Italy
Answer ... The trademark owner may seek:
- preliminary injunctions (eg, seizure, description);
- reasonable compensation for the unauthorised use of the trademark and compensation for any additional damages caused by the infringement, provided that the infringement was committed with negligence or intent;
- withdrawal and/or destruction/assignment of the infringing products;
- withdrawal or rejection of the infringing trademark application;
- cancellation or revocation of the infringing trademark registration;
- a court judgment attesting to the infringement;
- publication of the court judgment;
- potential criminal charges (if applicable); and
- reimbursement of litigation costs.
Punitive damages are not allowed under Italian law.
Italy
Answer ... The remedies are the same as those set out in question 7.1 if the trademark has already been registered; otherwise, if still pending, an opposition can be filed with the Italian Patent and Trademark Office within the corresponding timeframe.
For the sake of completeness, in Italy, dilution includes blurring and tarnishment.
Italy
Answer ... Yes, and against unfair competition.
Italy
Answer ... In Italy, trademark infringement procedures may be brought by the trademark owner (ie, the original owner or an assignee). An exclusive licensee can proceed only with the authorisation of trademark owner or in case of failure to act on its part (unless the licence agreement provides otherwise). Non-exclusive licensees must bring the infringement action jointly with the trademark owner. Distributors may not bring infringement actions.
Trademark infringement actions can be filed before the specialised IP divisions of the civil courts and are the most common remedy exercised by trademark owners. Injunctions can be filed if urgency (periculum in mora) and a (prima facie) likelihood of success on the merits of the case (fumus boni iuris) are found, in order to prevent infringing practices and allow for seizure of the infringing goods.
A criminal claim can also be pursued; however, the trademark owner is considered not as a party to the case, but as the injured party, and hence has limited scope of action.
Infringement and invalidity actions can be brought simultaneously before the same court and within the same proceedings, with the exception of EU cancellation procedures, which are heard by the EU Intellectual Property Office.
Infringement proceedings usually take two to three years before the Italian courts.
Italy
Answer ... The available defences under Italian law are as follows:
- absence of likelihood of confusion;
- weakness of the counterparty’s sign;
- absence of reputation and/or of acquired distinctiveness through use enjoyed by the plaintiff, if claimed;
- existence of a de facto (unregistered) trademark;
- tolerance of the presence of the trademark in the market for at least five years;
- use of the designation or identifier in a descriptive way and not as a trademark;
- use of the trademark in a legitimate way to inform customers that products under this trademark are being sold;
- lapse of the right of the trademark owner to seek a cease and desist order or no urgent need for a court decision (but only in preliminary injunction proceedings);
- right of the defendant to use the mark;
- a court judgment being sought attesting to the non-existence of infringement; or
- counterclaims concerning the validity of the mark.
Italy
Answer ... Decisions of a first-instance court may be appealed before the specialised IP division of the competent court of appeal within 30 days of notification/service of the decision on the parties. Appeal decisions may be challenged through a cassation petition before the Supreme Court on points of law only.