1 June 2014Jurisdiction reportsMatteo Orsingher and Fabrizio Sanna

Business brief 2014: Italy

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

As far as the Italian territory is concerned, an application for a patent can be filed with the Italian patent and trademark office (the UIBM) or the European Patent Office (the EPO).

The European patent granted by the EPO covers Italian territory if a translation is filed with the UIBM. The most appropriate territorial scope of the patent protection sought by the applicant depends on his commercial strategy. We usually advise clients to cover at least the main markets and countries where production is carried out by competitors.

What are the costs for obtaining a patent, and what are the costs of defending it?

Application costs are quite low, while the expenses related to the patent attorney and translation fees may be material, depending on the relevant field and if the prosecution of the patent requires amendments and correspondence with the EPO. The cost of defending patent rights in Italy is materially lower than those typical in other western jurisdictions (not only the UK and the US, but also Germany and France).

Where can you find information on existing patents in your jurisdiction?

For patent applications as well as for patents granted, one may search an online database, available on the UIBM website, but this provides only very basic information. For information related to European patents which are enforceable within the Italian territory, one may refer to the EPO’s online database.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

The European patent is just a simplification of the granting procedure but, despite its name, it does not represent a unique title enforceable throughout Europe. Once granted, a European patent must be validated in each single European country. In Italy the validation procedure requires the translation of the patent into Italian. This is not just a formal requirement, since cases of infringement are judged on the basis of the Italian translation of the European patent (ie, if the scope of protection resulting from the translation is narrower than that conferred by the European patent, the former will be enforced).

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Interim relief is the most efficient way to enforce patent rights in Italy, most notably by preliminary injunction and/or seizure. Italian courts are able to reach a first interim decision in about six to eight weeks from the filing of an application. Interim measures are usually granted after the court has heard both parties, although in exceptional circumstances the court may make an ex parte ruling.

Furthermore, in order to secure evidence of the infringement and its seriousness, patent holders in Italy commonly apply for a preliminary search order (descrizione). The purpose of this is to allow the patent holder to access the infringer’s sites, production facilities, warehouses, and accounting information. Only prima facie evidence of an alleged infringement is required to apply for the search order, which is not infrequently granted ex parte, in order to avoid the defendant’s attempts to impede the applicant’s enforcement of the order.

The order is enforced by a bailiff and a technical expert appointed by the court. The applicant is usually authorised by the court to take part in the enforcement activities and to appoint its own technical expert(s).

Have there been any changes to the patent law(s) in the last 12 months?

Italy has joined the Unified Patent Court, but is not part of the Unitary Patent system yet.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

Although Italian law also grants protection to unregistered trademarks, registration is the most effective way to secure protection of owners’ rights. As far as the Italian territory is concerned, application for a trademark can be filed with the UIBM, with the Office for Harmonization in the Internal Market (OHIM) and by applying for international registration extended to Italy.

Developments in case law have made trademark laws more effective in combating trademark infringement, in particular free riding. Recent decisions hold that taking unfair advantage of a trademark does not necessarily require a likelihood of confusion. This offers rights holders an effective tool to protect their efforts in developing the ‘selling power’ of their brand.

What are the costs for registering a trademark, and what are the costs of defending it?

Application costs are €160 for an Italian trademark and €900 for the European trademark, plus trademark attorney fees. The costs of defending trademark rights in Italy are lower than those in many other western jurisdictions.

What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?

Interim relief is also the most efficient way to enforce trademark rights in Italy (see above on patents). It is not uncommon in Italy for the parties to settle the dispute on the basis of the outcome of the preliminary proceedings.

What are the most common mistakes trademark owners make?

To apply for interim measures the trademark owner must provide adequate evidence as to (i) the likelihood of success on the merits; and (ii) the likelihood of irreparable harm. If the trademark owner delays the application for injunctive relief for too long after having had knowledge of the infringement, this inactivity might be regarded by the court as proof that he is not in urgent need of preliminary relief (ie, lack of the irreparable harm).

There are no statutory or case law rules by which the ‘delay threshold’ can be precisely assessed, but the holder's reaction would be sound only if started within a couple of months from knowledge of the infringement.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

New media and the internet represent key challenges for copyright holders.

What is the best way to deal with infringement, and what are the costs associated with it?

In case of copyright infringement, the most effective way to react is to apply to the court for interim relief (see above on patents). Please also note the new procedure described below.

Have there been any changes to the copyright law(s) in the last 12 months?

In December 2013 the Italian communications authority Agcom issued a regulation on protection of copyright on electronic communication networks. This regulation came into force on March 31, 2014. The regulation provides for a procedure for the protection of copyright/neighbouring rights in a number of categories of works, ie, audiovisual, music, photographic, video games, e-books, software works (defined as ‘digital works’) made available to the public via communication networks (ie, through uploading on websites and broadcasting over TV platforms).

Any entity that believes a digital work made available on a website infringes its rights may file an application with the authority requesting its removal within 12 days from the filing of the application. If the application is not manifestly without grounds, the authority notifies the relevant hosting provider, the mere conduit provider and the entity that uploaded the infringing content. If the content is not removed and the authority is satisfied that a copyright/neighbouring right infringement is carried out on a website, the authority may adopt suitable measures (including an order to the access provider to prevent access to the website from Italian territory).

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Between 2008 and 2011, the relevant Italian authorities (Agenzia delle Dogane and Guardia di Finanza) made more than 71,000 seizures, confiscating over 229 million counterfeit goods. The value of all counterfeit products seized during the above mentioned period has been estimated at approximately €1.8 billion.

What industries are particularly at threat?

Fashion and food, given the long-standing reputation of Italian firms in these sectors.

What are the best strategies for dealing with the problem?

Different actors are involved, including IP rights holders, judicial and political bodies. However, it is essential for rights holders to adopt suitable measures (including registration, market monitoring and enforcement) to protect their intellectual and marketing assets.

Matteo Orsingher is a partner at Orsingher Ortu–Avvocati Associati. He can be contacted at: matteo.orsingher@orsingher.com

Fabrizio Sanna is a partner at Orsingher Ortu–Avvocati Associati. He can be contacted at: fabrizio.sanna@orsingher.com

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