INFRINGEMENT AND COMMERCIAL PIRACY
Lawsuits in general
The dispositions relating to lawsuits (Industrial Property Code – IPC; Civil Code – CC; Penal Code – PC; Code of Civil Procedure – CCP) are applied to all industrial property rights.
According to the definition given in art. 1 IPC, the expression industrial property includes trademarks and other distinctive signs, geographical indications, denominations of origin, designs and models, inventions, utility models, topographies of semi-conductor products, confidential company information and new vegetable varieties.
In general terms, any unauthorized use of the industrial property right constitutes an infringement; the relative civil lawsuit is normally referred to as a lawsuit for infringement, irrespective of what the proposed questions might be: declaratory, inhibitory, descriptive, seizure, compensation, or the publication of the ruling.
As specifically concerns the exclusive right to trade, a limitation is the principle of selling-on: according to this principle, the proprietor’s right expires with the first lawful act of putting a protected product on sale, and this does not allow the proprietor of the industrial property right to control subsequent steps in its distribution.
The sale of the protected product is lawful when this is carried out either by the proprietor of the right or by a third party with the authorization of the proprietor. If, however, the first commercial sale is unlawful, the selling-on principle is not in operation and consequently any subsequent distribution of the product will also be unlawful.
Authorization, jurisdiction and competence
Those authorized to bring such lawsuits are the proprietor of the industrial property right, or the relative application, the licensee and the usufructuary.
All those who could be charged with violating the so-called exclusive right, or who contribute to committing the offence, or who have an objective responsibility (for example, an entrepreneur responsible for the activity of his or her employees, according to Art. 2049 CC) are considered liable to prosecution.
Jurisdiction regarding industrial and intellectual property is disciplined by art. 120 IPC. Clause 1 states that: “sections specialized in industrial and intellectual property are instituted at the ordinary courts and appeal courts of Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice”.
Clause 2 states that “the sections specialized in industrial and intellectual property shall consist of a number of judges, no less than six, chosen from among magistrates with specific competences. The sections shall decide collegiately, pursuant to article 50 bis, clause 1, n. 3 of the Code of Civil Procedure, except for any different dispositions of special laws. The panel of judges consists of three magistrates. The preliminary activities are carried out by a magistrate who is a member of the panel”. The judges of the specialized section may also be assigned, respectively by the Chairman of the Court or of the Court of Appeal, to deal with diverse cases, provided that this does not entail any delay in dealing with and deciding on the cases regarding industrial and intellectual property.
Clause 3 states that “the specialized sections are competent in disputes concerning: national, international and Community trademarks, patents of invention and for new vegetable varieties, utility models, designs and models and copyright, and also cases of unfair competition interfering with the protection of the industrial and intellectual property right”.
Clause 4 defines the territorial jurisdiction of the sections.
“The disputes pursuant to clause 3 which, according to the normal criteria for the allocation of territorial jurisdiction and in conformity with the special regulations that discipline them, should be dealt with by the judicial offices as listed below, are assigned to the specialized sections of first and second degree instituted according to the following criterion:
- for territories in the districts of the Court of Appeal of Bari, Lecce, Taranto: (branch section), and Potenza: the specialized sections of Bari are competent;
- for territories in the districts of the Court of Appeal of Bologna and Ancona: the specialized sections of Bologna are competent;
- for territories in the districts of the Court of Appeal of Catania, Messina, Reggio Calabria and Catanzaro: the specialized sections of Catania are competent;
- for territories in the districts of the Court of Appeal Florence and Perugia: the specialized sections of Florence are competent;
- for territories in the districts of the Court of Appeal of Genoa: the specialized sections of Genoa are competent;
- for territories in the districts of the Court of Appeal of Milan and Brescia: the specialized sections of Milan are competent;
- for territories in the districts of the Court of Appeal of Naples, Salerno and Campobasso: the specialized sections of Naples are competent;
- for territories in the districts of the Court of Appeal of Palermo and Caltanissetta: the specialized sections of Palermo are competent;
- for territories in the districts of the Court of Appeal of Rome, L’Aquila, Cagliari and Sassari (branch section): the specialized sections of Rome are competent;
- for territories in the districts of the Court of Appeal of Turin: the specialized sections of Turin are competent;
- for territories in the districts of the Court of Appeal of Trieste: the specialized sections of Trieste are competent;
- for territories in the districts of the Court of Appeal of Venice, Trento and Bolzano (branch section): the specialized sections of Venice are competent.
Burden of proof - judicial definition
Art. 2697 of the Civil Code imposes, on whoever wishes to assert their judicial rights (plaintiff), the burden of proof of the facts which constitute the basis of the case. Therefore it is the proprietor of the industrial right who must provide the judge with proof of the infringement committed by the other party (defendant).
Art. 121 IPC therefore exempts the plaintiff from the burden of proving the validity of the right even though, as will be seen later, the law tends to deny that said presumption of validity can be a basis for a decision to grant precautionary measures. Furthermore, the same Art. 121 IPC allows an attenuation of the burden of proof by the party that has provided serious evidence of its own application and has indicated documents, elements or information held by the other party which confirm such evidence.
The plaintiff can provide proof of infringement in two ways:
- by purchasing a copy of the infringed article, or by purchasing illustrative material clearly featuring the infringed article (advertising material, special offers, etc.);
- by requesting a so-called judicial description or seizure, as a preventive measure or for use in related future litigation by appealing to the court of jurisdiction.
With specific reference to trademarks, the regulations state that infringement occurs not only when there is a “risk of confusion”, but also when there is a “risk of association” of the two trademarks.
The first case refers to the hypothesis where putting another person’s trademark on a third party’s product makes the public believe that the products come from the same company; the second case refers to the hypothesis where the public is induced to believe that the products come from two separate companies between which there is a licensing agreement, or in any case some authorization to use the trademark.
The risk of confusion or association pre-supposes that the signs are identical or confusable, and that the products are identical or similar.
With regards to the confusability of the signs, jurisprudence holds that in order to establish whether there is confusability, the overall impression that a comparison of the two signs can cause must be taken into account. The comparative examination of two trademarks must not be made analytically, that is, through a detailed examination and a separate assessment of each individual element, but in a unified and synthetic manner, by means of an overall appreciation which takes into account the salient elements.
In assessing confusability, the attention and knowledge of the average consumer for that particular type of product must also be taken into consideration. Therefore, in the case of extensively used products, relatively economical and intended for general customers, where it is assumed that the purchaser is less attentive at the moment of purchase, it is possible to assert confusability even when there is a relative distance between the two signs; in the case of expensive products, intended for a more careful and competent clientele, it may be that there is no confusability, even if there is a considerable proximity of the signs, since it will be deemed that the attention of the buyer is such as to prevent him from really being confused.
Another rule is that the comparison must not be made between the two signs when considered both present, but between one sign, that of the alleged infringer, and the memory of the other sign, since this is the situation that normally occurs at the moment of purchase. Finally, the trademarks must be compared in their graphical, phonetic and ideological aspect, so that, for example, confusability cannot be excluded if the two words compared graphically are different, but are phonetically close, or vice versa.
If there is to be infringement of the trademark, there must also be, as well as the confusability of the signs, an identity or similarity of the products marked by the signs. This is the principle of the so-called specialty or relativity of the trademark protection, as set forth in art. 2569 CC, according to which the proprietor of the trademark “has the right to avail himself of it exclusively for the things for which it was registered”.
It is different for the famous trademark, or trademark “which enjoys renown”. The exclusive right on a famous trademark is greater than the right granted to “normal” trademarks. It is a protection that is not limited by the criterion of similarity, and may be applied to all commodities.
This is because the famous trademark is not only protected against use by third parties for similar products, but also against use for dissimilar products, if the third party uses it “without good cause” and if such use allows the third party to unduly derive “benefit … from the good name of the trademark”, or “causes prejudice” to the trademark (art. 120 IPC).
In the event of judicial description, the Judge, without hearing the arguments of the defendant (that is, inaudita altera parte) will issue the alleged infringer a decree which charges a Judicial Officer to describe the alleged counterfeit objects on the manufacturer's premises, or company indicated by the plaintiff. The content of the decree defines the operating scope of the Judicial Officer. The Judicial Officer may be assisted, where necessary, by one or more qualified persons, while the parties may ask to be authorized to be present, even through representatives, or be assisted by people in a position of trust (art. 130 CPI).
The same procedure applies in the case of seizure.
Whenever the description concerns a method or operating system, this can constitute a serious infringement of the alleged infringer's rights especially when said method or system contains aspects of a technically or technologically secret nature. In this case the Judicial Officer must take into account whether or not this is provided for in the decree, taking the necessary precautions in the execution of his actions. Once the description has been formulated, it may be filed with the Clerk of the Court and constitutes evidence in the subsequent litigation.
Judicial protection is rarely swift, as the normal procedure requires an excessive amount of time. Therefore there is the danger that, during these delays, conditions change so much as to make the recognition of the plaintiff's right, which is the precise aim of the trial, extremely difficult or impossible, or even useless; or damage is caused which can only be compensated in monetary terms. To avoid such problems, legislation allows the interested party to request particular precautionary remedies, both prior to and during the trial proceeding. Precautionary measures, which tend to ensure preventive defense for the plaintiff's rights, guarantee the necessary conditions so that protection is then achieved in the trial proceedings. Precautionary measures are characterized by their provisional nature, since they are replaced by the definitive ruling, by their summary nature (fumus boni iuris), by the well-founded fear that, while waiting for the final protection, the conditions for achieving such protection will not be obtained (periculum in mora), and also by the fact that they are instrumental to the procedure.
The judge issuing the precautionary measure must establish the conditions under which the measure is to be actuated. Such conditions constitute a structural element of the precautionary measure, which must contain a specific indication of the steps through which the provisionally guaranteed effects shall affect the relationship in question. Should the judge not define such steps in the precautionary measure on petition of the interested party, the same judge must set out the steps by which the measure shall in practice be executed.
Seizure, description and injunctions
Arts. 128 and 129 IPC provide two special precautionary measures (description and seizure) which target the articles produced in violation of exclusive industrial rights as well as the means used to produce them, or only the means of production. As mentioned above, the function of the description is to pre-establish proof of the infringement.
The articles assimilate description to the so-called procedures of preventive investigation. Very often description is the only method open to the plaintiff to obtain proof, above all in cases where the infringement cannot be deduced by examining the final product. On this point, it must be remembered that the regulations concerning precautionary measures are laid down in laws 353/90 and 477/92, which introduced a model of precautionary measure common to all precautionary measures.
According to art. 669 quaterdecies CCP., the new regulations apply to seizure and injunctions, but not to descriptions. In fact, this new set of regulations states that the new provisions are applicable to precautionary measures provided for by special laws, since they are compatible, but they are not applicable to procedures of preventive investigation.
The Industrial Property Code lays down special regulations regarding descriptions, to which the norms laid down in the Code of Civil Procedure with reference to procedures of preventive investigation (articles 669 et seq. CCP.) are applicable.
The Court is the competent authority which can issue order the description. If the request is forwarded before the beginning of the relevant trial, it must be submitted to the judge competent to judge the case. If the Italian judge does not have authority to know the merits of the trial, the request is made to the judge who is competent, in both subject matter and value, of the place where the description is to be carried out.
The competent judge orders the description after considering "summary information and, where he thinks it necessary, after hearing from the person against whom the charge has been brought". The execution of the measure requires the Judicial Officer, with the assistance of one or more technical consultants if necessary, and in the presence of the interested parties, if authorized, to have access to the alleged infringer's premises or to the premises where it is presumed the infringed material is held. Since the party which must suffer the description can incur damages because production may be stopped or business secrets may be revealed, when defining the provisions for the assumption of proof, the judge must take these drawback into consideration and provide adequate guarantees in the relevant party's favor.
The description will become ineffective if, thirty days after the ruling is issued, it has not been executed and normal trial proceedings been initiated.
The parties against whom the order was issued (art. 130 IPC) must be notified, within fifteen days of the conclusion of the description operations, with a copy of the petition and the judge's ruling, otherwise the order is unenforceable.
As well as description, art. 130 IPC also provides for seizure, which has the primary function of preventing the circulation of products made through infringement. To this function can be added that of ensuring proof, in the subsequent trial, that the right has been infringed. By means of seizure the alleged infringer is deprived of the items in question and makes them unavailable to him.
The authority to pronounce the order of seizure before the trial is attributed to the "judge competent to judge the merit of the case" (art. 669 ter CCP.), in any place where the infringement may have been carried out. In the case of seizure in the course of the trial, it is the judge dealing with the pending trial who will be competent (art. 669 quater CCP.). The judge prepares the order, after hearing the parties and eliminating every formality not essential to cross-examination. If the request is accepted, the proceedings must be linked to the trial which, if it has not already begun, must be brought by the party that has obtained the ruling, in the non-extendable time limit fixed by the designated judge which cannot be greater than thirty days. Should the judge fail to set the above-mentioned time limit, the legal term of thirty days (art. 689 octies CCP.) will be applied. If the trial is not initiated or is dropped, then the precautionary measure ceases to be enforceable (art. 669 novies CCP.).
In urgent cases, that is, when the summons of the counterpart might prejudice the execution of the ruling, the judge can, with a motivated order, proceed to seizure before any hearing with the parties (a so-called seizure inaudita altera parte). In such a case the application with which the measure is requested, and the Judge's decree, must be notified by the plaintiff within a non-extendable period of not more than eight days. Such non-extendable period will be tripled if the notification has to be made abroad (art. 669 sexies CCP.).
In this case, the first hearing involving the parties must be set in a term of not more than fifteen days after the order has been issued, if the parties are resident in Italy; if the parties reside abroad, the term is tripled.
In the course of this hearing, the judge, on request from the parties, may confirm, modify or revoke the rulings issued with the order, if he considers the circumstances determining the precautionary measure to have changed (art. 669 decies CCP.).
The granting of seizure may depend on the payment of a security, in the absence of which seizure is to be considered unenforceable, even in the absence of legal provisions. In opposition to the order with which the precautionary measure was granted, the interested party may appeal to the competent judge. Appeals generally do not suspend execution of the ruling, but, should the judge consider the ruling to cause serious damage, he may issue a non-exceptional order to suspend the precautionary measure or make it subject to the payment of an adequate security (art. 669 terdecies CCP.).
Seizure and description may concern the goods of the alleged infringer as well as the goods of third parties, provided that they are not for personal use (in the case of description), and provided that the owner carries out commercial or profit-making activity with them (in the case of seizure)
The concept of personal use refers to the use of what has been infringed which, even though its manufacture was unauthorized, in itself provides the individual with a use deriving from possession of the article as such, although the individual obtains no direct economic advantage from it.
The commercial end justifying the seizure ruling is obtained when a commercial, industrial or agricultural use is made of the infringed object.
Art. 131 IPC provides that, in the course of the trial for infringement, the interested party can request an injunction on the production or use of the products infringed, on the payment of a security.
The judge's ruling is published along with the official order and can be confirmed or revoked by the ruling that decides the merits and defines the lawsuit.
According to a recent trend, it is thought that, with the insertion of art. 669 bis et seq. into the Code of Civil Procedure, the norms of art. 131 IPC are applicable since they are still in force regarding solely the provision of the injunction, the identification of its presuppositions and the content of the ruling; this implies that the norms on competence and proceeding are repealed and the norms pursuant to art. 669 bis et seq. CCP. are applied.
In normal practice, however, an injunction is normally requested and granted after seizure, during the validation process. In this regard, however, it must be excluded that the plaintiff's rights ex officio derive from the fact that the industrial property right is presumed to be valid: the judge must always carry out a summary investigation into the validity of said patent.
Provisional protection for patent applications
Art. 132 IPC establishes a precautionary protection of any application for a patent.
The norm states that: "The measures pursuant to art. 128, 129 and 131 may be requested from the moment in which the application is accessible to the public, or with regard to those people notified of the application."
The patent application is normally accessible to the public eighteen months after the application has been filed. In order to shorten this period, the proprietor of the application may:
- request the Patent Office to make the patent application immediately available to the public (in which case the period of eighteen months is reduced to a maximum of ninety days after filing, if the request is made at the time of application or in the following ninety days). In this case the protection is erga omnes, that is, it can be used against anyone.
- notify the patent application, either through the Judicial Officer or by registered letter (even though several parties consider this to be insufficient), to the individual subjects (presumably competitors) suspected of carrying out activities of infringement. In this case judicial protection can be used only against these notified parties.
Art. 132 IPC allows the holder of the patent application to initiate a case for infringement. If this were not the case, it would not be possible to explain the explicit provision for the use of an injunction during the course of the trial as provided for in art. 131 CPI. Moreover, obtaining seizure and description rulings means that an action must be started shortly after the measure is executed. This can cause problems since the grant of the patent, even though it is not to be considered a procedural condition of the infringement trial, is commonly considered by law as a constituent fact of an exclusive right. It is thought, therefore, that the action should be suspended in accordance with art. 295 CCP., if the patenting procedure fails to reach a conclusion before the conclusion of the action itself.
Definitive rulings constitute, in substance, the content of the ruling in which the infringement is ascertained. There are three types of sanction applicable to the infringer:
- an injunction;
- compensation for damages;
- publication of the ruling.
These can have a preventive or compensatory character or they can aim to prevent the unauthorized activity from continuing, or they can compensate the patentee for damages incurred.
Injunction consists of the order, issued by the judge to the infringer, to cease and/or not resume the unauthorized activity. This form of punishment is not specifically mentioned in the law; in fact art. 83 L.I. lists only injunction during the trial, but nevertheless jurisprudence and legal theory consider it to be present in our system.
The injunction has a preventive character, as it is intended to prevent the unauthorized activity from being continued or resumed. For this reason, in order to pronounce the injunction itself, the industrial property right must still be valid at the moment of pronunciation; on the contrary, the proof of blame and damage is totally irrelevant, and might even be lacking. Instead, the only presupposition for an injunction is the danger of continuation or resumption of the unauthorized activity.
The violation of an injunction is punishable under art. 388 PC for the non-execution of the judge's ruling.
The law also regulates the destiny of "items" made by means of, or with, the unauthorized activity (production methods and products). To this end it provides measures which have both a preventive and compensatory function. One or another of the measures can be enforced, and are:
- removal or destruction (art. 124 IPC)
- assignment of the items to the property of the proprietor of the right (art. 124 IPC)
- seizure at the infringer's expense until the right has expired (art. 124 IPC)
- a financial award to the proprietor of the right which, in the absence of agreement between the two parties, shall be fixed by the judge (art. 124 IPC).
These measures can refer not only to the goods produced in violation of the right, but also to those means of production specifically used for such unauthorized activity. On the other hand, they cannot affect non-specific production means which, in addition to being used for unauthorized production, are also used for authorized production. It must be remembered that, again in accordance with art. 124 IPC, removal and destruction cannot be ordered when the items belong to whomsoever, in good faith, uses them for personal and domestic use.
Finally, it must be noted that art. 133 envisages the possibility for the Judicial Authority to order – as a preventive measure – not only an injunction against the use of the Company’s domain name illegally registered, but also its provisional transfer, subordinating said transfer, if the Court so deems, to the payment of a suitable deposit by the beneficiary of the measure.
Compensation for damages
Compensation for damages (art. 125 IPC) due to the damaged party is paid according to the dispositions of articles 1223, 1226 and 1227 of the Civil Code. The loss of profit is assessed by the Judge, also taking into account the profits made in infringement of the right, and the remuneration that the author of the infringement would have had to pay if he had obtained a license from the proprietor of the right.
The ruling providing for the payment of damages may liquidate the payment thereof, upon a request from one of the parties, as an overall sum established according to the documents of the case and the presumptions deriving therefrom.
Art. 125 IPC, referring in the first part to articles 1223, 1226 and 1227 CC “reflects the opinion, self-evident in doctrine and consolidated in jurisprudence, according to which the sanction of payment of damages within the field of protection of industrial property rights follows the same rules as extra-contractual responsibility. In the second part of the article, it filled a considerable gap pointed out by doctrine and jurisprudence, explicitly stating that the proprietor of the industrial property right can also request that the profits made by the infringer be attributed to him. The repayment of the profits as thus ordered can be traced back to the field of civil law with regard to enrichment without cause, and not that of norms on payment of damages as a sanction of extra-contractual responsibility”.
Patents: nullity and cancellation actions
In the Italian patent system in force, there is no automatic control on the validity of a patent, which is left to the ordinary judge.
Art. 76 IPC strictly states that: "the patent is void:
- if the invention is not patentable in accordance with articles 45, 46, 48, 49 and 50;
- if the invention is not described sufficiently clearly and fully as to permit a person of skill to execute it;
- if the subject matter of the patent goes beyond the content of the initial application;
- if the patentee did not have the right to obtain it and if the inventor did not take advantage of the powers given to him in accordance with art. 118.
If the causes of nullity pursuant to the above only partially affect the patent, then the relative judgment of partial nullity entails a corresponding limitation of the patent itself."
Anyone who is impeded in his business activities due to the existence of a patent which is null and void is authorized to assert the nullity of the patent. Past jurisprudence also considers the patentee's competitors, even potential competitors, as well as the assignee and the licensee of the patent itself, whether sole or not, as authorized, whether the licensing contract has been drawn up or not. On the other hand, those who are experts in the subject matter to which the patent refers, as well as consumers, are excluded from challenging the validity of the patent. Exceptionally, or as a counterclaim, the issue of nullity may be raised by any party who is summoned (for example accused of infringement) by the patentee.
An action for nullity is initiated with a request presented to the competent judge in accordance with art 120 IPC. The question of nullity cannot be taken up by the judge ex officio. Even in the absence of legal provisions it is considered the request must be proposed with respect to all those who have rights on the patent. A copy of the introductory act must be sent to the Italian Patent and Trademark Office by the plaintiff.
The burden of proving nullity always falls on whoever challenges the patent. Despite the absence of a substantial preventive examination of the patentability of the invention, the article in question provides a presumption of validity for the patent. This presumption has no raison d'être whatsoever, given that there is no examination, however it carries significant weight, since it obliges the judge of the nullity case to conclude that the patent is valid every time that it is adjudged that the invalidity of the same has not been proved.
The nullity decree, once it has become final, is enforceable regarding anyone (erga omnes). This is subject to publication and involves striking off the patent.
It is important, however, to point out that, when the nullity question is raised as a mere exception, the patent is not struck off. In this case, if he recognizes nullity (inter partes) of the patent (accepting therefore the defendant's objection), the judge limits himself to denying that there has been any infringement, but he cannot declare the nullity of the patent with the effects that we have just seen. The declaration of nullity is obtained, on the contrary, by proposing a specific request as per art. 36 CCP. (counterclaim). However, there is not complete agreement on this point in doctrine.
The ruling declaring nullity has a retrospective effect, having effect from the date when the patent was granted. However art. 77 states that "acts of execution of rulings of infringement passed and which are already completed shall not be prejudiced".
This means that the publication order of the ruling at the loser's expense, injunction and seizure will no longer be enforceable from the date when the ruling of nullity becomes final: this also applies to the decisions on the amount of compensation which still have not been executed and future sentences.
Some doctrine maintains that whoever has been found guilty of infringement and has incurred penalties in accordance with art. 77, can initiate an action for compensation for damages against the "patentee", where he can solidly prove intent or guilt and also an action for personal gain without cause ex art. 2041 CC.
For art. 77, existing contracts concerning the invention remain valid; that is, transfer contracts, if the fee has already been paid, and licensing contracts, which however are no longer valid for the future. However the judge "taking the circumstances into account, may grant a just repayment of sums already paid in the execution of the contract".
In the absence of legal provisions, it must be borne in mind that the decision rejecting the nullity request is enforceable only between the parties in the proceeding, and has irrevocable enforceability, still inter partes, solely for that which regards the lack of grounds for nullity which were brought up during the case.
When the case of nullity only affects the patent in part, there will be a declaration of partial nullity. The ruling of partial nullity is also enforceable on anyone, pursuant to art. 123, and necessitates an entry in the patent register.
Conversion of a void patent
It can happen that a patent can be granted for invention for a finding which deserves a different type of patent protection. In such a case, as long as there is an explicit judicial request, even counterclaims by the patentee, the ruling which certifies the nullity of the patent for invention, and which at the same time certifies that the requirements of validity of another patent exist, can order the conversion of the void patent into a different type of patent whose requirements it meets (art. 76 IPC). Conversion presupposes that the author of the patent application was unaware of the nullity and, therefore, presupposes an excusable error.
Conversion, which has a retrospective effect and enforceability erga omnes, can be decided solely within the limits of what was claimed in the original application.
Protection of European patents
Art. 64.3 of the Munich Convention on European patents states that: "Any infringement of a European patent shall be dealt with by national law".
On this point it should be noted that the protection offered by the European patent is valid in Italy only if the patentee has provided the Italian Patent and Trademark Office (UIBM) with an Italian translation of the text within the time period provided for by the law, after which nationalization is no longer possible. While the patent is being obtained, the patentee can use his European patent application against third parties after filing the claims with the UIBM.
According to art. 64 of the Convention, even products obtained using the method of a patent describing a method are covered by the protection afforded by the patent. The European patent, when nationalized, falls within the European patent granting system which foresees a subsequent check limited to cancellation procedure at a national level, even though opposition and appeal proceedings were carried out during the European procedure. Therefore, courts in signatory states to the European Patent Convention may only declare a European patent void or partially void in their national territory, strictly limited to the grounds listed in art. 138 E.PC, in other words:
- if the subject matter of the European patent is not patentable (art. 52-57 E.PC);
- if the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- if the subject matter of the European patent extends beyond the content of the application as filed;
- if the protection conferred by the European patent has been extended;
- in the case of illegal appropriation.
If the patent has not been definitively granted (for example due to an opposition in progress), it is only possible to request a negative declaration of patentability.
For the cancellation of European patents, in Italy, art. 59 L.I. as per art. 10 D.P.R. of 08.01.1979 no. 32 is applied. This article has included all the grounds provided for in art. 138 E.PC with the result that Italian courts de facto apply European law.
In cancellation proceedings European patents in Italy are examined on the same principle as Italian patents; this means, among other things, that the competent judge independently determines the subject matter of the European patent, on the validity of which he has to decide.
To evaluate the inventive step the relevant considerations for granting procedures, both national and European, opposition and appeal, are not binding for Italian courts, even when in the cancellation proceeding such considerations are presented as proof. In fact it is logical that an objective comparison has to be made with the motivations which led to the granting of the patent, also because European patents cannot be treated differently from Italian patents.
Unpatented invention and pre-use
The exclusive right of use of the invention is obtained only when the patent is granted. In the absence of the patent, the invention can in any case be protected by various rules.
Firstly, the order protecting so-called pre-use states that "anyone who, in the course of the twelve months preceding the filing of the patent application or the priority date, has used the invention in their company may continue to do so within the bounds of pre-use" (art. 68). From the norm one can assume there is no real general protection for an unpatented invention, that is, there is no sufficient protection against whoever may have discovered the secret by chance or purchased it in good faith from someone who may have acquired it illegally. The operativeness of art. 68 presupposes that the other person's patent is valid in terms of novelty: pre-use, therefore, does not necessarily mean that the finding has been disclosed.
To be able to enjoy the protection offered by the right of pre-use, a protracted industrial use for a certain period of time is necessary ("… in the course of the twelve months preceding the patent application filing date or priority date …").
The pre-user, through pre-use, does not acquire an exclusive right competing with that of the patent owner, but is simply made immune to future claims from the latter, and only within the bounds of actual pre-use. The pre-user may not assign this right of pre-use unless he sells it with the company. As a result the pre-user is not authorized to start an action of infringement against third parties who use the invention.
Summing up, the protection accorded by art. 68 is conditioned by an actual use of the invention in one's own company; however, a simple knowledge of the finding, the existence of serious preparations for actual use of the same, or experimental use carried out in a private environment and to non-commercial ends are not sufficient. The burden of proof of pre-use lies with the pre-user. The possibility of continuing to use the invention within the bounds of pre-use is contained in the protection pursuant to art. 68. The extension of this protection must be determined with reference to the quantitative and qualitative limits of the previous use.
TRADEMARK: ACTIONS OF NULLITY AND CANCELLATION
Art. 25 IPC states that the trademark is null and void:
- if one of the prerequisites as laid down in art. 7 is lacking, or if one of the impediments provided by art.12 subsists;
- if it contrasts with the disposition of articles 9, 10, 13, 14, clause 1, and 19, clause 2;
- if it contrasts with the disposition of article 8;
- in the case of article 118, clause 3, letter b).
As well as nullity, the law also disciplines cases of cancellation. The most important case is cancellation due to non-use, provided by art. 26 IPC where the trademark is not used within five years of being registered, or if use is suspended for an uninterrupted period of five years. To avoid cancellation the use of the trademark must therefore be effective, not merely symbolic, sporadic or for irrelevant quantities of product. The trademark must also be used by the proprietor of the trademark, or with his consent. The trademark is also cancelled in the event of a so-called “vulgarization”, that is, if the trademark “has become, due to the activity or inactivity of the proprietor, a generic denomination of the product or service on the market”. In this case, it is not difficult to establish when we can say that a trademark has been vulgarized due to the inactivity of the proprietor: the transformation of the sign into a generic denomination of the product is facilitated by the fact that third parties start to use the trademark to indicate their own products, analogous to those of the proprietor. In this case, if the proprietor does not react, including by legal means, it may be considered that vulgarization also depends on his inactivity. It is more difficult to establish when the generalization of the trademark is to be imputed to the proprietor’s activity. Generally speaking, this will occur when the proprietor himself uses his own trademark as a generic denomination of the product.
The trademark may also be cancelled if it finds itself in a condition where it might be able to deceive the public and if it has come into contrast with the law, public order and public morality. Anyone who has an interest in doing so, and any competitor who finds in the trademark a possible obstacle to his activity, is allowed to act to obtain a declaration of nullity or cancellation of the trademark.
An action of nullity or cancellation can be started both as a principle matter and also as a counterclaim by the defendant in a case of infringement. The ruling asserting nullity or cancellation has an erga omnes effect.
A non-registered trademark can be protected when it has all the requirements for registered trademarks: novelty, originality and legality. In jurisprudence it has been affirmed that the interruption of pre-use pending registration of the same sign by a competitor invalidates the pre-user’s right to continue using the sign, whether it is a case of pre-use with general renown or pre-use with local renown. For the purposes of protecting the non-registered trademark it is not sufficient merely to adopt a distinctive sign, it is indispensable to make actual use thereof.
The use of the trademark must be intentional and continuous, not precarious or experimental, occasional or random. The existence of a right on a non-registered trademark pre-supposes an actively functioning enterprise. It is controversial as to whether the use in advertising of the sign is relevant for the purposes of acquiring protection. Doctrine tends to say it does, but prevailing jurisprudence does not agree, and supports the principle according to which renown, which justifies the protection of the de facto trademark, is the renown deriving from the actual knowledge of the product distinguished, corresponding to the propagation of the product.
In evaluating the level of renown achieved by the sign, its ability to expand must also be taken into account, and also its natural area of expansion. For example, a localized renown in several distant zones can be deemed to indicate a process of expansion that is under way. The extension of use of the trademark must be evaluated with reference to the moment an application to register a subsequent and confusable trademark is filed, and not the moment when the relative patent is granted.
Proof of use of the trademark
It is obvious that the burden of proof that the trademark is used lies with the pre-user. Use must be ascertained with reference to the actual sale of the product, since the protection of the de facto trademark is justified in the renown acquired with the public by the product distinguished by that particular trademark.
Nature of the right to the non-registered trademark
Many authors assert that there is an absolute right to the non-registered trademark. Others deny this, and assert that this absolute right should be considered as unfair competition.
Jurisprudence has equated the notion of registered trademark with that of the non-registered trademark, however, jurisprudence has never hesitated to have recourse to general principles with regard to trademarks when problems arise concerning de facto trademarks. However it is prevalently asserted that the protection of the non-registered trademark must be referred to art. 2598, n. 1 CC, where it prohibits using distinctive signs that might be confused with those legitimately used by others.
Field of protection
According to constant jurisprudence, and some part of doctrine, anyone who has made local use of a trademark has the right to inhibit, within the same limits, the use of other parties’ subsequently registered trademarks that might be confused with theirs. The licensee of a non-registered trademark may also avail himself of the prior use made by licensor for the purposes of calculating priority. Finally, it is believed that also with regard to the non-registered trademark the pre-user can extend his use to similar products to those for which the trademark was initially used, and can prevent a subsequent registrar from using the sign for goods that have a relationship of affinity with those that were the object of pre-use.
Protection of industrial secrets
In the absence of a patent, the inventor can only count on the protection offered to him by secrecy (arts. 98 and 99). Secrecy, however, constitutes a protection of mere fact, the validity of which depends on each individual case and which is characterized by the fact that it cannot be predicted whether the secret will be kept.
The negative aspect of secrecy is that there is an almost total non-existence of protection against third parties who, without carrying out unfair practices, have managed to identify and reproduce the invention in all its characteristics. The protection offered by secrecy is relative, in the sense that it is limited solely to relationships with specific individuals who have a particular relationship with the inventor.
The object of this protection is all technical reserved, patentable or non-patentable knowledge. This is addressed principally to all persons to whom the invention has been communicated or licensed and who are contractually bound to keep the secret and not make use of it. Moreover, said protection is addressed to those people legally bound by an obligation of confidentiality imposed and sanctioned by art. 98, art. 2105 CC and art. 623 PC. In fact, art. 2105 CC states: "the employee must not … disclose information relating to the organization and production methods of the company or make use of these in such a way as to cause damage to the company."
Art. 623 PC provides for imprisonment of up to two years per individuals who reveal industrial secrets.
Subjects singled out by the norms include employees of the entrepreneur and freelance workers, as well as members of partnerships and administrators of business associations. Any violation of loyalty ex art. 2105 CC will bring into effect disciplinary measures and the obligation to pay compensation for damages, and may give the employer the right to terminate the contract (art. 2118-2119 CC). In relationships between competing entrepreneurs protection may be provided by art. 2598 paragraph 3 CC.
This will occur either in the event of actual industrial espionage or, according to a certain jurisprudence which incidentally is not uniformly accepted, in the event of a former employee who, even in the absence of confidentiality obligations imposed on him (ex art. 2125 CC), reveals to his new employer secrets forming part of the industrial assets of his former employer gathered in the course of his previous employment. Jurisprudence tends to consider that inducing the employee to violate his duty of loyalty is an act of unfair competition (inducement to breach of contract), making the employee an accomplice to the competing entrepreneur ex art. 2598 paragraph 3 CC.
Moreover, the unpatented invention used secretly does not enjoy any other protection against third parties. To conclude, both whoever conceived the invention on their own and whoever gained authorized knowledge of it, are free to execute and imitate it even in a servile fashion and, when the other conditions apply, continue such use even after the invention has been patented. In this case, protection against servile imitation is granted only if this imitation embodies a hypothesis of unfair competition. This happens only when, due to the servile imitation of the formal and external elements of the competing product, there might be confusion as to the origin of the competing companies' products.
Servile imitation of the unpatented and/or unpatentable inventions of others, if it does not cause confusion, is a distinct problem that is resolved in a negative sense both by legal practice and by legal theory, if it can be regulated by art. 2598 paragraph 3.