Patents, trade marks, copyright and designs in Italy: overview

A guide to intellectual property law in Italy.

The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the patents, trade marks and designs Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Davide Bresner and Lydia Mendola, Portolano Cavallo
Contents

Patents

1. What are the legal requirements to obtain a patent?

A patent can be obtained to protect an invention of product or method. To be patented, the invention must:

  • Be novel (not the state of the art).

  • Involve an inventive step.

  • Be capable of industrial application.

The invention must also be described in a sufficiently clear and complete manner.

 
2. What categories are excluded from patent protection?

The following are not considered inventions and, consequently, cannot be patented:

  • Discoveries, scientific theories and mathematical methods.

  • Plans, principles and methods for intellectual activities, games, commercial activities and computer programs.

  • The presentation of information.

The following cannot be patented:

  • Methods for surgical or therapeutic treatment of the human or animal body and diagnostic methods for the human or animal body.

  • Plant varieties and animal breeds and essentially biological processes for the production of animals or plants (including new plant varieties which are solely a genetic modification of other plant varieties).

  • Plant varieties registered in the national agricultural register, and plant varieties from which derive productions that are protected designation of origin, protected geographical indication or traditional speciality guaranteed.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, UIBM) is the authority in charge of registering patents.

Guidance on the application procedure is on the official website www.uibm.gov.it/index.php/inglese, together with the application form (www.uibm.gov.it/attachments/invenzionistruzioni.pdf). This document is in Italian only.

 
4. On what grounds and when can third parties oppose a patent application or challenge an issued patent?

There are no administrative remedies against patent applications.

A patent application or an issued patent can be challenged on the ground of invalidity before the IP specialised court where the patent is domiciled, due to:

  • Lack of novelty.

  • Lack of inventive step.

  • Lack of industrial character.

  • Insufficient description.

  • Extension of the patent as granted beyond the content of the original application.

 
5. When does patent protection start and how long does it last?

A patent application can be enforced from the first time it is made accessible to the public. Patent protection continues for 20 years from the filing date.

 
6. On what grounds can a patent infringement action be brought?

A patent infringement action can be brought if the exclusive rights of the patent owner have been infringed. Acts of infringement can include:

  • Import/export of the patented goods.

  • Manufacture of the patented goods.

  • Offer for sale of the patented goods.

  • Distribution of the patented goods in the market.

 
7. Which courts deal with patent infringement actions?

Disputes are dealt by the specialised IP sections of the commercial courts (the IP courts).

 
8. What are the defences to patent infringement actions?

The most common defences against patent infringement actions are:

  • Invalidity of the patent (lack of novelty, lack of inventive step, insufficient description, and so on).

  • Non-infringement.

 
9. What are the remedies in patent infringement actions?

The main remedies in preliminary proceedings include:

  • Preliminary injunction.

  • Description orders.

  • Seizure orders.

  • Orders to disclose information on the infringement.

  • Penalties for violation of an injunction.

  • Publication of the decision.

  • Order to withdraw the infringing goods from the market.

  • Order to disclose financial information on the infringer.

  • Order to disclose information on the manufacturing and sale channel.

The main remedies in ordinary proceedings include:

  • Permanent injunctions.

  • Order to destroy the infringing tools/goods and assignment of them to the patent owner.

  • Damages.

  • Reimbursement of legal costs.

  • Order to publish the decision.

  • Penalties for violation of an injunction.

  • Order to withdraw the infringing goods from the market.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

Fast-track (urgent) proceedings are available for patent infringement. The owner of the patent must meet the following basic requirements to initiate proceedings:

  • A likelihood of success on the merits of the case (fumus boni juris). The applicant must provide the court with evidence that the patent is valid, and that an infringement has occurred.

  • A serious danger in delaying proceedings (periculum in mora). The petitioner would suffer irreparable harm if the urgent petition is not granted.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

Trade mark registration can be obtained for a sign capable of being represented graphically, when the following conditions are met:

  • Novelty.

  • Distinctive character.

  • Lawfulness.

  • Truthfulness.

 
12. Is it necessary or advisable to register trade marks?

Registration of a trade mark is recommended, since it grants the right holder wider protection.

Unregistered trade marks can only be protected if they have acquired notoriety due to their use in a significant part of the territory. In this case, the burden of proof is on the holder of the unregistered trade mark.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The competent authority for the registration of trade marks is the Patent and Trade mark Office. Information on the application procedure is provided in English, at www.uibm.gov.it/index.php/marchi/archivio-articoli/2007589-how-to-register-a-trademark

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

The Patent and Trade mark Office carries out a formal examination to verify both that:

  • The application is correct.

  • The conditions for registration are met. In particular, it verifies the absence of deceptiveness, unlawfulness and distinctiveness.

 
15. On what grounds and when can third parties oppose a trade mark application or cancel a registration?

The right holders of a prior registered (or unregistered) trade mark can oppose the registration of an identical or confusingly similar trade mark for the same or similar product/services. The opposition must be filed within three months from the date of publication of the challenged application.

In addition, the right holder can file an invalidity action against registration of the trade mark before the competent IP courts.

 
16. When does trade mark protection start and how long does it last?

Trade marks are protected as of the application date and the protection continues for ten years. Registration can be renewed indefinitely for ten-year periods.

 
17. On what grounds can a trade mark infringement action be brought?

A trade mark infringement action can be brought when the exclusive rights of the trade mark owner have been infringed. Infringing conduct includes:

  • Import/export of goods bearing an identical/confusingly similar trade mark.

  • Manufacture of goods bearing an identical/confusingly similar trade mark.

  • Offer for sale of goods bearing an identical/confusingly similar trade mark.

  • Distribution of goods bearing an identical/confusingly similar trade mark in the market.

 
18. Which courts deal with trade mark infringement actions?

Civil courts are competent to deal with trade mark infringement cases, in particular the IP sections of the specialised commercial courts.

 
19. What are the defences to trade mark infringement actions?

The most common defences to trade mark infringement actions are:

  • Invalidity of the trade mark (lack of distinctive character, lack of novelty or unlawfulness).

  • Non-infringement.

 
20. What are the remedies in trade mark infringement actions?

The main remedies in ordinary proceedings include:

  • Preliminary injunctions.

  • Order to destroy the infringing tools/goods (or assignment of the infringing goods to the trade mark owner).

  • Damages.

  • Reimbursement of legal costs.

  • Publication of the decision in the press.

  • Penalties for violation of an injunction.

  • Order to withdraw the infringing goods from the market.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?
 

Copyright

22. What are the legal requirements to obtain copyright protection?

Copyright protected works include music, literature, any artistic works, databases, software, sound records, films and broadcasting.

Copyright protection is recognised for works which are characterised by originality and creativity.

Further, these works must be the expression of the personality of the author.

 
23. Can copyright be registered? If so, is registration required?

Registration with the Italian Society of Authors and Publishers (Società Italiana degli Autori ed Editori, SIAE) is not necessary to obtain protection, but it is advisable since it gives evidence of:

  • The date of creation of the work.

  • Its publication.

  • The name of the author.

  • The name of the right holder.

 
24. When does copyright protection start and how long does it last?

Copyright protection is automatic and starts with the mere creation of the work.

The duration of protection is different due to the nature of moral and economic rights:

  • Protection for moral rights is perpetual.

  • Protection for economic rights lasts for the lifetime of the author plus 70 years. The 70-year protection period commences from the first calendar year after the death of the author.

 
25. On what grounds can a copyright infringement action be brought?

A copyright infringement action can be brought on the ground that the exclusive rights of the copyright owner have been infringed.

Acts of infringement include:

  • Copying the work, issuing copies of the work to the public, or communicating the work to the public without the copyright owner's consent.

  • Importing infringing copies of the work, or providing the means to make copies of the work, without the copyright owner's consent.

 
26. Which courts deal with copyright infringement actions?

Disputes are dealt with by the specialised IP sections of the civil commercial courts.

 
27. What are the defences to copyright infringement actions?

The most typical defences to copyright infringement actions are:

  • Invalidity of the copyright (lack originality or creative character).

  • Non-infringement.

 
28. What are the remedies in copyright infringement actions?
 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?
 

Registered designs

30. What are the legal conditions to obtain a registered design right?

Registration can be granted for a registered design right on the appearance of the whole, or part, of a product resulting from the features of the lines, contours, shapes, texture, or materials of the product itself. To do so, a design must:

  • Be novel.

  • Have individual character.

  • Be lawful, that is, not contrary to law or morality.

In addition, those features that have been determined only by the technical functioning of the product cannot be registered.

When evaluating these features, the design should be regarded as relating to a material product. Its mere abstract representation is not entitled to protection by law.

 
31. Which authority registers designs?

The Patents and Trademarks Office registers designs. Registration grants the author an exclusive right to use the design and any design which does not produce a different general impression on an informed user. For the application procedure, see www.uibm.gov.it.

 
32. On what grounds and when can third parties oppose a registered design application?

A legal action can be filed to challenge the validity of a registered design. No administrative remedies are available.

An invalidity action can be grounded on the following arguments:

  • Lack of novelty and individual character.

  • The design is not in compliance with public order and law.

  • The design is determined by its mere technical functioning.

  • The registration holder was not entitled to register.

  • Interference with a third party's copyright or distinctive marks.

  • If the design constitutes improper use of one of the elements listed at Article 6ter of the Paris Convention for the Protection of Industrial Property 1883, or of any sign particularly relevant for the interest of the state.

 
33. When does registered design protection start and how long does it last?

Protection lasts five years from the date of submission of the request for registration, and is renewable for periods of five years up to a maximum of 25 years.

 
34. On what grounds can a registered design infringement action be brought?

The right holder is entitled to judicial protection against a third party who, without his consent, carries out:

  • Manufacturing.

  • Offer.

  • Marketing.

  • Import/export.

  • Distribution of the product in which the registered design is embedded.

 
35. Which courts deal with registered design infringement actions?

Disputes are dealt with by the specialised IP sections of the civil commercial courts.

 
36. What are the defences to registered design infringement actions?

The most typical defences to registered design infringement actions are:

  • Invalidity (lack of novelty, lack of individual character or unlawfulness).

  • Non-infringement.

 
37. What are the remedies in registered design infringement actions?
 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?
 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

The protection of unregistered designs is set out in Regulation 6/2002 on Community designs. To be granted protection as an unregistered design, the design must:

  • Be novel.

  • Have individual character.

  • Be lawful, that is, not contrary to law or public morality.

  • Its features should not be determined by the mere technical functioning of the product.

 
40. When does unregistered design protection start and how long does it last?

Protection arises the first time the unregistered design is used in the EU market, and lasts three years.

 
41. On what grounds can an unregistered design infringement action be brought?

The unregistered design owner has the right to protect its exclusive rights in the following cases of infringement:

  • Import or export of goods infringing an unregistered design.

  • Manufacture of goods infringing an unregistered design.

  • Offer for sale of goods infringing an unregistered design.

  • Distribution of goods infringing an unregistered design in the market.

 
42. What are the defences to unregistered design infringement actions?

The main defences available to a defendant in an infringement action are:

  • Non-infringement.

  • The unregistered design lacked the requirements to be entitled to protection by law, that is, novelty and individual character.

 
43. What are the remedies in unregistered design infringement actions?
 

Trade secrets and confidential information

44. What are the legal conditions for rights in confidential information to arise?

Confidential information is subject to legal protection if the following conditions are met:

  • It is not available to the public.

  • It has an economic value because it has been kept secret.

  • Security measures have been implemented to keep the information secret.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

An action for unauthorised use of confidential information can be brought on the following grounds:

  • Unauthorised disclosure to third parties.

  • Unauthorised use.

  • Unfair competition.

 
46. Which courts deal with actions for unauthorised use of confidential information?

Disputes are dealt with by the specialised IP sections of the civil commercial courts.

 
47. What are the defences to actions for unauthorised use of confidential information?

The main defences are the following:

  • Lack of the requirements to be considered confidential information.

  • Denial of disclosure/use of the confidential information.

 
48. What are the remedies in actions for unauthorised use of confidential information?
 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?
 

Contributor profiles

Davide Bresner, Associate

Portolano Cavallo

T +39 02 722341
F +39 02 72234545
E dbresner@portolano.it
W www.portolano.it

Professional qualifications. Italy, Lawyer

Areas of practice. Intellectual property; trade marks; patent and anti-counterfeiting strategies

Languages. English, Italian

Professional associations/memberships. INTA-Anticounterfeiting Committee 2016/2017.

Lydia Mendola, Counsel

Portolano Cavallo

T +39 02 722341
F +39 02 72234545
E lmendola@portolano.it
W www.portolano.it

Professional qualifications. Italy, Lawyer

Areas of practice. Intellectual and industrial property; trade marks and patents; design and copyright

Languages. English, Italian

Professional associations/memberships. AIPPI member (International Association for the Protection of Intellectual Property).


{ "siteName" : "PLC", "objType" : "PLC_Doc_C", "objID" : "1247243453745", "objName" : "Patents, trade marks, copyright and designs in Italy overview", "userID" : "2", "objUrl" : "http://us.practicallaw.com/cs/Satellite/us/resource/2-384-9640?null", "pageType" : "Resource", "academicUserID" : "", "contentAccessed" : "true", "analyticsPermCookie" : "2-34f33658:15b15bf65c4:71f7", "analyticsSessionCookie" : "2-34f33658:15b15bf65c4:71f8", "statisticSensorPath" : "http://analytics.practicallaw.com/sensor/statistic" }