New Industrial Property Code now in force
The new Italian Code of Industrial Property Rights (Legislative Decree 30 of February 10 2005) came into force last week. The new code repeals over 40 national laws on industrial property rights and will apply to all proceedings - including those related to infringements of antitrust or competition laws - concerning patents, trademarks and other industrial property rights.
In addition to amending and clarifying the operation and protection of industrial property rights, the code introduces new measures that significantly change the procedure for filing and examining applications, thereby bringing the rules in line with provisions imposed under international patent and trademark treaties. Moreover, the code brings into effect substantial amendments in relation to the system for appeal against decisions of the Italian Patent and Trademark Office which, although slightly more complicated than the previous system, will render these procedures more comprehensive and effective.
The new code introduces important changes to the procedural rules that govern the enforcement of industrial property rights through the courts. Such provisions, which will enter into force in September 2005, are aimed at speeding up judicial proceedings by granting exclusive jurisdiction for industrial property disputes to specialized sections of 12 Italian courts (the courts are located in Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Trieste, Turin and Venice). Adopting a two-stage approach similar to the Italian rules of procedure that apply to company and financial law (see Legislative Decree 5 of January 17 2003), the code introduces a simpler procedure, which is less inquisitorial in nature than the previous system.
Another new feature introduced by the code is the possibility to obtain a preliminary injunction and seizure without having to file an infringement action. Consequently, the duration of the injunction or seizure can be unlimited as long as the respondent does not apply for a revocation of the order. Moreover, the courts have been granted greater leeway in assessing damages in infringement actions. Such damage will not only be assessed on the basis of lost profits, but may also include any reasonable royalties due to the IP owner, which the infringer should have been paying under a licence.
In light of the complexity of the issues involved in assessing the validity or infringement of industrial property rights, some experts have expressed concern over the measures aimed at concluding judicial proceedings more swiftly. Although it remains to be seen whether the shorter terms introduced will prove adequate for proceedings to progress correctly, it is clear that the provisions of the new code represent an innovative step forward in the legal landscape that governs industrial property rights.
For a background discussion of the new code, see New Industrial Property Code set to come into force and Italian IP law set to be codified.
Francesca Rolla and Iris Tsou Vamvaka, Lovells, Milan
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