Italy: Italy 2000 – Trademark Anti-Counterfeiting Strategies

Last Updated: 15 January 2001

By Michel Jolicoeur & Alessandra Romeo Racheli & C. SPA

Counterfeiting and piracy of commercial goods is a phenomenon that has become a global problem and represents between 5 and 7 percent of world trade.

The intellectual property rights that are most frequently infringed concern registered trademarks, design patents and copyrights, particularly in the field of clothing, perfumes and jewellery, as well as audio-visual electronic goods and computer parts or high-tech goods. In economic terms, the over-all impact of this counterfeiting represents a loss of approximately U.S. $55 billion of sales and of 250,000 jobs per year, of which 100,000 jobs are lost in the European Union alone (source: International Customs Association, 1998).

In Italy, this problem is of utmost importance, as it has a significant impact on the local economy and on the international reputation and perception of our Country.

According to the latest available information, counterfeiting and piracy - identifiable either in the production phase as in the distribution phase – earns its culprits an estimated $3.28 billion in Italy alone, slightly less than the figures registered in Taiwan and South Korea.

This article provides a general outline of the recent developments in Italy (within the context of the European Union) with regards to the laws which have been adopted on the subject of counterfeiting and the further protection of intellectual property rights. The authors also wish to illustrate the basic strategies, the legal and non-legal remedies available to IPR owners, as well as the need for consumer education and protection.

The EU Commission presented at the end of 1998 a Green Paper on "Combating Counterfeiting and Piracy in the Single Market", the purpose of which was to assess the economic impact of counterfeiting and piracy on the Internal Market. The Commission identified and underlined four specific areas in which it was of the view that government and business joint initiatives and interventions should be reinforced, in order to fight against the crimes of counterfeiting and piracy with greater effectiveness. These are, in summary:

  • the development of private surveillance systems, organised and planned for entire sectors of production or commercialisation;
  • the co-ordination of all initiatives on local (i.e. national) and regional (i.e. the Internal Market) levels, taken by businesses, anti-counterfeiting organisations and administrations; the reinforcement of co-operation between government authorities and between the same and private organisations active in the fight against counterfeiting; increasing public and consumer awareness about the facts and consequences of counterfeiting and piracy;
  • the creation at an institutional level of a centralised anti-counterfeiting organisation in each Member State;
  • a more effective application of the existing body of laws relating to counterfeiting and piracy.

In Italy, the surveillance and monitoring of the market is generally carried out by individual businesses – within their own commercial and distribution operations – or is left to the initiative of industry associations, anti-counterfeiting associations or other associations for the protection and defence of intellectual property.

Recently, in light of Italy’s international obligations under the TRIPs’ Agreement and the European Union, there has been a significant mobilisation of public authorities in the fight against counterfeiting, which has resulted in the creation of an "anti-counterfeiting pool", lead by the Procura della Repubblica (or Italian Attorney-General) in the jurisdictions of Milan, Rome and Naples. This group co-ordinates the investigations of the law enforcement authorities, constituted by the Polizia di Stato, Carabinieri (State Police) and the Guardia di Finanza, the latter having powers especially in customs and tax-related matters. Investigations and seizures may be conducted on the basis of a substantiated complaint, and trademark owners may be called to identify whether the seized goods are counterfeited. These depositions are submitted to the Italian judge handling the case leading to a judgement and indictment.

The body of Italian laws protecting intellectual property against counterfeiting would be per se adequate but its effectiveness is actually undermined by insufficient enforcement.

Furthermore, the economic convenience for the consumer of benefiting from cheaper counterfeit goods and the substantial (and illicit) economic incentive to counterfeiters represent a real obstacle to implementing effective anti-counterfeiting strategies.

It is therefore necessary to create a culture of appreciation of original brand goods and to educate the consumer on the legal, health and public welfare risks involved in the purchase of counterfeit goods. This would constitute an effective preventive measure to the phenomenon of counterfeit goods. On the other hand, it is interesting to note that a recent Italian market study (source: Istituto di Centromarca per la lotta alla contraffazione, which is a founding member of the Glogal Anti-Counterfeiting Group) has shown that even if Italian public opinion firmly condemns counterfeiting, the Italian consumer demonstrates some apathy towards the phenomenon and a certain availability to consider the purchase of counterfeit goods, due to lack of awareness or under-evaluation of the dramatic economic and social consequences related to this act. Such collateral economic and social effects, beyond the loss of jobs and income, include the use of child-labour, the encouragement of corruption and money laundering.

An EU Council Regulation on Customs, No. 241/99/EC, in force since July 1, 1999, protects Community trademarks and provides specifically for the blocking of counterfeit goods by customs authorities of EU Member States at any border of these Member States. The blocking order can be made by any customs authority of one of the Member States and be effective and enforceable in one or more other Member States. This regulation also provides for co-operation between EU customs authorities in matters related to patent infringement and supplementary protection certificates. At this time, the Italian government is in the course of preparing a customs regulation which will give application to this EU Regulation.

Notwithstanding these recent developments, the ability to litigate trademark infringement matters before Italian courts remains at the cornerstone of an effective anti-counterfeiting strategy for registered trademark owners. In view of this fact, it should be understood that counterfeiting includes any unauthorised and unlawful use of a registered trademark by third parties, which may damage its reputation, reduce its value and distinctiveness (i.e. unlawful use of the mark, the form, or use of a servile imitation of the graphic representation and the communicational message connected with the mark or form).

The owner’s decision to act in defence of its trademarks and other IPR’s will be taken solely in the interest of protecting its business assets and market share.

The legal instruments provided under the Italian Trademark Law for the protection of a registered trademark are:

  • at the preliminary stage, the description of the alleged infringement, the seizure and the injunction, either before the commencement of the main action or at an interlocutory stage; and
  • at the final judgement in the main action, 1) an order for punitive damages for the breach of a preliminary injunction or other order in a previous judgement; 2) the destruction of the counterfeited marks and of all the goods which bear said marks, if they are not differentiable from the infringing mark or marks; 3) the publication of the judgement; and 4) the award of damages.

The position of Italian courts on civil damages is not unanimous, but the prevailing orientation is to calculate damages awards based on the counterfeiter’s net profit earned from the sale of the counterfeit goods; however, it has also be held that it is possible to assess damages based on the counterfeiter’s volume of sales or also on the net lost profits which the trademark owner could reasonably have earned if, how and where he could have sold his original goods but for the counterfeiter’s acts.

The counterfeiting of a registered trademark is also a criminal act under the Italian Penal Code, which provides a sanction in the seizure of the goods by customs authorities (in application of the EU Council Regulation No. 3295/94/EC, preceding the recent aforementioned Regulation No. 241/99/EC).

Therefore, in order to plan a meaningful and effective anti-counterfeiting action, it is necessary to correctly identify at the preliminary stage the objectives and to evaluate the strategies and measures to be adopted.

With the assistance of specialised investigation agencies, it will be possible to collect at the onset all the information and evidence required to prove the existence of an act of counterfeiting, the site(s) where such acts are being committed, the identity of the persons involved and the estimated volume of the counterfeiting operations.

On the basis of this evidence the trademark owner will be able to assess the opportunity of combining civil and criminal proceedings, by resorting to a order for description (civil proceeding) as a means of collecting all the available information and evidence required to substantiate a further complaint to a criminal judge, who will be at liberty to complete the investigation and if deemed appropriate, appoint the police authorities to collect further evidence as needed.

Although the deterrent effects of criminal proceedings on the counterfeiter are undoubtedly relevant, as this measure can be extremely effective in its initial stage, at a later stage it can become much less relevant or completely unpractical, considering the excessive duration of proceedings and the consequent risk of time limitations.

The choice of proceedings will necessarily be based upon the type of infringement the trademark owner wishes to defend against the identity of the authors of the infringement and the defined priorities of intervention, since it would not be effectively possible to defend against all the reported cases of infringement.

On these premises, and given that the trademark owner has also properly identified the infringers and assessed their economic ability to sustain significant damages awards, the trademark owner will be in a position to decide whether to commence a civil action for the recovery of the damages incurred as a result of the counterfeiting.

There is no doubt that a well designed trademark defence strategy, which every trademark owner should systematically foresee and plan, as well as a timely and focussed defensive action, are indispensable to deter future counterfeiters from adopting initiatives identical or similar to those already defended against.

The trademark owner will normally include in its trademark defence policy and planning all the ordinary activities in the way of a permanent monitoring and surveillance service – which can be provided with the assistance of the designated trademark attorneys - in a given territory, of all conflicting trademark registrations – of which the trademark owner may request the whole or partial cancellation – or of all conflicting trademarks for which an application is pending – in order to block their registration by means of oppositions in administrative proceedings. The benefit of these ordinary surveillance activities is to help prevent and suppress possible future acts of unlawful imitation and abuse as premises to the defence against the more complex phenomenon of counterfeiting.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions