On February 22, 2018 the Court of Bologna decided on an appeal filed against the order granting the precautionary measures of seizure and injunction. The Court denied the motion. The judge, on the one hand, accurately assessed the requirement of the “evaluation prima facie of the existence of the violation” (hereinafter referred to as “fumus bonis iuris”), in this case consisting in the violation of a trademark; on the other hand he dedicated only a few lines to the requirement of the “urgency in the protection” (hereinafter referred to as “periculum in mora”).
With this decision the Court recalled the jurisprudential orientation according to which the periculum in mora may be considering existing be in re ipsa, thereby meaning that, whenever a violation of an intellectual property right occurs, the urgency in the protection is a consequence of the nature of the infringement itself, which always causes a prejudice that is never totally repairable (i.e. loss of customers, discredit of the commercial image, unfair advantage taken from a well-known brand). In fact, it has often been stated by the Courts that, since an imminent and irreparable prejudice would be in re ipsa within the scope of industrial property rights, it would not be necessary to provide any evidence of it. This interpretation is based on the idea that, in these matters, the negative effects on economic market relations would not be easily quantifiable or compensable and would therefore inevitably be destined to increase severely with the passage of time.
Italian legislative framework
The general rules of Italian civil-procedure that govern precautionary measures (in particular articles 669-bis ff. of the civil procedure code) are applicable also to intellectual property rights. Hence, the fundamental characteristics of precautionary proceeding consist of: i) the summarization and urgency of the proceeding, based on an assessment prima facie of the existence of the violation; ii) the instrumentality of the precautionary provision with respect to the definitive judgment, thereby meaning that the precautionary measure is based on the future recognition of the disputed right by a definitive judgement which, if it recognizes the existence of the right, grants full protection for the future and confirms the effects of precautionary protection; iii) the provisional nature of the effects, destined to expire in the definitive judgement (for completeness, it is necessary to mention in this regard that since 2005, under certain conditions, a precautionary measure can produce definitive effects without the subsequent starting of the merit proceeding). As mentioned before, a precautionary motion requires, in order to be granted, to show the double pre-requisite of the fumus boni iuris (legal validity of the claim) and the periculum in mora (serious and irreparable prejudice), lacking one of which the motion has to be denied.
The oscillation of the case-law
The interpretation of the pre-requisite of the periculum in mora in the intellectual property field has been constantly oscillating in the Italian case law, with judges who firmly affirm the necessity of its accurate assessment together with the fumus bonis iuris, and others who state the opposite.
The decision of the Court of Bologna is in line with the case-law of the last two years, according to which the periculum in mora would be in re ipsa, and so it would appear not to be necessary to provide the judge with particular evidence or arguments concerning the alleged imminent prejudice. In these same terms, the Court of Rome also pronounced on February 16, 2016, with regards to a trademark violation, along with the Court of Rome on July 19, 2017, concerning the unfair advantage taken of a well-known brand, and the Court of Rome on December 19, 2017, again with regard to the infringement of a trademark right.
This interpretation of the periculum in mora appears to be a revival of the case law of the years 80s and 90s, when often, in cases of infringement of patent rights, it was affirmed the principle that the urgency in the protection could, in fact, to be considered as existing in re ipsa.
It has to be pointed out that in doctrine, unlike in case-law, there have instead always been criticisms of the interpretation of the periculum being in re ipsa; as early as 1985, this interpretation was criticized due to the fact that it represented an excessive generalization of a principle that might be applicable to many cases, but not to all of them. The doctrine perceived the risk that the consolidation of such a principle, over- used and repeated without a prior verification of its actual correspondence to the concrete cases, may have resulted in conceiving the periculum in mora as a mere stereotyped formula, with the consequence of constituting a lack of motivation in the judge's ruling.
After the stability of the decisions in the 80s and 90s one of the first decisions to go against this interpretation, overruling the consolidated jurisprudential orientation of the previous years, was an order issued by the Court of Florence on March 27, 2003. That decision took a strong position stating that the periculum in re ipsa does not seem to have any legal validity, affirming that the periculum in mora either is not a pre-requisite for precautionary protection, or it is, and consequently must be assessed by the judge. After the above cited decision of the Court of Florence, some other Courts, sporadically, have then refused the interpretation of the periculum in re ipsa, with this alternative trend culminating with the decision of the Court of Milan, issued on January 5, 2012, in a famous dispute involving Samsung and Apple about the violation of the former’s patent right by the latter. The Court, there, carefully assessed the existence of the periculum in mora, excluding the existence of a serious and irreparable damage against Samsung, given that Apple, in addition to not being in danger of insolvency, had also deposited a sum of money to guarantee the royalties presumably due to Samsung if the judge had eventually considered its patent rights valid and infringed by Apple. The Court, when assessing the requirement of the periculum in mora, took into consideration the danger of economic detriment due to the delay and denied its existence, therefore accepting the aforementioned interpretation of its necessary evaluation by the judge. On the grounds of this same interpretation, in January 29, 2014 the Court of Bologna stated that in IP law, the periculum in mora could never be considered in re ipsa but it is required, on the contrary, that the judge assesses the existence of an irreparable prejudice which, in the relationships between entrepreneurs, must be found in the irreversible alteration of the market balance consequent to the diversion of customers as well as in the impossibility or enormous difficulty of quantifying the prejudice. Again, the Court of Bologna on April 23, 2014, excluded the existence of the periculum in mora because of the excessive amount of time passed by between the date of filing the precautionary motion and the date on which the trademark right had been infringed. The Court expressly stated that it did not share the “empty formulas” on the periculum in mora in re ipsa used by many Courts because of the fact that the periculum in mora, as a pre-requisite for granting a precautionary protection, must be ascertained by the judge. According to the Court, this requirement is not fulfilled when a considerable period of time has elapsed without the injured party exercising his right to seek legal protection, given that the lengthy protraction of the alleged violation of the intellectual property right leads to consider that the possible adverse consequences of the conduct are substantially “stabilized”.
Although the periculum in re ipsa is often invoked to justify the rapid granting of precautionary measures, part of the doctrine assumes that it does not seem to have any rank in our legal system. Many judgements have agreed with this interpretation, preferring to conceive the discipline of intellectual property precautionary measures in harmony with the general one and therefore requiring the judge to accurately assess the existence of the periculum in mora in order to grant the issuance of the precautionary measures. Nevertheless, it seems that in the most recent case-law, last of which Court of Bologna of February 22, 2018 in comment, the tendency not to evaluate this pre-requisite on the basis of the fact that it would be in re ipsa has resumed.
In any case, provided that there is not a uniform interpretation of the requirement of the periculum in mora, it is undoubtedly advisable for the applicant who files a motion for obtaining a precautionary measure, to adduce reasons regarding the existence of the periculum in mora, in order to increase the likelihood of success of his request.