Intellectual Property @en

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 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 Italian Supreme Court on copyright protection for Thun’s design works

On 23 March 2017, the Italian Supreme Court issued decision no. 7477/2017 in a case concerning the marketing of copies of the well-known Thun statuettes, reiterating the principles governing the copyright protection of industrial design. The decision is in line with the now consistent case-law formed in the last […]

The burden of proof in IP negative declaratory proceedings: a ruling from the Bologna IP Court

In its recent decision no. 302 of 2016, the Bologna Court division dealing with IP matters addressed the much-debated subject of the burden of proof in negative declaratory proceedings, specifically in the context of patent litigations.

The proceedings had been brought by an Italian company, seeking negative declaratory relief from […]

Slavish imitation of competitors’ packaging: a decision from the Milan Tribunal

Judgment no. 8817/2015 of 17 July 2015 of the Business Matters Section of the Milan Tribunal is one of a long list of rulings by this Court on the imitation of the packaging of competitors’ products (such as those we discussed here and here).

The manufacturer of a renowned consumer […]

Trademark licences, sell-off periods and the exhaustion doctrine (Milan IP Court, order of 30/04/2015, docket no. 13254/2015)

In the matter of trademark infringements, conflicts between a licensee’s buyer or assignee and the trademark owner are usually more complex than the archetypal litigation between the trademark holder and any alleged infringer. There is, in fact, a complicating factor, represented by the contractual relations of both parties with […]

Patent enforcement in Italy beyond and after civil proceedings (Court of Cassation, Criminal Chambers, Ruling No. 15646/2015)

(Article co-authored by Luca Musso, Studio Legale Musso)

A legal dispute between two competing businesses in the construction sector involving some of the most compelling issues in patent enforcement came to a close with the Court of Cassation (Criminal Chambers) ruling no. 15646/2015. A closer look at how the proceedings unfolded […]

The Court of Milan in Mylan v. Boehringer applies the ECJ decisions on supplementary protection certificates

By decision no. 4136/2015 of 31 March (in Mylan v. Boehringer), the Court of Milan declared the invalidity of a supplementary protection certificate (“SPC”) for a combination of two active ingredients, one the object of a basic patent (and already covered by an SPC) and the other one in […]

Wheel rim designs and replica rims: Audi wins before the Milan IP Court

In its decision no. 2271/2015 published on 19 February 2015, the IP Court of Milan once again tackled an issue that has pitted car manufacturers and component makers against each other for years: the scope of the so-called “repair clause”.

Audi AG, the German car manufacturer, filed a lawsuit against […]

The shape of the Royal Oak by Audermars Piguet is not protectable as a trademark, says the Court of Milan

(An Italian version is published also on Diritto 24 – Il Sole 24 Ore)

The Court of Milan (Business Chamber “A”) recently issued an interim decision on the possibility of protecting the shape of a product as a trademark and against slavish imitation (order of 12 March 2015, docket no. […]

A Lawyer’s Work May Be Protected By Copyright

A recent judgment of the IP Court of Venice addresses a perhaps unprecedented issue in Italian case law: that of the protection under copyright laws of a work created by a lawyer for their client in the performance of legal services.

The case brought before the Court regarded an anti-counterfeit […]

The Italian Supreme Court on the use of a surname as a trademark: Alessi vs. Exclusive di Giacinto Alessi

(An Italian version of this post is published on Diritto 24 – Il Sole 24 Ore)

By judgment no. 3806/15, published a few days ago, the Italian Supreme Court ruled on the infringement of an earlier registered trademark by a company name and corresponding unregistered trademark containing a surname identical […]