New Industrial Property Code set to come into force

A new Industrial Property Code, consisting of 246 articles, is set to come into force within the next two months. The new code, which will replace more than 40 laws, was approved by the Italian government at the end of December 2004.

The code will apply to trademarks and other distinctive signs, geographical indications, appellations of origin, industrial designs, inventions, utility models, topographies of integrated circuits, confidential commercial information and plant varieties. As expected, copyright has been excluded from the field of application due to the fact that this subject falls under the competence of the Minister of Cultural Activities whereas all other IP rights fall under the competence of the Minister of Productive Activities.

The code will introduce new rules to be applied to all court proceedings involving industrial property rights, including those related to infringements of antitrust or competition laws.

During the first phase of the proceedings, the parties must exchange their pleadings (methods of exchange include facsimile and email) within a specific time frame. In the second part of the proceedings, the court will first attempt to persuade the parties to reach a settlement. If this cannot be achieved, it will decide the case based on the evidence submitted by the parties or order that an expert's report be issued. It will decide the case on the bench or, where the issues involved are particularly complex, it will have to enter its judgment within 30 days of the hearing.

These new procedural rules, along with the exclusive jurisdiction on IP cases granted to specialized sections of Italian courts, are expected to speed up court proceedings in relation to IP issues. (For a discussion of the new specialized courts, see Italy sets up specialized IP courts.)

The code will make some major amendments to trademark law. One of the main changes is a clarification of the operation of trademark rights in relation to domain names. In particular, it will be prohibited to register a domain name that is identical or similar to a prior trademark if, because of the identity or similarity of the commercial activities of the domain name owner and the products or services for which the trademark has been registered, there exists a likelihood of confusion on the part of the public. Proof of confusion will include a likelihood of association between the signs.

In addition, the code will bring into effect an opposition procedure for trademark registrations before the Italian Patent and Trademark Office. Although already in existence under previous legislation, this procedure had never come into force. The code will amend the procedure to render it more effective, but a further decree needs to be enacted before it can fully operate.

Industrial design right protection will be left largely unaltered by the new code. Copyright protection for designs will still only last for 25 years after the death of the author instead of 70 years as provided by Council Directive 93/98.

The code will bring into effect, for the first time in Italy, specific legislation dedicated to commercial confidential information. It defines what kind of information is protected and under which circumstances.

Finally, with regard to geographical indications and appellations of origin, it should be noted that the code will give these types of right the same level of protection as afforded to all other IP rights. The designation 'made in Italy' will therefore receive stronger protection.

For background discussion of the code, see Italian IP law set to be codified.

Isabella Betti and Esther Van Weert, Lovells, Milan