Italian patent box includes all intellectual property rights

On 24 March 2015, the Investment Compact Decree became law. The characteristic of this new regime is that tax benefit covers not only patents but also any other intellectual property right (trademarks, designs, copyrights etc.). The percentage of profits deriving from the exploitation of Intellectual Property Rights, which must be the result of R&D activities, will be of 30% in 2015, 40% in 2016 and 50% from 2017. This will give rise to certain tax benefits. This optional regime is irrevocable and renewable. The purpose is to attract foreign investments enhancing intangible assets.

Who is who?

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Italian Supreme Court. Protection of a strong trademark is not absolute

Who is who ? Confusion lies not in the marks but in the Courts It the decision issued on 17 February 2015, the Supreme Court stated that the two figurative trademarks above are similar but there is no likelihood of confusion. There is no infringement of the figurative trademark “Valentino” by figurative trademark “Giovanni Valentino” because the owner of an earlier registered trademark (even if qualifying as a strong one), cannot invoke likelihood of confusion if the distinctive character of its products remains unaltered, even if the two companies are active in the same product market.

IP Court of Rome, 4 March 2015

The trademark “EAbbigliamento Emporio Fashion” registered for Class 25 of the Nice Classification is null, because of the likelihood of confusion with the “EA” (Emporio Armani) strong trademarks owned by Giorgio Armani S.p.A.

Risk of confusion

UIBM (Italian Patent and Trademark Office): Jaguar Land Rover Limited v China Depend Limited, 9 January 2015

The company China Depend Limited has registered in Italy the figurative trademark 路虎 (literally “Road” and “Tiger” for Class 18 and Class 25 of the Nice Classification). The company Jaguar Land Rover has challenged the registration, claiming that two ideograms mentioned above mean together “Land Rover”, which is registered (including for class 18 and class 25) in Italy as a word trademark (and also used in China with the same two ideograms 路虎 to identify itself). However, the Italian Patent and Trademark Office rejected this opposition because the visual comparison of the two trademarks does not show a likelihood of confusion, in other words, this figurative trademark (the two ideograms) is incomprehensible/unknown for the Italian consumers concerned and the presence of a large number of Chinese immigrants in Italy does not make a difference.

UIBM decision: Apple Inc. v Hedera Natur s.r.l., 15 December 2014

The figurative trademark

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cannot be registered for class 16 because there is a likelihood of confusion with the distinctive trademark owned by Apple Inc.

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Distinctive Strength

IP Court of Milan, 18 September 2014, n. 11375, Latin Lover vs. Chanel

The advertising campaign using the pun “Latin Lover” for the trademark “Chanel” does not infringe the registered trademark “Latin Lover”. For the Italian Court, there is not an infringement of the “Latin Lover” trademark, since the defendant, Chanel, has marked its products under its own trademark “Chanel” (and not with that one of the counterparty, “Latin Lover”). In addition, the Court found that the term “Latin Lover” is extremely weak as widely used in the industry as evocative of an elegant clothing and “elite”. The Court also considered that the likelihood of confusion of their products has to be excluded since the two companies work in different sectors of the market (sportswear, youth and economic the one – elegant and expensive clothing the other one).

IP Court of Milan, 12 March 2015, protective measure, Audemars Piguet v D One

The shape of the Royal Oak invoked as a trademark by Audermars Piguet is devoid of any distinctive character, so it cannot be protected as a trademark.

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Supreme Court - Divani&Divani (literally “sofas&sofas” registered for sofas) vs. Divini&Divani

The Supreme Court has reignited the “secondary meaning” doctrine with reference to a trademark which is descriptive for sofas. In its decision of 9 February 2015, the Court pointed out that it is not correct to exclude “the possibility that a trademark originally weak can become strong thanks to the commercial dissemination and advertising investments”. For this reason, the Court of Appeal should have checked whether the trademark “Divani&Divani” (=“Sofas&Sofas”) has “gained distinctive character , in consideration of its widespread use at national and international level and of the lasting advertising support “.

Copyright and Trademarks on the World Wide Web

Court of Appeal of Milan, Yahoo! v RTI. n. 29/2015, 7 January 2015

Limited and specific liability for hosting providers: a hosting service provider is not obliged to monitor in advance the information and contents uploaded by users. It will be liable only in the event that it fails to remove the contested contents upon an official claim of the copyright owner or upon a judicial order.

Trademark and unfair commercial practices: Italian Competition Authority – Nike case

On May 13, 2014, the Italian Competition Authority (AGCM) shut down 33 websites selling counterfeit Nike shoes. These websites would easily misled consumers inducing them to believe that they sold original products at outlet prices. Italian Competition Authority confirmed that such action amounts to serious unfair commercial practices.