Simone Verducci Galletti

What has been one of your biggest achievements over the past year?

Last year was a very good one in terms of both client satisfaction and the cases we handled. We obtained a rare overturning of an opposition decision involving a renowned trademark, with the Board of Appeal of the Italian Patent and Trademark Office fully upholding our claims. At the same time, due to the stresses of the pandemic, we had some turnover of key people in our team. Being able to find good replacements and allowing them to integrate into the organisation was an achievement.

NFTs are currently one of the most talked about - but least understood - assets. Which novel legal issues does the rise of NFTs create, and how can brand owners tackle them?

I am not an expert on the issue, even though I have had to do a lot of research to understand the phenomenon in order to deal with clients’ requests. My impression is that we are facing a potential bubble - but until the bubble bursts, clients must be careful not to miss out on the opportunities that the NFT market will offer and beware of the risks that it will undoubtedly bring. For brand owners, it will be crucial to have a ready-to-use brand portfolio for these virtual products - not so much to enforce their rights where necessary (registered trademarks, especially well-known ones, will likely enjoy good protection against infringements conducted by means of NFTs) but, rather, to license them to companies that will offer services in the NFT field.

How have client demands changed over the last 10 years – and how have you adapted your practice to meet these?

Over the last 10 years, and after three different types of crisis (financial, health and now geopolitical), the way in which clients operate has changed a lot - and there are more changes to come. The search for the most effective strategies at the lowest cost has become paramount. The big IP firms used to sell trademark application and renewal services, and offered advice as a side job. Now, the paradigm has completely changed and consultancy is no longer limited to IP aspects. Practitioners must be able to understand business dynamics, production issues and decision-making mechanisms; based on this, they may formulate a trademark application. Today, successful IP attorneys must be able to complete their clients, give them that missing piece; to achieve this, we cannot just talk about intellectual property.

Levels of online counterfeiting continue to break records and there is now talk of combatting this by increasing platforms’ liability for sales of fakes on their sites. Do you think such action is likely in Europe – and if it did happen, what might the impact be?

Following the discussions surrounding the Digital Service Act, it seems that that path is set. The huge size of some online platforms, as well as the level of sophistication of the software that they use, makes it possible to envisage instruments of protection for users that go well beyond the current ones. Whether a faultless and easily applicable legislation will emerge from the current discussions remains to be seen. I expect that some new principles will hopefully find application, if not in all cases, at least in those cases where the risk of fraud is high for consumers (and thus for brand owners).

What are some of the most common mistakes that international brand owners make when enforcing their rights in Europe – and how can they avoid them?

Clients often fail to appreciate that the European Union is not really a single jurisdiction - and that this reality, while certainly a problem, may conceal opportunities. The same party can have strong rights in one country but a weak position in others. Another important but often underestimated aspect is trademark use. Where a trademark is vulnerable to non-use cancellation in the European Union, the owner cannot rely solely on evidence of use in certain countries of the union (use in the United Kingdom was often relied on, but Brexit has put an end to this). On the other hand, it is advisable to take advantage of the relatively lax approach to the burden of proving use. Finally, brand owners must understand the importance of trademark watching. There is no substantive examination in many EU member states and, therefore, registers can often throw unpleasant surprises in terms of overcrowding or the distinctiveness of trademarks.

Simone Verducci Galletti

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Simone Verducci Galletti is a partner at Bugnion. He graduated in law at the Perugia University, where he specialised in the law and economics of the European Union. Mr Verducci Galletti joined Bugnion’s Milan office in 2005, where he assists leading Italian and international clients in creating, managing and defending trademark and design portfolios. He was in charge of international relations at the firm and, since 2018, has sat on the board of directors.

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