BUSINESS BRIEF: ITALY
BUSINESS BRIEF: ITALY Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
National patent applications are filed before the Italian Patent and Trademark Office. Registrations confer rights in the Italian territory. If products are intended for marketing and sale outside the Italy, a European Patent (EPO) or an International Patent (PCT) application— while more costly—will almost certainly be a preferable option.
What are the most common mistakes businesses make?
A common mistake is to disclose the patent before publication. Tis may invalidate the entire application. It is also a common mistake to believe that the patent application is not enforceable until aſter registration. Italian patents may be enforced before the Italian specialised IP courts from the application date.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Te key threat to patent owners is patent infringement. Because patents do not undergo substantial searches prior to registration it is also possible that patent infringement proceedings will result in a judgment of patent invalidity. Terefore patent owners should carefully evaluate litigation even when patent rights are under threat.
Trademarks
How do you register or secure trademark rights, and what protection do they grant? A trader intending to use, or using, a sign is advised to apply for registration either with the Italian Trademark Office or by applying for a Community trademark which—by its very nature—includes the Italian territory. Since
the Italian Trademark Office doesn’t examine applications against prior marks, it is preferable to carry out clearance searches before filing.
Applications can be filed by either a trademark agent or an Italian attorney. Te applicant must provide its full details, a specimen of the mark and a list of the relevant classes of goods/services. If the sign is used for other classes the applicant must pay extra class fees.
A trademark owner is entitled to bring actions for infringement and cancellation of subsequent similar registrations/applications. Actions including preliminary seizure orders and criminal measures are available for counterfeit trademarks and products.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
Counterfeiters who blatantly copy signs and/ or products with the intention of defrauding consumers as to the origin of the goods are a constant threat to trademark owners. Tis continues to be a threat both from within Italy and from third world countries where labour costs are low. Marketplace competitors also pose a threat by creating similar marks for the same or different products and seeking to trade on the goodwill or good reputation of former well- known trademarks. Te evolution of the Internet and digital media has dramatically compromised trademarks due to the ease of imitation online and the use of domain names that are identical or similar to registered trademarks.
What are common mistakes that trademark owners make?
Trademark owners oſten fail to consider the territories in which the mark will be used in the future and realise too late—when they try to register outside the initial Italian territory— that similar trademarks block their registration.
126 World Intellectual Property Review Annual 2012
Another common mistake is failing to maintain a registration by periodically ensuring that the trademark is still used in connection with the goods originally applied for.
Have there been any changes to the trademarks law(s) in the last 10 months?
Commencing July 2011, Italy has introduced trademark oppositions. Trademark owners can now file oppositions against Italian trademark applications filed aſter May 1, 2011, as well as against international registrations designating Italy, published in the WIPO Gazette. With this relatively cheap and, hopefully, effective opposition system it is expected that fewer trademark cases will need to be resolved in the courts.
Copyright
What are the key challenges to copyright holders in your jurisdiction? Te greatest copyright issue is piracy, which has heavily affected original digital works in the soſtware, film and music industries.
How should people ensure they are protected against copyright infringement?
While Italian copyright law does not make the registration of works compulsory, it is advisable to maintain a record of the existence of the work at the time of the creation. Te authors of any copyright can file a copy of their work with the Office for Literary, Artistic and Scientific Property, which includes it on the general registry. Computer programs can be filed to the SIAE (the main Italian Collecting Society), although in some cases they may also be filed as patents.
What is the best way to deal with infringement, and what are the costs associated with it?
If copyright is infringed and negotiation fails, litigation may be the only way forward. If there is urgency to proceed it may be preferable to seek
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