Case law

It is lawful to prohibit sales on Amazon to protect a luxury brand, the ECJ says

(The original Italian version is published on Diritto 24 – Il Sole 24 Ore)

On 6 December 2017, the EU Court of Justice (ECJ) issued the already well-known Coty Germany ruling in case C-230/16, which discussed the legitimacy of some clauses of a selective distribution contract adopted in the context […]

Domain names: the Milan Chamber of Arbitration rules on so-called “passive holding”

On 18 October 2017, the Milan Chamber of Arbitration decided on a domain names reassignment procedure concerning two ccTLD .it domains, based on the complaint filed by a Belgian company operating in the pharmaceutical e-commerce market. The respondent had registered the two domain names in 2000, but had never […]

Privacy: the Milan Court on the unlawfulness of two-step marketing campaigns without consent

(in collaboration with Gaia Gusmini)
By decision no. 5022 published on 5 May 2017, the Milan Court entirely rejected a leading Italian telephone provider’s opposition to an Italian DPA decision, which had considered unlawful and thus had enjoined, a marketing campaign consisting of contacting around five million former customers by […]

Grounds for refusal of a probative search in IP matters: a decision by the Milan IP Court

Court of Milan – IP Section, Judge S. Giani, Order of 2 August 2017, docket no. 27991/17).

In a recent preliminary order, the IP Section of the Milan Court restated some basic principles in terms of requirements for the granting of urgent probative searches in IP litigations under Italian law […]

The Milan IP Court on the advertising of class C drugs

By first instance decision of 24 July 2017 (no. 8240/17), the IP Court of Milan ruled in a dispute between the two pharmaceutical companies Bayer and DOC Generici, stating that some communications spread by the latter constituted forbidden advertising of class C drugs and hence amounted to unfair competition […]

The Milan IP Court gives its view on jurisdiction over online IP infringements

In a recent order issued in preliminary (injunction) proceedings, the Milan IP Court summarised its standpoint on jurisdiction and venue for infringements of IP rights committed online.

Having been enjoined by the same court from marketing women’s bags that were found to infringe on the trademark and design rights of […]

The Milan IP Court on the infringement of Ferragamo’s “Vara” metal buckles

The Milan IP Court, on 12 July 2017, decided on a proceeding commenced by two Chinese shop owners against the Florentine fashion house Ferragamo S.p.A. (Docket no. 7940/2017). The plaintiffs had asked the Court to declare their non-infringement of Ferragamo’s historical trademarks – as represented below – reproducing the […]

The General Court enforces the Chanel’s monogram against a conflicting design

On 18 July, the General Court of the European Union (“GC”), in case T-57/16, annulled a decision by which EUIPO’s third Board of Appeal had rejected an action of nullity proposed by the French maison Chanel SAS against the Community design represented below (on the left), registered for ornaments […]

Isgrò vs. Waters: to the Milan IP Court, the cover art of Pink Floyd’s former member infringes the works of art of the Italian conceptual artist

With order of 25 July 2017, the Milan IP Court confirmed an ex parte preliminary injunction it previously ordered upon request of the famous Italian conceptual artist Emilio Isgrò against Sony Music Entertainment Italy S.p.A. (hereafter “Sony”), the Italian distributor of “Is this the life we really want?”, the […]

Compensation of damages due to the infringement of copyrights of the Magistretti-Flou bed

By decision of 18 July 2017 (docket no. 8066/17), the IP Court of Milan sentenced a number of companies to compensate the damages caused to Flou S.p.A. through the marketing of copies of the “Nathalie” bed designed by Vico Magistretti. We have already spoken about the copyright protection of […]

According to the Milan IP Court, the rights to Gio Ponti’s 811 armchair belong to Molteni, not to Cassina

By order of 9 May 2017, the Milan IP Court decided on a preliminary proceeding concerning a dispute that arose just before the last Salone Internazionale del Mobile – the famous Italian international furniture fair – between two of the biggest Italian furniture companies: Molteni & C. S.p.A. and […]

KOKITUSS infringes the OKI trademark, the IP Court of Milan states

In recent judgment no. 7204/17, the IP Court of Milan compared the well-known OKI trademark of the pharmaceutical company Dompè (the plaintiff) with the KOKITUSS, KOKIDEC and KOKIMUCIL trademarks of Pool Pharma (the defendant), concluding that the latter infringe the first.

Specifically, the Court held on the one hand, that […]