New administrative trademark procedure
"Counter-reform" of regulation of employee inventions
Intervention on patent linkage mechanism
Case law
New data on counterfeiting
In 2022, Italy further strengthened the protection of IP rights in terms of both the introduction of new regulatory tools available to companies and the dissemination of best practices in case law.
New administrative trademark procedure
The most important development came right at the end of 2022. On 29 December 2022, Decree No. 2022/180 of the Ministry of Economic Development came into force, one of the last acts of the government led by Mario Draghi. The decree establishes an administrative procedure for the declaration of invalidity and forfeiture of trademarks as an alternative to the judicial procedure, thereby implementing article 45 of the EU Trademarks Directive.
To this end, 13 new articles (from article 63-bis to article 63-terdecies) were introduced into the Regulations for the Implementation of the Italian Industrial Property Code.(1) The new provisions outline a comprehensive procedure that guarantees not only full adversarial effect but also rapidity and efficiency. The achievement of these objectives will depend on the resources that are allocated to the new procedures, which remain to be seen.
"Counter-reform" of regulation of employee inventions
On 1 December 2022, the draft law for the revision of the Industrial Property Code (also promoted by the Draghi government) was approved by the new cabinet and resubmitted, since it had not been approved in time by the House and Senate, due to the parliamentary elections. This draft bill includes rules on the administrative simplification and digitisation of procedures and a kind of "counter-reform" of the regulation of inventions by employees of universities and public research institutions.
Such institutions were granted the right to patent employee inventions in their name, which had been taken away from them in 2001 by Law No. 383 of 18 October 2001 (the so-called "Tremonti-bis", or "100-day law" of the second Berlusconi government). According to Law No. 383, the right to patent inventions made by employees of universities and public research bodies was granted to the employees themselves, even when the inventive activity was part of their contractual duties. The body to which they belonged received only a percentage share of the income from the exploitation of the inventions.
Albeit in need of refinement, the restitution to universities (public and private) and other public research organisations of patrimonial rights to inventions made by their employees is a long-awaited measure (a similar text had been prepared in 2010) that will increase the competitiveness of Italian research institutions in the global contract research market.
Intervention on patent linkage mechanism
Less satisfactory was the intervention made by the Italian legislature on the relationship between supplementary nonprotection certificates (SPCs) and generic drugs (for further details, see "Patent linkage in Italy: a reform that changes nothing?"). Article 17 of Law No. 2022/118:
- repealed paragraph 1-bis of article 11 of Decree-Law No. 2012/158, as converted by Law No. 2012/189 (better known as the "Balduzzi Decree", from the name of the minister of health at the time); and
- maintained the so-called "patent linkage mechanism" (also known as "reimbursement patent linkage").
This mechanism owes its name to the fact that the date from which it is possible for a generic medicine to be recognised as reimbursable by the National Health Service is determined by "linkage" with respect to the date of expiry of the existing patent or SPC rights concerning the corresponding medicines produced and marketed by the originator, regardless of whether:
- the patentor SPC is valid; or
- the corresponding bioequivalent medicine falls within its scope of protection – this is not necessarily the case since bioequivalence in itself is not synonymous with infringement.
2022 was an important year in Italy with respect to IP-related case law. Various landmark decisions confirmed the realistic approach of IP specialised divisions and the high level of effectiveness they have achieved, especially in venues such as Milan, Turin and Venice.
Court of Turin
On 11 February 2022, after issuing an urgent declaration of non-infringement, the Court granted the complainants' request to prevent the counterparty (the holder of an Italian patent, who had accused them of infringement without grounds) from:
continuing and repeating the sending of communications to third parties which qualify as infringing, or in any event illicit, the use by the complainants of their system and method of searching for water underground.
For further details, see "Court of Turin issues urgent non-infringement declaration and order enjoining patentee from using its patent to distort competition".
Court of Milan
On 5 July 2022, the Court established:
- the liability of the parent company of the infringers, not only for damages caused, but also for the restitution of profits made, by its subsidiaries; and
- the entitlement of the Italian trademark owners anti-counterfeiting association (INDICAM), a member of the European Brands Association (AIM), to participate in infringement cases brought by one of its members – not only by filing amicus curiae briefs, but also by actively intervening and taking part in oral hearings – to support the recognition of case law principles of general interest to its members, thus pursuing its own associative purposes.
For further details, see "Milan court admits parent company's liability for infringement and allows participation of INDICAM in relevant trials".
Court of Rome
On 19 July 2022, the Court issued a preliminary injunction against the production, marketing and online promotion of digital playing card non-fungible tokens that reproduce the distinctive signs of the famous football club Juventus. The Court ruled that such activities had been carried out exclusively for commercial purposes and that the parties had exploited and diluted the trademarks owned by Juventus without authorisation, regardless of the digital nature of the cards in question.
Court of Venice
On 26 July 2022, the Court rejected an attempt at forum shopping by an entity that, after its applications for a preliminary injunction for alleged trademark infringement had been rejected twice by the Court of Bologna (in whose district the defendant company was based), had started an action on the merits with the same subject matter before the Court of Venice (for further details, see "Venice Court rules out lawfulness of forum shopping in trademark infringement cases"). The defendant had claimed, without grounds, that certain facts presented as unlawful would have also taken place or produced their effects in the constituency of the Court of Venice.
On 3 October 2022, the Italian Ministry of Economic Development (now the Ministry of Enterprise and Made in Italy) released its summary data, updated to the end of 2021, based on the Intellectual Property Elaborated Report of the Investigation on Counterfeiting database. This searchable database is managed by the General Directorate for the Protection of Industrial Property of the Italian Patent and Trademark Office of the Ministry of Economic Development. It collects and analyses, in aggregate and homogeneous form, national data on seizures for counterfeiting by various police forces, on the basis of data from the databases of each body, duly standardised and harmonised.
The data released confirms the importance in Italy of unauthorised overproduction by subcontractors. The data indicates that Prato – an area in Tuscany where there is a lot of textile production, often carried out by Chinese-owned companies – was the province in which most articles were seized in 2021, surpassing cities in other regions such as Lazio and Campania. However, the data also confirms the ever-increasing commitment and successes of the Italian police forces in the fight against counterfeiting and infringement. This is also evidenced by the fact that, despite the increase in the number of interventions carried out and pieces seized, the absolute value of counterfeit products is decreasing in Italy.
A decisive contribution could come from the specialisation of public prosecutors, which is one of the main requests that industry associations – including INDICAM, the Italian branch of the International Association for the Protection of Intellectual Property and the Italian Association of Consultants and Experts in Industrial Property – have addressed to the new minister of justice, Carlo Nordio.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email ([email protected]). The IP Law Galli website can be accessed at www.iplawgalli.it.
Endnotes
(1) Decree No. 33/2010 of the Ministry of Economic Development.