Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

In order to enforce a trademark, a trademark holder must start a legal an action before the ordinary civil courts. The Italian judicial system has established specialised corporate divisions of the civil court (and of the Court of Appeals) that are exclusively competent for these types of infringement actions.

Trademark infringement may also be criminally prosecuted (articles 473, 474, 474-bis, 517 and 517-ter of the Criminal Code) and trademarks are also protected by the provisions of Regulation (EU) 608/2013 concerning customs measures in relation to infringing goods.

The corporate divisions of civil courts may also revoke a subsequent registered dilutive or infringing trademark for invalidity. Note also that in the future - when (and if) the corresponding rules are be adopted by the industry ministry - it will be possible to revoke trademarks also by means of an administrative procedure before the PT office.

Procedural format and timing

What is the format of the infringement proceeding?

From a civil procedure perspective, to challenge a trademark infringement, a trademark holder must start a legal an action before the ordinary civil courts.

The Italian judicial system has established specialised corporate divisions that are exclusively competent for these types of infringement actions.

Trademark infringements cases usually last between two to three years in the first instance.

All forms of evidence are allowed but the decision on the evidence submitted during a case is left to the judge.

Trademark infringements may also be criminally prosecuted (articles 473, 474, 474-bis, 517 and 517-ter of the Criminal Code) and infringing goods may be seized by the police. Regulation (EU) 608/2013 concerning customs measures in relation to infringing goods is also applicable in Italy.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Italian law does not recognise levels of burden of proof that exist in common-law countries. In cases regarding infringement and dilution, the burden lies on the plaintiff claiming infringement.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

An infringement action can be commenced by a trademark holder or - subject to certain conditions - by its licensee.

In addition to the possibilities offered by customs, administrative and civil protection, in some cases the trademark holder may file a complaint against the counterfeiter (before the Public Prosecutor's Office or local police station) or report the counterfeiting to the Guardia di Finanza (which, if criminal, will be passed to the Public Prosecutor's Office).

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Regulation (EC) 1383/2003 - that allows rights holders to apply for a customs action against goods suspected of infringing intellectual property rights - fully applies in Italy.

Regulation (EU) 608/2013 allows any rights holder or any authorised person to seize an infringing product by filing an application before the Central Authority of Customs in order to suspend the delivery of the imported goods bearing some trademarks for a case evaluation. After having checked the goods, the applicant has a deadline to claim the seizure thereof and to start the usual legal actions against infringement. Measures are usually resolved either via full-scale litigation or by means of preliminary proceedings.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Under the Italian legal system, the taking of evidence is governed by the principle that the scope of the proceedings is determined by the parties, as provided by the Civil Procedure Code. Hence, a court must base its judgment on the evidence submitted by the parties, ‘apart from those cases specified by law’. However, certain exceptions to this rule are set out in the following sections of the Civil Procedure Code:

  • section 117, which allows the informal questioning of the parties;
  • section 118, which allows inspections of persons and objects to be ordered;
  • sections 61 and 191, which allow the court to request expert opinions;
  • section 257, which allows the court to summon a witness who has been mentioned by another witness; and
  • section 281-ter, which allows a general court sitting with a single judge to order the taking of witness evidence if the parties’ account of the facts mentions individuals who would appear to be acquainted with the facts.

Italian law distinguishes between documentary and non-documentary evidence. Evidence governed by the Civil Code is referred to as ‘typical’.

Documentary evidence includes:

  • public documents;
  • private documents;
  • domestic files and records;
  • accounting records; and
  • copies of documents and contracts.

Non-documentary evidence includes:

  • witness evidence
  • written witness statements;
  • confessions;
  • formal questioning;
  • sworn statements; and
  • inspections.
Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

A preliminary injunction proceeding lasts an average of two months but timing varies from court to court. In cases of particular urgency, a judge may issue a provisional ex parte order at the beginning of proceedings. Such orders are normally granted in a few days. They are not, however, very common.

A decision in an urgency preliminary injunction proceeding can be set aside. This set aside procedure usually lasts between three to six months.

Actions on the merits for trademark infringements usually last between two to three years. An appeal against a first-degree decision also lasts about two years. A proceeding before the Supreme Court usually lasts three years.

Limitation period

What is the limitation period for filing an infringement action?

In relation to compensation for damages, the damaged party has five years to claim damages and the statute of limitations can be interrupted with the service of the writ of summons or a letter requesting the compensation of damages. If these actions have not occurred, the defendant can claim that the plaintiff is barred from claiming damages prior to five years from the start of the civil action.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The professional fees of a specialised attorney in a trademark litigation usually vary between €15,000 and €50,000 for a first-degree case depending on the firm and the complexity of the case. The total amount of court fees ranges between €1,000 to €2,000 depending on the value of the matter. A successful plaintiff may be awarded to recover all court fees and partially attorney’s fees.

Appeals

What avenues of appeal are available?

First-instance decisions can always be appealed before the Court of Appeals that re-examines the case. No leave to appeal is necessary.

The decision of the Court of Appeals can be further appealed before the Supreme Court, but just for violation of law or procedure. This means that the case facts cannot be re-examined. If the decision is upheld by the court, the case is closed. Otherwise, the Supreme Court may either decide itself the case or refer it back to the Court of Appeals for having it re-examined according to the principles of law discussed in the Supreme Court decision.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The infringer - after a warning letter or when it has grounds to suspect that a trademark owner could be in the process of starting an action - can start a non-infringement action and also, in case of urgency, an urgent non-infringement proceeding.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The first remedy is the issuance of an injunction by the court against the infringing party. Along with the injunction, the court can issue a penalty or an order against the defendant to pay a certain sum to the trademark owner for any possible future violation of the injunction.

The decision on the merits may order the compensation of damages, including consequential damages and loss of earning. The decision may also order the defendant to pay to the plaintiff the profits of the infringement, to the extent that they exceed the damage.

Punitive damages are not allowed in Italy.

The CIP also provides for orders to withdraw the infringing goods from the market, and orders to destroy or hand them over to the trademark owner. The court may also order the publication of the decision in one or more newspapers or magazines and also on the infringer’s website.

The Criminal Code states (articles 473, 474, 517 and 517ter) that an infringer may be both sentenced to prison and condemned to pay a monetary fine. The decision may also order that the infringing products be confiscated and the defendant convicted can be issued with a seizure or a monetary sanction. Criminal law also provides for emergency measures like seizures of goods and evidence, aimed at finding the infringing goods. In the case of a criminal offence committed by a corporation, the company may be sentenced also to pay a (heavy) fine on the basis of the law concerning company crimes.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

The use of ADR techniques is not very common in trademark disputes because the jurisdiction of specialised courts is mandatory in cases of infringement or dilution.

Indeed, the trademark opposition procedure in front of the PT office provides for a cooling-off period during which the parties have to try to find a settlement solution in relation to the opposition of the filing of a trademark.

Another form of mediation is assisted negotiation, which consists of an agreement by which the parties to the dispute agree in order to resolve a dispute amicably, with the assistance of lawyers. Assisted negotiation is mandatory in litigation cases for requests for payment of any kind of sum, provided that it does not exceed €50,000.