Region: Italy

Interim rules on copyright protection for designs now in line with EU law

Legislative Decree 131/2010, which came into force on September 2 2010, has brought Article 239 of the Italian Code of Industrial Property into line with the Community Design Directive. The new Article 239 recognises that industrial designs created before 2001 (when copyright protection for industrial designs was introduced) benefit from full copyright protection.

19 October 2010

Vast reform of Industrial Property Code comes into force

Decree 131/2010, which amends the Industrial Property Code, has come into force. 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. Among other things, a significant amendment expressly provides that trademarks may be protected against infringement by “domain names of sites used for an economic activity”.

24 September 2010

'Protectionist' rule on “Made in Italy” indication introduced

Italy has introduced two new rules on the geographical origin of goods. The first rule, which concerns designations of origin, should be adopted in the near future. The second, which concerns the use of the indication “Made in Italy”, has already been passed by Parliament, but is due to enter into force only later this year. This rule raises a number of issues, as it seems to be contrary to both EU law and the Italian Constitution.

25 May 2010

Administrative opposition procedure introduced

Regulation 33/2010, which implemented Legislative Decree 30/2005 (the Italian Industrial Property Code), came into force on March 10 2010, exactly five years after the legislative decree was issued. The main innovation is the introduction of an administrative opposition procedure for domestic trademark applications inspired by opposition proceedings at the European level.

29 March 2010

Liability of internet services providers recognized

Following a decision of the Court of Rome, Italy has taken a step forward in the fight against the infringement of IP rights on the Internet. In a case involving video-sharing website YouTube, the court recognized that hosting services providers will be held liable if they were aware of the presence of infringing material, but failed to remove it or to take any other action.

25 March 2010

Colour red protectable as unregistered mark with a reputation

The IP Division of the Court of Milan has confirmed that the colour of Ferrari Formula 1 cars (not limited to a specific nuance of red) was protectable as an unregistered trademark with a reputation. Among other things, the court ordered the seizure of unauthorized merchandising products (including clothes), holding that their red colour inevitably brought Ferrari to mind and could cause confusion with original products marketed by Ferrari's licensees.

13 January 2010

Unregistered shape of products may be protected against infringement

The Specialized IP Division of the Court of Naples has granted a petition for an injunction filed by Deborah Italia SpA, a market leader in the field of cosmetics in Italy, finding that the slavish imitation of some of its products by the defendant amounted to unfair competition. Importantly, the court also recognized that the unregistered shape of products may be protected against infringement.

30 November 2009

New criminal and administrative penalties for infringement introduced

Following a lengthy parliamentary procedure, a new 'anti-infringement package' has finally become law. The new legislation was devised by a working group set up by the high commissioner to combat counterfeiting and piracy a few months before his role was abolished. The legislation - in line with the recommendations of the high commissioner - increases the penalties for the infringement of IP rights.

03 November 2009

New rules on geographically deceptive trademarks spark debate

Italy has twice changed its rules on the use of trademarks which convey a false impression that the goods were manufactured in Italy. The new rules regulate the use of 'Italian-sounding' marks and indications such as '100% made in Italy'. These rules have raised numerous concerns, as they seem to be inconsistent with EU law and the Italian Constitution.

26 October 2009

Supreme Court rules on unfair competition under Civil Code

The Italian Supreme Court has held that use by a third party of a trademark similar to a mark used by a major competitor for similar goods constitutes an act of unfair competition under Article 2598 of the Italian Civil Code, even where the goods of the parties differ vastly in price and/or quality.

02 October 2009

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