Italy: Intellectual Property - The Enactment of TRIPS in the Italian Legal System

Last Updated: 7 August 1996
With Legislative Decree no. 198 of 19/03/96 which came into force on 16/04/96, the Italian intellectual property law system witnessed the implementation of the provisions contained in the Gatt-Trips Treaty, established in the "Uruguay Round", signed in Marrakech on 15/04/95.

In general, the amendments to previous Italian rules mainly concern the introduction of the principle of reciprocity of treatment for citizens of the States which signed the agreement; and above all, from a practical point of view, the substantial reinforcement of the procedural tools available in the individual jurisdictions in order to exercise the rights deriving from patent or trade mark registration.

With regard to trade marks, it should be mentioned that Art. 1 of the aforementioned legislative decree extends the protection granted to trade marks, in relation to the subsequent use of identical or similar trade marks, for related products and/or services or, in the case of a renowned or famous trade mark, also for non-related products and/or services.

Moreover, Art. 3 provides that it is sufficient, in order to deem that subsequent registration applications lack the novelty requirement, that mere promotional prior use has occurred which made the trade mark known in the country concerned, with no need for actual commercial use.

From a procedural point of view, Art. 58bis is also important as it allows the courts, "in the event that a party has supplied circumstantial evidence to support its claims and has identified documents, items and information held by the other party that confirm such evidence", to order their discovery. This rule appears to remarkably extend, in intellectual property proceedings, the power of Italian judges to order the exhibition of documents, which is ordinarily restricted to those cases where the applicant has some rights to the documents to be exhibited or to their contents.

In fact, the judge may now even order the alleged infringer to supply information in relation to the production and distribution of the infringing products or services, except in cases where the information is considered to be privileged or intrinsically confidential.

It is interesting to note that this rule derogates from the "sacred principle" of Italian law, where no such thing as common law system's discovery exists, by which the defence is never under a duty to collaborate with the judge or the other party in order to ascertain facts that may result in a decision being awarded against the same party.

Finally, Art. 7 expressly states that the provisions which relate to the enforcement of judgments and sequestrations may touch upon any or all of the infringing goods as well as the means by which they are produced and any evidence concerning the infringement.

The Decree enacting the GATT-TRIPS Treaty now explicitly states that the formal requirements and the method of granting an injunction in trade mark cases are governed by the provisions of the Civil Procedure Code, thereby clarifying a question from which much perplexity arose in the past.

Similar procedural rules have been introduced with regard to patents for inventions and designs, and the significance of the protection granted for such rights is demonstrated by the new decree.

In particular, as far as the process patent is concerned, the law provides that not only is the reproduction of the process forbidden, but also the use, sale and importation into Italy of products directly obtained from the process.

This legislative modification aims to curb the present trend amongst the chemical and pharmaceutical manufacturers which, in the presence of a process patent in force in Italy, arrange to have a product with the process in question manufactured in another country where the process has not been patented or where there is less probability of legal problems arising, and then to import or market the product to Italy.

There now exists a presumption by which, in the absence of alternative manufacturing processes known as state of the art, the product is considered to be the fruit of the patented process, except where evidence exists to the contrary.

Finally, it is worth noting that the amendment implemented by Art. 6-bis aims to prevent the disclosure to third parties, or the direct use, of company and commercial information in a manner that is contrary to professional correctness, and therefore applies to information leaks, which are not protected by patent rights, by a disloyal employee or ex-employee, extending and specifying the laws in force in relation to unfair competition and industrial espionage.

It should also be mentioned, whilst awaiting the EEC directive on design protection, that with regard to utility patents and patents for ornamental designs the Decree has imposed new regulation for the taxes applicable for the registration of textile designs. The new regulations provide for the payment of such taxes in annual installments so that it is now possible for a business to limit investment by waiving its rights to the patent, through non-payment of taxes, as soon as the design loses interest from a commercial point of view.

May we avail of this opportunity to announce that the trade mark and patent deposit and research services supplied by our Firm, under the responsibility of Roberto Dini, through Metroconsult Srl, have been centralised in our Intellectual Property Department premises in Milan. The same services are however accessible through any of the Firm's offices.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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