Introduction

On December 15 2016 the Court of Rome's IP and Company Specialised Division issued a short and concise order which confirmed German-based multinational Vorwerk's constitutional right to defence in the form of customs protection against IP infringement activities undertaken in East Asia. This right had been illegitimately denied by a previous court decision barring Vorwerk from "filing before the competent authorities... applications for customs protection against products marketed by MicroMic".

MicroMic's business includes the importation of derivative consumable and spare parts (ie, bags, brushes and aspirator terminals), which can be used with the Folletto vacuum cleaner. Vorwerk argued that this activity infringed its patents and registered designs.

Facts

The Court of Rome in its decision to reverse a previous order issued by the same court – which had granted an injunction against Vorwerk – ruled that conducting customs surveillance procedures cannot be classified as an abuse of rights. Rather, customs surveillance is an extremely effective defence against copycats and contrary to the common belief on Italian anti-IP infringement legislation, customs procedures are managed efficiently by the competent authorities. These measures prevent goods which could infringe IP rights from entering the Italian market, thus avoiding the risk that they might be disseminated and have to be searched for by the rights holder.

The implementation of border measures in Italy (pursuant to the relevant EU regulations) is entrusted to the Customs Agency, a highly efficient body, supported by a multimedia database which gathers information on how to distinguish fake goods and which is updated directly by rights holders. Further, the government has also reached agreements to coordinate operations with a number of countries from which counterfeit goods originate – in particular, China.

Decision

In its decision to uphold Vorwerk's defence, the court ruled that:

"the right to defence, constitutionally protected under Article 24 of the Constitution, necessarily includes the possibility of choosing among the different remedies provided by the law system for the protection of such rights … [and therefore] in the present case Vorwerk, by choosing the route of customs surveillance, has not committed an abuse of its right, but, on the contrary, it exercised its own undisputable right (without prejudice to the protection of all of the persons involved) to choose, between the domestic remedy (infringement proceedings) and the Community remedy (customs protection), the latter."

Conversely, the decision also highlighted that customs protection, as provided by law, does not leave the counterparty affected by the blocking order on the allegedly infringing products without countermeasures. Rather, the counterparty can maintain its constitutional right to defence by "using the typical measures such as the application for an order of releasing from seizure" and seeking compensation damages pursuant to Article 28 of EU Regulation 608/2013 concerning customs enforcement of IP rights "where it turns out that the goods do not infringe an IP right".

Comment

The Vorwerk decision is a result of the balanced and efficient IP rights legal framework being developed in Italy, particularly with regard to the need for adequate legal means to protect such rights from the influx of imported copycats.

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (galli.mi@iplawgalli.it). The IP Law Galli website can be accessed at www.iplawgalli.it.

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