Italy’s IP regime reflects the first impressions of many visitors when they arrive in the country – a rich blend of history and innovation, with a large streak of independence thrown in for good measure, as Licia Garotti of international law firm Bird & Bird explains

Like most of its European neighbours, Italy’s membership of the various WIPO treaties is standard and its commitment to IP protection is long standing. It joined the Paris Convention in July 1884 and the Berne Convention in 1887, signed the Madrid Agreement in 1894, the Lisbon Agreement in 1968, joined the WIPO Convention in 1977 and became a member and signatory party to the TRIPS Agreement in 1994.

In 2003, the protection of IP Rights was assigned to 12 specialised courts, which have exclusive jurisdiction over all IP matters. As a result, its specialised judges are able to resolve any disputes quickly and efficiently.

In February 2005, the Italian IP laws concerning trademarks, patents and designs were also reorganised and updated, giving birth to the unified code known as the ‘Intellectual Property Code’ (IPC). The Code attempted to realign and simplify the laws regarding IP in a bid to streamline domestic laws in line with European Union law and wider international laws - while being mindful of the large number of special laws, borne out of 60 years of legislative activity.

Using the TRIPS Agreement as a model, the Code encouraged the competitiveness of Italian companies by protecting domain names and providing legal protection for corporate secret information. Interestingly, copyright is not part of the Intellectual Property Code and is regulated separately by the Italian Copyright Act of 1941.
Italian civil law allows the protection of IP Rights through ordinary proceedings on merit, or, under certain circumstances, through preliminary proceedings, amongst which the proceeding leading to ‘descrizione giudiziale’ (judicial description) allows IP Rights owners to obtain the description of the alleged infringement.

IP Protection is also provided by criminal laws and the specialised activity of the law-enforcement intelligence agencies, such as the Italian Financial Police (Guardia di Finanza). Through the Italian Customs authorities, patent, trademark, design and copyright owners can request the prevention of counterfeit goods (which may infringe certain IP Rights and come from non-EC countries), from entering the Italian market through EC Regulation 1383/2003.

The biggest problem facing Italian IP at the present time is counterfeiting and copyright piracy. A 2006 study by the International Intellectual Property Alliance (IIPA) revealed that Italy has the highest piracy rates in Western Europe, particularly in the fields of entertainment software and business software applications. The study estimated that copyright piracy was responsible for trade losses of over $1.4bn.

The Intellectual Property Code (IPC) attempted to realign and simplify the laws regarding IP in a bid to streamline domestic laws in line with [the] European Union.

Counterfeit CDs and DVDs are openly sold in public and while the world-famous Italian fashion industry has been heavily hit, there is now a trend in favour of imported counterfeit goods from non- Italian brands, which are commonplace on the Italian black market. However, counterfeiting is not just restricted to more traditional items such as handbags and ladies clothes. In February 2008 the Guardia di Finanza arrested a counterfeit car maker in Palermo, who was accused of building and selling fake Ferraris.

Laying down the laws
The registration of patents, trademarks and designs is assigned to the Italian Patents and Trademarks Office (Ufficio Italiano Brevetti e Marchi or IPTO). Although based in Rome, the office has satellite branches located within the chambers of commerce, acting as branch offices for the purposes of filing and processing applications.

In January 2008, the IPTO and the EPO reached an agreement, according to which Italian patent applications will soon be subject to prior art searches. Previously, Italian patent legislation made no provision for prior art searches and substantive examination for national applications: the assessment of patentability was deferred to prosecution before the specialised court.

This has led to a widespread belief that patents granted in Italy have a lower presumption of validity when compared to other titles across Europe. According to the agreement, from the second half of 2008, all Italian patent applications will be subject to a search report and patentability opinion issued by the EPO.

Trading on a name
Trademark protection is guaranteed for 10 years and is renewable for an indefinite period. Unregistered trademarks can be protected in some instances. According to the Paris Convention, the owner of a well-known trademark may prevent the use of a later identical or confusingly similar trademark, even when this is used for dissimilar goods or services.

Puma v Euroda in June 2007 demonstrated the effectiveness of the Italian Court of Milan, by granting Puma a seizure order against Euroda, which was counterfeiting Puma’s trademark. In the field of industrial design, a registered design right offers exclusive rights to the use of that design in commerce and allows legal action against infringers and damages compensation.

Protection is provided for up to 25 years but the filing must be renewed every five years. Under certain circumstances, new legislation offers cumulative protection for industrial design according to both copyright and IPC. A recent law gives extended economic protection to designs protected by copyright, which lasts 70 years after the designer’s death.

Under Italian copyright law, the author of any original work is protected without registration. Copyright protection is provided for during the life of the author and for 70 years after his or her death. One peculiarity to Italy is that many copyrighted works for sale carry the Italian Society of Authors and Publishers (SIAE) stamp or sticker. This is to guarantee the authenticity of each copy of work. Companies are required to file product information with the SIAE in order to have those stickers of authenticity placed on each copy of the product protected by copyright.


MAJOR LEGISLATION

1474 World’s first patent issued by Republic of Venice for Venetian statue
1939 Passed law on Patents for Inventions (amended 1996)
1941 Protection of Copyright and Neighbouring Rights Act passed in April of that year
1942 Trademark law passed by Royal decree
1990 Competition and Fair Trading Act passed
2005 Overhaul of current system by introduction of new Intellectual Property Code


This article was first published in IP Review, issue 22

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