Constitutional court changes the rules for IP matters

In a decision dating from April 18 2007 but published on May 17 2007, the Italian Constitutional Court has declared as unconstitutional Article 134(1) of Legislative Decree 30 of February 10 2005 (also referred to as the Italian Code of Industrial Property), which applied the procedural rules of corporate litigation to lawsuits relating to industrial property rights, unfair competition and, more generally, to the matters under the exclusive jurisdiction of the Italian IP specialized court divisions, which deal with issues relating to:

• national, international and Community trademarks;
  
  
• patents for inventions and new plant varieties;
  
  
• utility models;
  
  
• design and copyright; and
  
  
• IP-related unfair competition disputes.

The application of the procedural rules of corporate litigation to IP law suits, originally introduced in 2005, was essentially aimed at speeding up proceedings and reducing the number of mandatory hearings.

In its ruling, the Constitutional Court held that the provision of the Industrial Property Code at issue was unconstitutional since it was based on a power wrongfully issued under Law 273 of December 12 2003. Law 273 in fact provided the government with the power to issue a code that would gather together and harmonize all the existing provisions in the IP field. It did not require the application of corporate rules of procedure to lawsuits under the jurisdiction of the specialized IP divisions as this had led to the courts applying rules that differed from those used in the course of ordinary litigation.

Under the Italian legal system, the publication of the Constitutional Court's decision has resulted in the immediate cancellation of Article 134(1) of Legislative Decree 30/2005. Thus, all the new lawsuits commenced after May 17 2007 have been handled according to the general rules of civil procedure. Proceedings which commenced prior to the decision and which are currently pending will have to be converted from one procedure to the other.

In light of recent amendments to the Civil Procedure Code, which were also aimed at speeding up ordinary litigation, it is difficult to predict the type of impact that the Constitutional Court's decision will have on the timeframe of IP litigation. Further, the exact way in which the conversion process from corporate procedure to civil procedure for cases commenced before the court's ruling remains unclear.

Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan