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?

Under Italian law, trademark owners may rely on both civil and criminal proceedings to enforce their rights. These proceedings are different in nature and pursue different objectives, so an efficient enforcement would call for a careful case-by-case assessment to identify the best course of action.

Resorting to civil litigation is the most common course of action in trademark infringement cases. Civil proceedings may target both registered and unregistered marks. They are meant to stop the alleged infringement (by restraining orders) and possibly mitigate its consequences (by other available remedies, such as damages). These cases are handled by specialised civil courts in business matters, which also act as EU trademark courts. Trademark owners maintain control over these actions and may decide to withdraw them even at a later stage of the proceedings.

Criminal proceedings can target wilful infringements of registered marks only. They pursue the public interest of good faith and fairness in the course of trade, so the relevant infringer might face a fine or imprisonment if he or she is found liable of the charged crime. Although criminal litigation is a very useful tool in counterfeiting cases, it might imply significant drawbacks for trademark owners, especially because they do not have full control over the case. For instance, once criminal enforcement is under way, trademark owners cannot block the relevant proceedings, and this might impair their ability to settle a case.

From an administrative standpoint, trademark owners may file an application for action with customs authorities to take action vis-à-vis goods suspected of being counterfeit and obtain a seizure of the same.

Procedural format and timing

What is the format of the infringement proceeding?

Civil proceedings might take the form of ordinary or interim proceedings. Specifically, trademark owners may institute:

  • ordinary civil proceedings by serving a writ of summons upon the alleged infringer. These proceedings usually go through three stages:
    • the introductory stage, whereby the parties exchange their initial briefs (ie, the writ of summons and the briefs of intervention and reply) and the first hearing occurs, whereby the judge carries out some preliminary checks on the regularity of the action and explores the possibility of settlement;
    • the evidentiary stage, in which the parties may exchange three sets of briefs, whereby they define the scope of their respective claims, put forward evidentiary requests and file supporting documents, and all the evidentiary activities are carried out, also during specific hearings; and
    • the final stage, whereby the parties set forth their final claims and exchange their final briefs. A final hearing might be held upon the parties’ request. The final decision is issued by a panel of three judges and may be appealed on both matters of law and facts before a court of appeal; appeal decisions may be further challenged on matters of law before the Supreme Court; or
  • interim proceedings, by filing a petition for interim relief before or while pending litigation on the merits. Usually, these proceedings are rather fast, with, on average, one exchange of briefs, one hearing and a decision issued in a few months. There is only one judge handling the first-instance phase, while the possible appeal is decided by a panel of three judges.

 

With regard to the means to acquire evidence in civil proceedings, although Italian law does not provide for discovery as is understood by common law countries, trademark owners may still rely on rather effective tools to acquire information on the nature and extent of infringements and to access the infringers’ financial and commercial documents, which are essential for an adequate damages award. Interim proceedings are often very effective tools to acquire evidence to be used in the litigation on the merits; in particular, if there is a risk that the infringer could remove or destroy evidence of the wrongdoing, measures such as descriptions and seizures can even be given ex parte, in which case they are carried out before the defendant is aware of the action and then confirmed or revoked upon review of the defendant’s arguments.

Criminal proceedings are instituted by the public prosecutor either ex officio (for certain crimes) or upon the filing of a criminal complaint by an injured party (ie, the owner of the alleged infringed mark). The public prosecutor carries out pretrial investigations in secret, which usually last one to two years. Once this phase is over, the judge decides whether to go through with the trial or dismiss the case. If the trial starts, the owner of a registered mark may join the proceedings as an aggrieved party.

Under criminal law, the most effective means to acquire evidence are search and seizure orders. Seizures are carried out either by enforcement authorities autonomously or pursuant to a party’s filing of a criminal complaint. The seizure can involve not only infringing products but also accounting books and, in general, any document useful for the investigation.

Burden of proof

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

The owner of a registered mark has the burden of proving that its mark has been infringed. A mark is infringed whenever there is use in the course of trade of an identical sign for identical goods or services, or of an identical or similar sign for identical or similar goods or services provided that the risk of confusion may arise on the part of the public, which may also consist of a risk of association. If it is proved that the registered mark that is allegedly infringed enjoys a reputation, the infringement is established, irrespective of any likelihood of confusion or association, when use of an identical or similar sign without due cause gives rise to any unfair advantage to be taken of, or is detrimental to, the distinctive character or reputation of the registered mark. The reputation of a mark may amount to a ‘well-known fact’ under Italian law.

When it comes to unregistered marks, the relevant owner must establish both that the relevant sign is entitled to protection as a de facto mark and that an infringement has occurred.

Standing

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

Trademark owners and, under certain conditions, their licensees have standing to bring civil infringement actions.

Under criminal law, proceedings are instituted by the public prosecutor, either ex officio (for certain crimes) or upon the filing of a criminal complaint by an injured party (ie, the owner of the alleged infringed mark).

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?

Trademark owners may file an application for action by Italian customs authorities to have the relevant authorities stop and seize infringing goods.

As to foreign activities, based on the principle of territoriality, only activities carried out in Italy or targeting Italian consumers may be taken into consideration to determine whether there has been a trademark infringement.

Discovery

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

Italian law does not have discovery as is understood in common law countries. Nonetheless, trademark owners may rely on effective discovery and disclosure tools to acquire information on the nature and extent of infringements and to access infringers’ financial and commercial documents. In particular, if a party has provided serious evidence that its claims are grounded and has identified documents, elements or information held by the other party that confirm this evidence, it may request that the judge order their disclosure or request the information from the other party. This order is not enforceable and it is up to the party to comply with it. However, the judge can infer 'circumstantial evidence' from the party’s answers and from any unjustified refusal to comply with the order of disclosure. Moreover, in case of counterfeiting on a commercial scale, based on a grounded and proportionate request from a party, the court may order that information on, inter alia, names and addresses of the manufacturers, distributors and suppliers, and quantities and prices of the counterfeit goods is acquired through an interrogation either of the infringer or those found in possession of the goods. If the infringers do not comply with these requests, criminal penalties may be applied.

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?

First-instance ordinary civil proceedings usually last around two to three years, at least in the most experienced courts, and the same time frame applies to the possible further appeal stages before the Court of Appeal and then the Supreme Court; going through all three levels of jurisdiction might take up to 10 years. In the case of interim proceedings, the typical time frame is much shorter, as it usually takes around three to four months to get a decision, with the same time frame applying to the possible further appeal stage.

As for criminal proceedings, it takes around one to two years until the pretrial investigation phase is over and the trial begins, but it can also still take up to 10 years for the decision to become res judicata.

Limitation period

What is the limitation period for filing an infringement action?

Generally, trademark owners may institute infringement actions at any time. The lapse of time between the knowledge of the infringement and the institution of an action might be nonetheless relevant. For instance, it might have an impact on the viable courses of action, as trademark owners might be precluded from instituting interim proceedings, as one of the prerequisites for a successful action is irreparable harm and Italian courts have a tendency to view a prolonged tolerance on the part of the plaintiff as an indication of lack of irreparable harm. There is also a statute of limitations of five years applicable to damages claims. Furthermore, a prolonged coexistence of the conflicting marks on the market might be considered as a factor ruling out the risk of confusion.

Litigation costs

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

The costs of a civil action depend on the complexity of the case, its duration and the appointed counsel. At the end of an action, the court generally awards attorneys’ fees to the prevailing party unless there are special circumstances that may induce the court to decide that each party bears its own attorneys’ fees. However, even when legal fees are awarded to the prevailing party, the amount that can be recovered does not cover the actual fees incurred, but simply a percentage of the same, which is often one-third to one-quarter of the actual costs.

Criminal actions are usually less expensive because the governmental authorities perform part of the work, including all investigations.

Overall, the costs of litigation in Italy are not exorbitant and can be afforded, even by small enterprises.

Appeals

What avenues of appeal are available?

First-instance decisions rendered in criminal and civil cases may be appealed before the Court of Appeal on both matters of law and fact. The Court of Appeal’s decisions may be further appealed before the Supreme Court on matters of law only.

Defences

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

There are many defences and counterclaims that may be brought against an infringement action. The most common are that there is no infringement, or that the allegedly infringed trademark is invalid or has lapsed owing to non-use.

Remedies

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

Remedies that can be obtained at the end of ordinary civil proceedings include damages awards, disgorgement of profits, restraining orders (almost always accompanied by a penalty to secure compliance with the order), seizures of goods, orders to recall the goods from the marketplace, destruction of goods bearing the infringing mark and publication of courts’ decisions in newspapers or magazines, websites and social media.

Italian courts usually award damages based on one of the following criteria:

  • trademark owners’ lost profits (on which judges rarely rely);
  • infringers’ profits; and
  • ‘reasonable royalty’, which is the royalties that the infringer would have had to pay had it requested the authorisation to use the infringed trademark, sometimes increased to preserve the decision’s deterrent effect.

 

Save for damages and disgorgement of profits, the measures that can be obtained by bringing interim proceedings are basically equivalent to those that can be achieved at the end of a full litigation on the merits. However, these measures would cease to be effective if ordinary civil proceedings are not instituted within 20 working days or 31 calendar days, with the exception of temporary restraining orders, which would remain in place even when litigation on the merits is not instituted. The prerequisites for obtaining interim measures are the colour of right, and the danger of imminent and irreparable harm. Where there is a risk that the infringer could remove or destroy evidence of wrongdoing or where a delay in issuing the interlocutory decision could cause irreparable harm to the rights holder, these measures – especially descriptions, seizures and restraining orders – can be given ex parte, in which case they are carried out before the defendant is aware of the action and then confirmed or revoked upon review of the defendant’s arguments.

In criminal proceedings, at the end of the trial, if the defendant is convicted, the judge orders the confiscation and destruction of the seized goods in addition to the publication of the decision in a newspaper, magazine, website or social media. Unlike the criminal system of many other countries, in Italy it is extremely difficult for the aggrieved party to actually obtain an award for damages. Theoretically, during the trial, the judge could issue a provisional order, which is immediately enforceable, ordering the defendant to pay damages in an amount considered justified in light of the evidence collected; however, in practice, this order is very seldom granted and sometimes revoked or amended later on in the proceeding or during the appeal.

ADR

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

Although it is possible to resort to arbitration as an alternative to court proceedings, ADR has not traditionally enjoyed a great deal of success in trademark disputes in Italy, except for domain name disputes.