What is a preliminary injunction?
A preliminary injunction is an interim measure that immediately prohibits an infringing action, contains other orders protecting property or seeking to obtain disclosure of information within IP proceedings.
Preliminary injunction proceedings are swift, flexible and cost efficient. In case of ex parte requests, they might be granted within days. All in all, interim proceedings do not usually last more than 2 months. They are a right-owner friendly option for enforcing cease and desist claims that might not be effectively enforceable after the long time necessary for conducting court proceedings on the merit.
A preliminary injunction is used either to preserve the status quo or to commit the defendant to take or refrain from taking an action. In the case of intellectual property rights infringements such injunctions could prohibit the defendant from continuing to use a certain sign or sell a product allegedly infringing the claimant's IP rights.
Under Italian Law, a claimant that obtained a preliminary injunction containing an order to refrain from or not to adopt a certain conduct is not requested to start proceedings on the merit to have it confirmed. If proceedings on the merit are not brought, preliminary injunction will preserve its validity. The same does not apply in the case of preliminary injunctions involving seizure, access to defendant's premises, or information disclosure. In the latter cases, proceedings on the merit are necessary to preserve the validity of those.
What can preliminary injunctions be obtained for?
Preliminary injunctions cover claims for cease and desist, information disclosure, seizure, access to defendant's premises, and website-block. They may be requested in all kinds of intellectual property rights infringement cases, whether the case relates to copyright , trademarks , designs, utility models or patents , as well as in unfair competition matters.
What are the requirements for filing a request for a preliminary injunction claim?
To file a preliminary injunction claim the claimant must provide evidence in support of:
- prima facie entitlement to the claim (so-called fumus boni iuris);
- urgency of the claim (so-called periculum in mora).
- What does prima facie entitlement to the claim mean and what evidence can be submitted?
Prima facie entitlement to the claim means that the claimant must deliver all facts that enable the court to assess whether an infringement likely occurs or might occur.
The claimant has to establish facts and provide evidence on the basis of which it may be presumed that there is a strong likelihood that he has an entitlement to the claim, both from a factual and legal standpoint. Time constrictions peculiar to interim proceedings lead Courts to be satisfied with a lower degree of proof as far as the grounds for likelihood of claims is concerned. The necessary degree of proof in preliminary injunctions is therefore lowered as compared to proceedings on the merit.
In the case of intellectual property right infringement, claimant must prove the following:
- To be proprietor of an intellectual property right, including non-registered rights;
- The current or potential infringement of the IP right.
If an infringement has not yet occurred, the claimant shall show that such infringement is likely to occur and that proceedings on the merit would not be effective enough to minimise damages derived from infringement.
The claimant is free to provide evidence to ground his or her claims by means of:
- Submission of documents;
- Experts' reports;
2. What does the urgency requirement entail?
The claimant must show that the matter is so urgent that they cannot wait for the outcome of proceedings on the merit as it would suffer "serious and irreparable" damages due to the infringer's conducts.
Italian case law interprets "serious" as "different from negligible" and "irreparable" as not eligible to be quantified in a certain amount. In this perspective, some Italian decisions have refused to grant preliminary injunctions for alleged infringement of essential patents, as the damage would have been easily quantified according to the royalty provisions of the FRAND licence, and therefore not "irreparable". By contrast, conducts which lead to trade mark likelihood of confusion, loss of clients or significant loss of market shares are normally considered as leading to "irreparable" damages.
Urgency is deemed to exist in almost all cases where IP infringement is involved unless the claimant has waited several months before reacting. As indicated above, essential patents and other IP transaction issues can be exceptions.
Do you have to contact the defendant before filing a request for injunction?
No, you do not. However, Courts in Italy consider the sending of C&D letters to the defendant before initiating proceedings positively. This might result in a Court's favourable attitude to claimant's requests.
Which court has jurisdiction to grant an injunction?
Jurisdiction and venue are assessed on the basis of two concurrent criteria, between which the claimant can freely choose: (i) Court of the defendant's seat of residence or business; (ii) Court in the district where infringement occurred, is occurring, or may occur.
What are the proceedings when requesting a preliminary injunction?
The claimant shall file his or her claim at Court. At this point, two alternative courses of action may take place:
Ex parte claims: these are cases where the claimant has requested that the Courts issue preliminary injunctions ex parte, ie before the defendant is informed of filing and before scheduling an oral hearing to debate the case. Such request is usually granted in cases of particular urgency or when the defendant's knowledge of an upcoming measure may jeopardise the latter's effectiveness (eg, because the defendant could destroy proof or documents to be seized). Should the claimant's requests be grounded, the Court issues ex parte preliminary injunction(s), schedules an oral hearing and orders the claimant to serve its decision upon the defendant. The claimant is entitled to enforce interim measures immediately after their issuance and before serving the Court's decision upon defendant.
Non-ex parte claims: The court examines claims and schedules an oral hearing to debate the case. The claimant shall serve the Court's order upon the defendant, along with its interim statement of claim.
Italian Law does not provide detailed rules of procedures for interim proceedings, allowing the Court to adopt whatever measures it deems opportune to obtain the most complete, possible scenario in view of possible injunction(s). Accordingly, at oral hearing the Court may ask parties to provide additional evidence or witness hearings, and grant deadlines for filing further briefs and scheduling additional hearing(s). As far as patent cases, most Italian Courts even allow interim court expertise upon validity and/or infringement taking place.
The first interim degree decision is granted by a single Judge in the IP specialised division of the competent Court and may be appealed within 15 days from its issuance. The second interim decision is adopted by a panel of three Judges of the same IP specialised division and cannot be further appealed. Measures contained therein, though, might be subject to revocation in following proceedings on the merit and/or, if the factual or legal situation substantially changes, in further interim proceedings.
What are the proceedings after the preliminary injunction has been issued?
Preliminary injunctions issued ex parte or within first or second-degree interim decisions are filed by the Court at the Court clerk's office. In the case of ex parte preliminary injunctions, they are communicated to the claimant only. By contrast, Court decisions are accessible and communicated to both parties that appeared in the proceedings.
Preliminary injunctions are immediately effective. Enforcement of preliminary injunctions involving seizures, access to defendant's premises or information disclosure must be carried out in the presence of a bailiff and with the latter's assistance.
The time limit to enforce preliminary injunctions regarding seizure or access to the defendant's premises is 30 days from their issuance, otherwise they become null and void. Appeal does not suspend the enforceability of a first instance decision.
Will the other side get informed if a preliminary injunction request is denied?
If the Court denies ex parte preliminary injunction requests, it also schedules an oral hearing. The claimant shall serve such decision upon the defendant along with his or her interim statement of claim. Therefore, defendant becomes aware of the ex parte denial.
In the case of a default in proceedings, the defendant will normally not become aware of the Court's rejection of claimant's requests.
In cases where both parties have appeared in the proceedings, a decision granting or denying the claimant's request is communicated also to the defendant.
How can a preliminary injunction decision issued by the Italian court be appealed?
Preliminary injunctions issued ex parte can be revoked after oral hearing.
Preliminary injunctions issued at the end of the first interim degree may be appealed by filing an interim appeal within 15 days from the issuance of the first-degree decision.
Preliminary injunctions issued (or confirmed) at end of the interim appeal cannot be further appealed unless the factual or legal situation on the basis of which they have been granted has significantly changed. Nonetheless, they can be revoked within proceedings on the merit.
Can preliminary injunctions obtained in Italy be enforced in other countries?
As a matter of principle, Italian preliminary injunctions may also be enforced in other Member States of the EU. The claimant needs to file request for enforcement with the Court in the Member States in which the injunction shall be enforced according to Article 38(1) of the Regulation on Jurisdiction and Recognition and Enforcement of Judgements.
Regarding Community Trade Marks and Community Designs, Italian Courts' preliminary injunctions have effect on the entire territory of the EU provided that defendant has residence or a registered office in Italy.
What are the consequences for infringing a preliminary injunction?
Under Italian Law, Court orders imposing obligations to refrain from a certain conduct can be issued with a penalty for lack of enforcement or for delay in enforcing the order; this applies both to IP infringement and unfair competition cases. Penalties shall be specifically requested by claimant.
Can protective briefs be submitted?
Protective briefs aim to prevent a Court issuing an ex parte injunction without having heard any arguments from the defendant. This brief contains arguments in defence for an alleged infringement case that might be filed by another party.
Protective briefs are unavailable in Italy.