Vast reform of Industrial Property Code comes into force

On July 30 2010 the Italian government approved Legislative Decree 131/2010, which amends the Industrial Property Code. The decree was published in the Official Journal on August 18 2010 and came into force on September 2 2010.
The decree consists of 130 articles. Upon comparison with the old code (which included 246 articles), it becomes clear that the decree not only amended it, but also created a brand new code. The new code is characterised by a concrete and realistic approach which aims to match the protection of each IP right with its actual value on the market by creating an appropriate balance between exclusive rights and competition. The aim of the commission of experts who drafted the amendments was to render the protection of IP rights more effective, as this is seen as a key element of Italy's competitiveness.
The amendments concerning trademarks and other distinctive signs demonstrate a particular attention to what these signs represent in the 'real world'. On the whole, the amendments aim to protect trademarks, designations of origin and other distinctive signs against all attempts to exploit unlawfully the commercial goodwill associated with these signs. Under the amendments, companies should be able to enhance the positive externalities arising from the use of their IP rights, while preventing any form of free-riding and parasitic exploitation of their investments.
A significant amendment expressly provides that trademarks may be protected against infringement by “domain names of sites used for an economic activity”. This definition, which replaces the ambiguous expression “company domain names”, is similar to that used by Article 20 of the code to define the scope of protection of trademarks. This demonstrates that the provision applies to all signs used for economic purposes, even if not within the scope of a company's activities.
In a recent case, an Italian court prohibited the unauthorised use of one of the country's most famous trademarks for luxury goods (BULGARI) as the pseudonym of an actress, finding that such use unlawfully exploited the concepts of sophistication and elegance linked to the mark. The court clarified that any use for economic purposes of another party’s well-known mark in a way that may damage, or take unfair advantage of, the distinctive character or reputation of the mark constitutes infringement, irrespective of whether the sign is used in a distinctive way (for further details please see "Use of 'Bulgari' as pseudonym infringes BULGARI mark, says court"). This rule will also allow owners of famous marks to prevent the parasitic exploitation of their marks through the use of similar or identical signs as domain names or metatags.
Another significant amendment concerns Article 8 of the code, which prohibits the registration and unauthorised use for economic purposes of signs that are notorious in non-economic fields, with a view to avoiding any parasitical activity. Furthermore, the expression “other distinguishing signs” has been added to the list of signs that may interfere with trademark rights (and with which trademarks may interfere) under Article 22 of the code. Moreover, Article 30, which concerns geographical indications, prohibits the unlawful exploitation of the reputation of protected denominations.
In addition, the following procedural changes are to be welcome:
  • It is now easier to obtain interim measures against infringers of IP rights;
  • Various procedures have been simplified;
  • The protection of IP rights is now more effective; and
  • Plaintiffs and defendants now have equal rights with regard to requests for preliminary findings.
Arguably, Italy has achieved a level of excellence in the fight against the infringement of IP rights. In 2003 12 specialised divisions were created, with exclusive competence over civil actions involving trademark, patent, copyright, design and unfair competition disputes. In particular, requests for interim measures (eg, injunctions, seizures and withdrawals from the market) are examined and, as the case may be, granted very quickly (within a few days in trademark and design cases, or a few months in patent cases).
However, certain hurdles remained, and the amendments sought to overcome these. One of the most significant changes is that the same judge now has competence to order protective measures, seizures and preliminary injunctions. In addition, the amendment has extended the possibility to issue interim measures ex parte, providing that such measures should be granted:
in every case of special urgency, particularly where the delay could cause irreparable damage to the owner of the rights, or when summoning the counterparty could affect the implementation of the protective measures or of the seizure.
The counterparty will be summoned within 15 days for the confirmation or the repeal of the measure.
This amendment gave the opportunity to clarify that, because the same judge has competence to order protective measures, seizures and preliminary injunctions, these may be requested at the same time, possibly in order of importance. Moreover, pieces of evidence collected during the implementation of the protective measures must be considered from the interim stage, and be made available to the lawyers and experts appointed by the plaintiff. This will allow IP rights owners, as well as the professionals who assist them, to create more efficient protection strategies.
Finally, under the amendments, defendants in infringement proceedings will have the possibility to obtain, even in an interim way, an assessment of non-infringement, which is useful to prevent misuses of IP rights (particularly patents).
With the new decree, the procedural reform initiated in 2006 with the adoption of the IP Rights Enforcement Directive (2004/48/EC) has come to an end. The Italian system now fully complies with - and even exceeds, especially with regard to trademarks and designs - European standards.
Cesare Galli, IP Law Galli, Milan

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