Region: Italy

Italy: A strong stance on protection

The Italian legal system grants strong protection to publicity and image rights, and exceptions to such rights must be strictly interpreted

05 January 2015

Concept of 'family of marks' may be used as legal tool to extend protection of marks

The notion that marks belonging to a 'family' or 'series' of marks benefit from extended protection has been recognised by the Italian Opposition Division. The Opposition Division found that the marks owned by the opponent - over 15 marks containing the prefix 'pedia' - benefited from the protection afforded to a family of marks. Consequently, the creation of a family of marks could represent an important competitive advantage for entrepreneurs.

13 November 2014

Italy: A new ‘time to market’ approach

The fast-fashion model allows products to be launched on the market in less than one month. Italy’s design protection system plays an important role in this regard.

03 October 2014

Court of Rome brings Italian case law on distinctiveness in line with that of ECJ

The Specialised IP Division of the Court of Rome has held that a trademark consisting of the words '<I>facce da rugby</I>' ('faces of rugby'), together with a series of small squares containing portraits of rugby players, lacked distinctiveness, even though its component elements were neither generic nor descriptive. The decision seems to indicate that, with regard to distinctiveness, Italian case law is now fully aligned with that of the ECJ.

04 September 2014

Court considers designer's right to use own name after leaving namesake company

The Court of Milan has issued a landmark decision in a case concerning the right of fashion designer Alviero Martini to keep using his name as a trademark after leaving the company that he had founded. The court found that, even though the company held the rights to both the trademarks containing the designer's name and the company name, the exclusive right to use the name Alviero Martini in the course of trade still belonged to the designer.

02 June 2014

New administrative remedies against online infringement become available

New effective tools have become available to IP rights holders who have fallen victim to pirate websites offering fake products. For example, the Antitrust Authority - which is also in charge of preventing unfair commercial practices - has recently taken the lead in this field and has closed down hundreds of websites selling copies of products protected by registered IP rights.

17 March 2014

Ferrari adopts tailored approach to prevent fan prancing with trademark

Iconic luxury car maker Ferrari’s recent victory in a trademark dispute against a group of car enthusiasts, while notable as a landmark one in Italian trademark law, also provides pointers for trademark counsel on how they should approach enforcement when the infringement is by fans.

17 December 2013

Ferrari successful before Supreme Court against unofficial Ferrari owners' club

In a dispute over the use of Ferrari SPA’s trademarks by an unofficial club of Ferrari owners, the Supreme Court has overturned a decision of the Court of Appeal finding that Ferrari had acquiesced in the use of the marks and that such use was not commercial in nature. According to the Supreme Court, the fact that Ferrari was aware of the use of non-registered trademarks by the club did not prevent it from bringing action against such use.

12 December 2013

Court of Appeal revokes mark for non-use in landmark decision

The Court of Appeal of Milan has issued a landmark decision ordering the revocation for non-use of the trademark LAMBRETTA for motorcycles, even though the mark is still well known in Italy. The court seemed to take the view that 'reputation' is not merely an abstract element that can be used and marketed independently, but is a quality attached to a trademark, which must be valid and in use.

25 November 2013

Supreme Court rules in favour of Czech brewery in BUDWEISER dispute

In the longstanding dispute between US company Anheuser-Busch LLC and Czech brewery Budweiser Budvar over the mark BUDWEISER for beer, the Supreme Court has reversed a decision of the Court of Appeal in favour of the US company. Among other things, the Supreme Court found that the word 'Budweiser' (meaning 'originating from Budweis') was still widely recognised, even though the name of the old city of Budweis was now Budejovice.

25 October 2013

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