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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

There are 22 specialised court divisions in Italy deputed to deal with trademark infringement disputes, as well as with nullity and cancellation actions.

Trademark disputes involving at least one foreign company are reserved to some of these specialised courts.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Two kind of civil proceeding are available against trademark infringements:

  • full proceedings on the merits where the plaintiff can ask the full set of remedies, including compensation for damages; and
  • interim proceedings where the claimant can seek a restraining order, as well as seizure, description orders and products recall, but not damages.

While the longer proceedings on the merits incorporate a full evidentiary phase, the interim proceedings are quicker and simpler.

Issuance of an interim measure is subject to two requirements:

  • the urgency (ie, the risk that, in wait of a ruling on the merits, enacted exclusive rights may be irreparably harmed); and
  • prima facie case for the claim.

Since 2005 interim measures, such as restraining orders and product recall orders, are permanent decisions which do not require the instigation of a proceedings on the merits for their definitive confirmation.

With regard to criminal law, under the Criminal Law Code the counterfeiting of trademarks may amount to criminal offences against public faith and economic order, while consumer confusion does not come into play.

Article 473 of the Criminal Law Code punishes the counterfeiting (ie, reproduction) and altering (ie, partial reproduction) of the subject matter of the IP right or use of the subject matter of the IP right by imprisonment for up to three years and fines up to €25,000. In addition, the use of false or deceptive indications as to the country of origin (eg, ‘Made in Italy’ labels) can amount to criminal and administrative offences.

Further, monetary administrative penalties may also apply to the use of words or indications leading to the false belief that goods are patented or a trademark registered, or they are applied for the use of trademarks declared invalid (unless this conduct amounts to a criminal offence).

Who can file a trademark infringement action?

Any holder of a registered trademark can file a trademark infringement action. Exclusive licensees can file infringement actions. Other licensees may file infringement actions only with the consent (also implied) of the licensor, and can intervene in the infringement action.

Holders of unregistered trademarks can rely on unfair competition rules to tackle unauthorised use. 

What is the statute of limitations for filing infringement actions?

Infringement actions are not time barred. However, the judge may find that the time elapsed between the first infringement and the filing of the action is sufficient to determine a ‘preclusion due to coexistence’ – that is, a long-lasting coexistence in the market of the infringer’s trademark and the infringed trademark can lead the judge to find a lack of confusion and consequently to dismiss the infringement action.

What is the usual timeframe for infringement actions?

First-instance proceedings on the merits usually last between two and three years, while appeal proceedings may take up to two years. Interim proceedings usually last less than six months.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

A petition for interim measures is filed with the court which will handle the main case. After hearing both parties, the court issues precautionary measures. The measures may also be granted without the other party being heard if summoning that party might prejudice their implementation.

Preliminary injunction proceedings can be instigated before or during proceedings on the merits.

In the preliminary injunction the judge can impose a financial penalty for each breach of the order, as well as reimbursement of legal fees. The judge can also order the publication of the decision in newspapers and online.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

In the main proceedings, the judge can award compensation for damages and loss. Article 125 of the Industrial Property Code lists several criteria for the assessment of the amount to be paid by the infringer and states that compensation can never be lower than the amount of the royalty that the infringer should have paid for lawful use of the trademark. The other criteria are a disgorgement of infringer’s profits and a decrease in the plaintiff’s profits. In addition, possible non-material damages suffered by the plaintiff can be calculated (eg, reputational damages).

The remedy of disgorgement of the infringer’s profits – which must be explicitly requested – can be applied as an alternative to compensation for the plaintiff’s losses or the amount exceeding the plaintiff’s losses.

Purely punitive remedies are not available under civil law. However, the Supreme Court recently stated for the first time that they are not conceptually incompatible with the Italian legal system. The issue remains open. 

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The EU Customs Regulation (608/2013) provides that a rights holder can file an application requesting the competent customs authority to take action with regard to goods suspected of infringing an IP right in one or more member states (a national or EU application).

Once granted, customs protection lasts for one year and is extendable at the applicant’s request. 

Customs protection entails the suspension of the release of, or the detention of, the goods whenever Customs identifies suspected goods, and requires Customs to notify the holder or declarant of the goods at issue. Customs will also notify the trademark holder (along with images of the blocked goods) and ask it to confirm the counterfeit nature of the goods within 10 working days, under penalty of release. If the applicant confirms the counterfeit nature, Customs will pass the file to the criminal courts for further prosecution. Destruction of the goods takes place at the judge’s order.

If the goods are blocked due to a lack of active customs protection, Customs can notify the owner that it can file a customs application within four days.

The Customs Regulation also provides a simplified procedure and a procedure for small consignments (goods below two kilograms in weight or of fewer than three units) which imply that the goods will be destroyed without infringement being ascertained. However, this is incompatible with the criminal law system and has been replaced by an administrative fine and forfeiture of the goods. 

Defence

What defences are available to infringers?

An infringer can deny the existence of a likelihood of confusion. Moreover, a defendant can react to an infringement action with a counterclaim of invalidity of the trademark.

In interim proceedings, the defendant can raise issues regarding the lack of likelihood of confusion and the invalidity of the invoked trademark only as factual arguments to deny the existence of the prima facie case for the claim. 

Appeal

What is the appeal procedure for infringement decisions?

Appeal proceedings can be brought before the appeal court within six months of publication of the first-instance decision or 30 days after the decision has been served by the other party. In appeal proceedings, no further evidence can be gathered; rather, the dispute is decided on the basis of a re-examination of the file of the first-instance proceedings.

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