Eponymous companies and use of the designer’s personal name: 

Mr. Alviero Martini vs. Alviero Martini S.p.A. 

Alviero Martini recently decided to bring an appeal against the decision of the Court of Milan, in the proceedings brought against Alviero Martini S.p.A., which acquired the trademark “Alviero Martini Prima Classe”. In the first instance, the Court of Milan stated, inter alia, that the defendant could not legitimately use the designer’s patronymic as a stand-alone trademark, absent a specific authorization from the name holder. We look forward to hearing how the case will be solved in the second instance decision.

The new Italian Patent Box: an interesting measure for the fashion industry 

The Italian Parliament recently approved the so called Stability Law 2015, a bill containing a number of measures aimed at revitalizing the Italian economy and boosting growth in the system, including the so-called patent box, a tax incentive designed to encourage companies to profit from their patents by reducing the tax paid on those profits.

According to the bill, starting from 2015, Italian companies may request the application of a discounted tax rate for profits deriving from the exploitation of their intellectual property for the following five years. The percentage of profits deriving from intellectual property rights to be excluded from taxation is 30 percent in the first year; 40 percent in the second year; and then 50 percent for the remaining three years.

The measure covers profits deriving from patents, but also copyrights and trademarks which are functionally equivalent to the patents, as well as from know-how exploited through licenses. In the event the IP is exploited by the IP holder directly (or through subsidiaries), it will be necessary to determine the percentage of the IP profits within the profits generated by the company. Furthermore the profits gained by the holder with the transfer of the IP do not concur to form the basis for if they have been re-invested for at least 90 percent in other intellectual property rights of the same holder.

The fashion industry might benefit significantly from the adoption of this measure, which represents an important step to stimulate innovation and, overall, to incentive foreign investments in Italy. 

Holiday Pay: a new year’s gift for employees but a headache for employers

On 4 November 2014 the Employment Appeal Tribunal in the UK handed down judgment in the holiday pay appeals in Bear Scotland v Fulton and Baxter. The decision of the EAT is that many elements of pay which are currently excluded from the holiday pay of many workers must be included, including in particular overtime. Most employees will be entitled to have their holiday pay calculated as an average of all the elements of pay which they have received over the previous 12 weeks. However, any claims in respect of underpaid holiday pay in the past are only possible to the extent that no more than three months elapsed between any such underpayments. In the majority of cases this is likely to limit many back pay claims to the current holiday year. The decision of the EAT will lead to higher wage bills for many employers in the future, but the judgment limits the potential for back pay liability, which had been a major concern. 

This case law development will have a significant impact on the retail sector as many workers regularly work large amounts of overtime; employers will need to consider carefully what options there are to limit future liability and how to ensure compliance going forward.