplementary protection certificates: if time elapsed during the period between the date of application for the patent and the market authorization and therefore the patent holder could not exploit his economic rights. Supplementary protection certificates grant an additional period to the duration of the patent of up to 5 years;

    Utility models: for new models apt to provide particular efficacy or convenience of application or use for machines, or parts thereof, instruments, tools or functional objects in general;

    Confidential information: as long as such information (i) is confidential; (ii) has an economic value; and (iii) is subject to measures to be considered reasonably adequate to keep it confidential.

    (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
    Any sign capable of being represented graphically and, in particular, words, including personal names, designs, letters, numerals, sounds, the shape of goods or of their packaging, the color combinations or tones, provided that such sign is capable of distinguishing the goods or services of one undertaking from those of other undertakings, may be protected as a trademark.

    Unregistered trademarks are more often enforced though unfair completion claims.
    Persons whose function is to guarantee the origin, nature or quality of specific goods or services, may obtain the registration for specific trademarks as collective marks and may grant the use of the marks to producers or traders. In Italy, therefore, collective marks and guarantee or certification marks converge in the one and only category of collective marks.

    Protection is granted to geographical indications and designations of origin identifying a country, region or locality, when adopted to designate a product originating from that place and whose qualities, reputation or characteristics are due exclusively or essentially to the geographical environment of its origin, including natural and human factors and traditions.

    (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semi-conductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
    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. Computer programs shall also be protected as work as defined by the Italian Copyright Law ("ICL").

    Registrations as designs and models may be granted to the appearance of the whole or a part of the product, resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product or its ornamentation, provided that the same are new and have an individual character.

    Irrespective of the eligibility of that database for protection by copyright or by other rights and without prejudice to its contents or part of its contents, the maker of a data base shall have the right to prohibit any act of extraction or re-utilisation of all or of a substantial part of it.

    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.

    Protection is granted to business information and technical-industrial experience, including commercial information and experience, subject to the legitimate control of the owner, as long as that information: (i) is confidential, in the sense that as a whole or in its precise configuration and combination of its elements it is not generally known or easily accessible for experts and operators in the field; (ii) has an economic value inasmuch as it is confidential; (iii) is subject, by the persons to whose legitimate control it is subject, to measures to be considered reasonably adequate to keep it confidential.

    Protection shall also be granted to data relating to tests or other confidential data, whose processing entails a considerable effort and whose presentation is conditional upon the marketing authorization of chemical, pharmaceutical or agricultural products implying the use of new chemical substances.

  2. 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 complementary certificate of protection produces the same effects as the patent to which it refers, limited to the part or parts of it covered by the marketing authorization. The effects of the complementary certificate of protection enter into force from the time at which the patent reaches its natural expiration under law and last for a time equal to the period that passed between the date of filing of the patent application and the date of the order by which the first marketing authorization of the medicine is granted. The duration of the complementary certificate of protection may in no case be greater than eighteen years, starting on the date on which the patent reaches its natural expiration under law. A patent for 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 breeder's 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.

    The exploitation rights of a work under ICL shall subsist for the lifetime of the author and until the end of the seventieth calendar year after his death.

    The exclusive right of the maker of a data base shall run from the date of completion of the making of the database. It shall expire fifteen years from the first of January of the year following the date of completion.

  3. 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. If the inventive/creative activity is specifically provided for and specifically remunerated in the contract between the worker and the employer, then the employer acquires automatically all the intellectual property rights in the work created, invented, designed or developed by the worker. Where however the contract provides for the performance of inventive/creative activity, but does not provide for specific remuneration, then the IP rights belong originally to the employer, which must however compensate the employee, by paying a "fair reward", which may be significant (i.e., it is not nominal, but aims to compensate the employee). In the case of a freelance worker, if the contract does not provide for both (i) the worker to perform inventive/creative activity and (ii) specific remuneration for such activity, the IP rights belong to the worker originally. The freelance worker and the principal will have to agree, following private negotiations, to the price and other terms of the transfer of the IP rights.

    The first owner of a registered trademark is the applicant.

  4. Which of the intellectual property rights described above are registered rights?

    Inventions (and supplementary protection certificates), 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 Regulations. 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.

  5. 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 checks the formal requirements of the application and carries out its examination.

    For plant varieties the examination of the requirements of validity as well as the compliance with the provisions laid down in the Italian Industrial Property code ("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

    With regards to copyright, a general public register of works shall be established in the Office of the President of the Council of Ministers. The SIAE (Italian Copyright Collecting Agency) shall keep a special public register for cinematographic works as well as a special public register for computer programs. The authors and producers of works and products protected by the ICL, or their successors in title, shall deposit with the Office of the President of the Council of Ministers one specimen or copy of the work or product. In the case of dramatic-musical or symphonic works of which the orchestral scores have not been printed, it shall be sufficient to deposit one copy or specimen of the version for voice and piano or for piano only. Deposit shall be optional for computer programs and subject to payment of a fee. Photographs shall not be subject to the requirement of deposit.

  6. 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.

  7. 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.

    Recently, the number of cases of deposit by third parties of observations or oppositions to the IPTO in relation to patent application for inventions or supplementary protection certificates has gradually increased. It is a procedure provided for by other legal systems but not specifically regulated by the IPC relation to patents and supplementary protection certificates. 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.

  8. What (if any) steps can the applicant take if registration is refused?

    Under art. 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 that may be challenged in last instance before the Italian Supreme Court of Cassation.

  9. 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 and start from 101.00 euro and 34.00 for each additional class. The renewal fees to be paid every ten years from the trademark filing application start from 64.00 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.

  10. 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.

  11. What are the requirements to assign ownership of each of the intellectual property rights described above?

    Italian law does not require any specific procedure or formal requirement to assign an IP rights, but normally it is made in writing, including for the purpose of evidence.

  12. 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.

  13. What are the requirements to licence a third party to use each of the intellectual property rights described above?

    As for the assignment also for licensing IP rights, Italian law does not require any specific procedure or formal requirement, but normally it is made in writing, also for the purpose of evidence.

  14. 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, under section C.

  15. 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.

  16. 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. The main rules are Article 127 of the IPC and Articles 473 and 474 of the Italian Criminal Code that punish the infringement, use or introduction within our country of counterfeited goods.

    If the infringement is particularly serious, criminal action based on these provisions may be brought by the Public Prosecutor, i.e. 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.

  17. What other enforcement options are available for each of the intellectual property rights described above? 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.

    Furthermore, Italian intellectual and industrial property rights, can be resolved also by way of arbitration. Although it is possible in Italy to use Alternative Dispute Resolution mechanisms to settle IP related proceedings, typically the IP owner has an interest in commencing judicial proceedings, for example, in order to be granted urgent measures by the judge or to obtain a judicial decision which is normally enforceable.

  18. 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 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 Italian Code of Civil Procedure, 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.

  19. 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.

    In Italy, legal disputes on IP-related matters, including copyright infringement, are entrusted to the Special Sections for Enterprises of the ordinary Court located in every Italian district (Legislative Decree No 168/2003). 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.

    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.

  20. 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.

  21. 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.

  22. What options are available to settle intellectual property disputes?

    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.

  23. What is required to establish infringement of each of the intellectual property rights described above? 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.

    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 that the contested product or process reproduces or has been made using a process that reproduces the patent’s claims.

  24. 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.

  25. 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.

  26. 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 descriptive use of the contested trademark,
    • the registration in bad faith of the contested trademark.
  27. Who can challenge each of the intellectual property rights described above?

    Under art. 122 CPI the IP rights may be challenged by any interested party or by the public prosecutor ex officio. In certain cases specifically set out for trademark and design or models only the owner of previous right may challenge the validity of these IP rights.

  28. 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 after the registration process through the opposition procedure. 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.

  29. 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 novel and that it does not have individual character, that is contrary to public order or morality or when 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) cannot be graphically represented, (iv) is contrary to law, public order and morality, (v) infringe 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.
  30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, 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 art. 2571 Italian Civil Code and art. 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 art. 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).

  31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?

    In proceedings on the merits, the IP owner 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 for the interim measures, an IP owner could request:

    • the measure of injunction from manufacturing, trading and using anything infringing the right;
    • the seizure of any infringing goods; and
    • the 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 Italian Civil Procedural Code).

    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 abovementioned rule set forth by Article 669-octies (6), (7) and (8) of the Italian Civil Procedural Code. 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 merits, 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 abovementioned rule contained in the IPC breaches the principles set forth in the 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 theory mentioned herein, the party that obtained an IP interim injunction should go on the merits in order to try to stabilise the effects of the same injunction, in order to comply fully with the provisions of the TRIPs Agreement.

  32. 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?

    See answer to question 18.