Intellectual property

The Milan Court rules on a dispute concerning the protection of the "Love" bench

It is from the end of December that the Court of Milan (in complaint) recognized the tort of unfair competition for slavish imitation against the "Amore" bench produced by Slide S.r.l., created by Slide's founder, Giuseppe Colonna Romano, and commercialized by Slide for more than 10 years.

Slide is specialized in the creation and production of furniture elements, mainly for outdoor use, including special polyethylene objects, and in 2021 Slide had noticed the commercialization and promotion by a Venetian company, its competitor, of a bench highly similar to the "Amore" bench called "Welcome."

Slide then promptly sued the Court of Milan so that, in the face of the unlawful conduct of the Venetian company, it would inhibit the latter from producing and commercializing the imitative product.

The Court of Milan, in its complaint, upheld Slide's claims, recognizing first of all the market accreditation of the "Amore" bench product, as an iconic product that is widely known and appreciated by the public, as well as the unlawful takeover of the essential and individualizing features of the AMORE bench by a competing company.

In particular, the Court ruled that the "distinctive sign imitated is, here, given by the external form of the product and consists of a three-dimensional sign, of which the complainant has suitably demonstrated, according to the College, on the one hand, all the requirements necessary for the invoked protection, namely, distinctive capacity, renown and novelty, as well as, on the other hand, the confusability between the two products." In order to appreciate the existence of these requirements of distinctiveness, renown and novelty with respect to Panca Amore, the Court then confirmed that:

  • the Love Bench is "a bench composed by a word consisting of letters of the alphabet, and it is precisely the outward form that has the individualizing and diversifying efficacy of the complainant's product, compared to other benches on the market. Moreover, in all logical evidence, having regard to the function properly and commonly performed by a bench, it is, here, a matter of a merely arbitrary and whimsical form, and not of a functional form, indispensable or mandatory for the achievement of a certain technical result, nor even useful, even if not strictly necessary to a certain result (here, the seat);
  • Slide "has provided suitable documentary evidence that it has started commercializing "Amore" bench since 2015-unlike the "Welcome" bench, which was first presented on the market only at the end of October 2021-and also that, "thanks to the promotional investments put in place by the complainant, as well as to the extensive marketing, in Italy and abroad, of the Amore bench, it has become so accredited on the market as to be immediately recognizable by the public [. .] through press reviews, the number of pieces sold and the relative turnover achieved, exhibition uses, sponsored promotions, and displays in furniture salons."
  • in relation to the form, "there is no suitable evidence that, before Slide, or even at the same time, other companies in the sector have produced and offered for sale manufactured goods with the peculiar characteristics peculiar to the Amore bench."

In conclusion, in relation to the above-mentioned products, the Court found that both all the requirements for protection of the imitated form and the danger of confusion by slavish imitation were met, on the basis of the general impression derived from their overall appearance, with respect to which the differential elements consist of mere individual details, incapable of impressing themselves on the consumer's mind in such a way as to enable him to distinguish the origin from entrepreneur other than Slide.

This is an important measure that, in addition to recognize the value of the design conceived and produced by Giò Colonna Romano for Slide, will allow it to protect a unique product such as Panca Amore from any further copies and imitations.

The Supreme Court takes stock of the concept of parody in our legal system

Laura Bussoli - Senior Associate

Eleonora Carletti - Junior Associate

By Dec. 30, 2022, in ruling No. 38165, the Supreme Court ruled, among other things, on the legitimacy of an advertisement starring the fictional character Zorro. In this context, the Supreme Court addressed some issues particularly relevant to copyright, such as the protection of fictional characters regardless of the work in which they appear as well as the protection, under certain conditions and within certain limits, of the parody work in our legal system. The issue on which the Supreme Court ruled starts from the broadcasting of an advertising campaign for a well-known mineral water ("Brio Blu") featuring as its protagonist the famous character of Zorro, created by the writer Johnston McCulley in 1919 and on which the U.S. company Zorro Productions Inc. claims copyrights, in addition to other Intellectual Property rights that has been claimed.

In the “infringing” advertising spot, Zorro was used, in a comic and satirical key, in order to advertise a product (water). As a result of this use of the Zorro character, which allegedly took place without authorization, the American company sued the mineral water company, claiming infringement of its copyright on the Zorro character, as well as a long series of breaches related specifically to the protection of its intellectual property rights.

After the first instance, in which the Court of Rome condemned the defendant company to indemnify Zorro production Inc. for the infringement of its copyright, and the second instance, while the Court of Appeal, had denied such damages, on the basis that - according to the judges – the Zorro character is now in the public domain (and, therefore, there would be no valid copyright to protect), the Supreme Court fixed some very important points on copyright, and in particular on the parodistic use of a work (or character) on which - evidently - copyrights are still valid and existing.

First of all, therefore, the Supreme Court excludes the fall into the public domain of copyrights on the work and on the character of Zorro, deeming applicable the Article 25 of our copyright law (L. 633/1941 “LDA”), which provides the copyright protection until the seventieth year after the author’s death.

Secondly, and this is the main issue of this decision, the Court pointed out the content and limits of parody in our legal system. Since our legal system does not expressly provide among the so-called “exceptions” to the copyright protection, the hypothesis of “parody”, according to the Supreme Court the latter finds, instead, full recognition in our legal system pursuant to art. 70 LDA, “as an expression of thought”: according to the Supreme Court in fact, “the lawfulness of the parody of the work or character created by other people finds its basis in the free use referred to in the above mentioned Art. 70, paragraph 1, L. No. 633/1942”. In fact, this article allows the summary, citation or reproduction of extracts or parts of works and their communication to the public, “made for critical use or discussion, within the limits justified by such purposes and as long as they do not constitute competition to the economic use of the work.”

According to the Supreme Court in the very first place, for the purpose of the recognition of the lawfulness of parody, it is not required that the parody acts as a “creative elaboration” or original of the original work in accordance with Article 4 LDA, since the association to the main work is a congenital and fundamental element of the parody itself. Moreover, if this were the case, the Supreme Court points out, it would be necessary from time to time to obtain the authorization of the author of the original work, who would hardly consent to the “comic misrepresentation of it.”

Moreover, and this is the second very important point of this decision, the reference contained in Article 70 LDA “provided that they do not constitute competition to the economic use of the work” by no means should be interpreted, as the Rome Court of Appeals erroneously did, in the sense of "commercial or profit-making purpose."

Therefore, uses allowed by Article 70 LDA - including parody – now seem to be not excluded if there is a profit or commercial purpose the author of the parody may pursue, even incidentally: they are excluded only in the case of a competitive relationship between the original work and the parody itself.

In conclusion, according to the Supreme Court, the lawfulness of parody reposes, in addition to the free expression of thought, both in the functionality of it with respect to its parodistic and satirical purpose (i.e., it must not have purposes and contents that are merely denigrating and depreciating of the main work or of one of its characters) and in the absence of a competition relationship with the protected work that would instead make the parody descend from an unlawful exploitation of the work itself.

This important interpretation of parody in our legal system fits perfectly into the interpretative groove of the Court of Justice, which argued its conclusion by stating that it is necessary to make a balance between opposing interests, namely, from one hand the exclusive rights of reproduction and communication to the public of the work, and on the other hand, the user’s freedom of expression of a protected work, which benefits of the parody exception (EU Court of Justice, C-201/13, cited above, 34).

Call for Trademarks 2022

DEADLINE : Desk opening from 9:30 a.m. Oct. 25, 2022 and until available resources are exhausted

AVAILABLE FUNDS: 2 Million Euros.

A share equal to 5 percent of the available financial resources is earmarked for the granting of facilities to proponents who, at the time of submitting the application for access to facilities, are in possession of the legality rating.

BENEFICIARIES and ELIGIBILITY REQUIREMENTS.

  • MPMIs - Micro, Small and Medium Enterprises
  • With registered and operational headquarters in Italy
  • That are properly incorporated, registered in the Companies Register and active
  • that are not in a state of liquidation or dissolution and subject to bankruptcy proceedings
  • That are owners of the trademark objects of the application

Facilities aimed at facilitating the registration of Community trademarks with the EUIPO (European Union Intellectual Property Office) and the registration of international trademarks with the WIPO (World Intellectual Property Organization).

The program includes two lines of intervention:

  • MEASURE A Measure B - Facilities to facilitate the registration of European Union trademarks with the EUIPO through the purchase of specialized services.
  • MEASURE A Measure B - Facilities to facilitate the registration of international trademarks with WIPO through the purchase of specialized services.

MEASURE A

Eligibility Requirements:

  • Having carried out, from June 1, 2019, the filing of the application for registration with EUIPO of the facilitated trademark and having complied with the payment of the relevant filing fees;

ALSO

  • Have obtained registration, with EUIPO, of the European Union trademark that is the subject of the application. Such registration must have occurred on a date prior to the submission of the application;

For Measure A, the facilities are granted to the extent of 80% of eligible expenses incurred for filing fees and eligible expenses incurred for the acquisition of specialized services and in compliance with the maximum amounts provided for each type and in any case within the maximum total amount per trademark of €6,000.00.

MEASURE B

Eligibility Requirements:

Having carried out, as of June 1, 2019, at least one of the following activities:

  • The filing of the application for registration with WIPO of a nationally registered trademark with UIBM or a European Union trademark registered with EUIPO and having complied with the payment of the relevant registration fees;
  • The filing of the application for registration with WIPO of a trademark for which an application for registration has already been filed with UIBM or with EUIPO and having complied with the payment of the relevant registration fees;
  • The filing of the application for subsequent designation of a trademark registered with WIPO and having complied with the payment of the relevant registration fees;

ALSO

  • Having obtained the publication of the application for registration in the WIPO International Register (Madrid Monitor) of the trademark applied for. The publication of the trademark application on the WIPO International Register must have occurred on a date prior to the submission of the application.

For Measure B, facilities are granted to the extent of 90% of eligible expenses incurred for the acquisition of specialized services and registration fees in compliance with the maximum amounts provided for each type and in any case within the maximum total amount per trademark of 9,000.00 euros.

For Measure B, for international registration applications filed as of June 1, 2019 for the same trademark, it is possible to make subsequent designations of additional countries; in this case the facilities are cumulative up to the maximum amount per trademark of €9,000.00.

For Measure B, for international registration applications filed before June 1, 2019, it is only possible to request facilitation for subsequent designations made after June 1, 2019, in which case the maximum amount of facilitation per trademark is € 4,000.00.

Each company may submit multiple applications for facilitations, for both Measure A and Measure B, up to a total value of € 25,000.00.

For the same trademark it is possible to cumulate the facilitations provided for Measures A and B (if in Measure B the European Union is not indicated as the designated country) in compliance with the maximum amounts indicated per trademark and per enterprise. For the same trademark, it is possible to apply for both Measure A and Measure B relief in a single application.

If an enterprise can apply for facilitation for more than one trademark, an application must be submitted for each of them, otherwise the application will be inadmissible.

The facilities under this Notice cannot be combined, for the same eligible expenses or part thereof, with other state aid or aid granted under de minimis or facilities financed with EU resources (e.g. EUIPO - IDEAS POWERED FOR BUSINESS). However, up to 100 percent of the expenses actually incurred, the facilities are available together with all general measures, including fiscal measures, which are not state aid and are not subject to the rules on cumulation.

APPLICATION SUBMISSION

  • The application is filled out exclusively through the computer procedure and in the manner indicated at [www.marchipiu2022.it].
  • The application is submitted from 9:30 a.m. on October 25, 2022 and until the available resources are exhausted.
  • The application for participation, generated by the IT platform must be digitally signed by the legal representative of the company requesting the facilitation or by the delegated special attorney on the basis of special power of attorney.

Clovers remains at the disposal of clients to provide all the advisory work.

EPO Patent Proceedings and Precautionary Measures

The Court of Justice of the European Union recently ruled on the interpretation of Article 9.1 of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights) in a patent dispute between two German companies, Phoenix Contact GmbH & Co. KG, the patent owner, and Harting Electric GmbH & Co. KG, the alleged infringer.

The ruling of 28 April 2022 came at the end of a preliminary ruling by the Landgericht München on an application for interim relief filed by Phoenix for the protection of a patent concerning a connection plug with a protective conductor terminal, which had been granted by the EPO but opposed by Hartig.

The Court of München found the patent to be valid and infringed, but could not issue the requested injunction because it was bound by the case law of the Oberlandesgericht München, which prevented the adoption of emergency measures for the protection of a patent as long as the validity of the patent itself was not confirmed by opposition or appeal proceedings before the EPO or by a decision of the Bundespatentgericht.

The question referred for a preliminary ruling concerned the compatibility of this case law with Article 9.1 of the Enforcement Directive, which provides for the possibility for the courts of the Member States to issue urgent measures against the alleged infringer of an industrial property right aimed at preventing any imminent infringement of an intellectual property right.

Firstly, the Court of Justice reiterated that the adoption of urgent measures for the protection of industrial property rights must always be subject to a 'fact specific' exam as to the the protectability requirements of those IP rights and their infringement.

Moreover, the very nature of the emergency measure must allow the stop of the infringement without having to wait for a ruling on the merits on the validity of the title and the relevant infringement in light of the irreparable prejudice caused by the delay that would be caused in the time needed to complete the substantive investigation on these aspects.

In that sense, the case-law of the Oberlandsgericht München would appear to be incompatible with this principle and to apt to deprive interim relief of its inherent effectiveness in so far as it makes the grant of interim relief subject to a further determination of validity by the EPO or the Bundespatentgerich.

In answering the question for a preliminary ruling, the CJEU thus concluded that Article 9(1) of the Enforcement Directive "precludes national case-law under which applications for provisional measures for patent infringement must be refused, in principle, where the validity of the patent in question has not been confirmed, at least, by a first instance decision issued following opposition or invalidity proceedings".

Is a pay-off (or slogan) registrable as a trademark?

Very often we are asked to register as a trademark a certain slogan (pay-off) and the answer is often not so obvious.

When we talk about pay-off in this field, we immediately think of the well-known “JUST DO IT” by Nike - which has over one hundred registrations worldwide - or the equally well-known "I'm lovin it" by McDonald's - which has also been registered by the American multinational worldwide.

However, the pay-off is not always registrable as a trademark, even though other forms of protection, alternative and different from the registration, are possible.

Recently, for example, the Court of the EU with the sentence of 30 June 2021 has rejected on appeal the application for registration of the figurative trademark

Goclean.png

by an Italian company manufacturing bathroom products, specifically for "flushing cisterns for WCs; toilet [WC] cups; water distribution systems."

Prior to this, other decisions at the European level, and not only, had also denied the registrability of certain slogans, noting their lack of distinctiveness: among them, the judgment of the EU General Court 30/04/2015 (joined cases T-707/13 and T-709/13) on the word mark "BE HAPPY" for stationery, giftware (cups and kitchenware) and toys.

Despite the fanciful and original character of the sign, the Community judges denied that the latter could perform the typical and main function of the mark, namely that of indicating the entrepreneurial source of the product or service to which it refers.

Similarly, in its judgment of March 9, 2017, in Puma/EUIPO, T 104/16, the General Court had denied the registrability of the Forever Faster sign for footwear and sporting goods, holding that the trademark would be perceived by the relevant public "as a mere laudatory formula or information about the desired qualities and purpose of the goods in question."

Otherwise, however, there are other precedents that have instead approved the registration of pay-off apparently not very dissimilar to the others just seen. Thus, the Sentence of the EU Court of Justice of 21.1.2010 handed down in judgment C-398/08 P (Audi AG) considered Audi's pay-off "vorsprung durch technik" ["Forward thanks to technology"] as registrable as a figurative trademark.

Audi.jpg

In this case, according to the General Court, "even assuming that the slogan 'Vorsprung durch Technik' conveys an objective message, according to which technological superiority enables the manufacture and supply of better goods and services, this circumstance does not allow the conclusion that the mark applied for is entirely devoid of inherent distinctiveness". The same judgment states: "All marks consisting of signs or indications which are also used as advertising slogans, indications of quality or expressions inciting the purchase of the goods or services designated by such marks convey by definition, to a greater or lesser extent, an objective message. Such a situation may in particular arise when these marks are not reduced to an ordinary advertising message, but possess a certain originality or richness of meaning, require a minimum of interpretative effort or trigger a cognitive process in the relevant public.

So how can we distinguish between registrable and non-registrable slogans?

The EUIPO, on the basis of the case law produced in recent years, has made available a series of guidelines (available on the site https://guidelines.euipo.europa.eu/1922901/1802830/direttive-di-marchi/4-slogan--valutazione-del-carattere-distintivo) useful for identifying when the slogan has not only an advertising value but also a distinctive character:

"It is possible for an advertising slogan to be distinctive whenever it is considered more than a simple advertising message extolling the qualities of the goods or services in question, in that:

  • constitutes a play on words and/or
  • introduces elements of conceptual intrigue or surprise, so that it can be perceived as an imaginative, surprising or unexpected sign, and/or
  • has some particular originality or resonance, and/or
  • triggers in the mind of the target audience a cognitive process or requires an interpretive effort. In addition to the above, the following characteristics of a slogan can contribute so that its distinctiveness can be recognized:
  • unusual syntactic structures
  • the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.

In the light of these guidelines and the recent judgment of the European Court of Justice on the “GO CLEAN” trademark, the picture seems to be clearer: without prejudice to the function of origin indicator that the trademark must have, this can also be fulfilled through an advertising slogan if the same is not reduced to a "simple laudatory formula". The trademark must therefore, first of all, indicate to the public the provenance of a product or service from a certain entrepreneurial source. Secondly, the trademark undoubtedly also has an advertising function. But when does the distinctive function of the trademark persist despite its distinctly advertising character? Clearer than the precedents cited above, appears the latest decision of the Tribunal according to which:

"41 - It is in fact sufficient, in order to establish the absence of distinctive character, to note that the contested mark indicates to the consumer a characteristic of the product relating to its commercial value which, without being precise, derives from information of a promotional or advertising nature which the relevant public will primarily perceive as such, rather than as an indication of the commercial origin of the goods. 42 - Well, in the present case, the relevant public will not need to make any interpretative effort to understand the phrase "go clean" as an expression that incites to purchase and that emphasizes the attractiveness of the products in question, addressing directly to consumers and inviting them to buy products that offer them greater cleanliness and better hygiene".

It could be said, therefore, that when the slogan is not trivial and obvious but imposes on the consumer a certain interpretative effort in order to grasp its meaning, it is a candidate to be accepted as a trademark.

It is good to remember that a fundamental parameter to evaluate the distinctive character of a sign is the "relevant public".

Therefore, a slogan can be registered as a trademark if it has sufficient distinctive character and is perceived by the relevant public as a sign indicating the entrepreneurial origin of a product or service and not just a laudatory expression or a simple promotional message: "31 Such a trademark must be considered devoid of distinctive character if it is capable of being perceived by the reference public only as a simple promotional formula".

A suggestion could be that of not immediately filing a slogan, but to wait until it has acquired a certain diffusion and fame among the public, a so-called secondary meaning, which makes it immediately reconnectable to a certain product (rectius: to a certain entrepreneurial source).

In this case, in fact, the distinctive function of the trademark is "saved" because it is guaranteed by the so-called secondary meaning.

The Court of Justice considers valid the Trademark for the Shape of a single Groove of a Tire (Yokohama Rubber vs Pirelli Tyre)

A few days ago, the European Court of Justice ("ECJ") issued a decision by which it rejected the invalidity action brought by the tire manufacturer Yokohama against the trademark application filed by Pirelli to protect a mere part of the tread of a tire as a trademark.

With this decision, the ECJ reformed an earlier ruling of the EUIPO Appellate Division, which had held that the design of a part of the tread did not in itself constitute a valid trademark in relation to class n. 12 of the Nice Classification because the groove performed a merely technical and non-distinctive function. However, in 2018, the ECJ overturned this decision and upheld the registration of the disputed mark specifically for these goods as well.

Yokohama appealed this decision before the European Court of Justice, which has now issued a final decision in this dispute (EU:C:2021:431). The European Trademark Office (EUIPO) and the European Association of Trademark Owners of the United Kingdom have also intervened in the case.

As in the previous cases, the possible technical function of a part of the Pirelli tread was once again the subject of discussion before the ECJ. Formally, both Yokohama and EUIPO claimed infringement of Article 7(1)(e)(ii) of Regulation 40/94 in the 2018 judgment of the CFI that was later appealed.

According to the ECJ, the CFI erred in holding that a single groove in a tire, which constituted the contested mark, was not in itself capable of performing a technical function within the meaning of Article 7(1)(e)(ii) of Regulation 40/94 because the groove appeared in a tire tread in combination with other elements.

Contrary to the appellant's view, the Court of First Instance had not ruled out the possibility that Article 7( 1)(e)(ii) of Regulation No. 40/94 might apply to a sign whose shape is necessary to obtain a technical result which contributes to the functioning of a product, even if that shape is not in itself sufficient to obtain the intended technical result of that product. The ECJ added that, on the contrary, the Court of First Instance had found that the evidence presented by Yokohama before the EUIPO did not show that a single groove of a shape identical to that represented by the mark at issue could achieve the technical result assumed in the contested decision.

In essence, the Court upheld the General Court's assessment by which the contested mark does not represent a tread pattern and therefore does not consist exclusively of the shape of the goods in question (namely tires) within the meaning of Article 7(e)(ii) of Regulation (EC) No. 40/94. It represents at most a single groove of a tire tread and not a tire tread, since it does not incorporate the other elements of a tire tread.

Artistic value and innovative sculpting techniques

3D printing is a versatile tool that can be used to create anything from a simple pencil to an entire building, which can be scanned, transformed into an algorithm and then re-materialized by a machine that literally sculpts it in just 48 hours.

In the artistic field, the applications are potentially boundless, and today, architects and fashion houses are increasingly making use of 3D printers to implement their projects, containing costs and also reducing the environmental impact of production.

But it is in the world of sculpture that the use of three-dimensional milling techniques have come to the forefront with a recent Italian Court case which shows that, while it is true that 3D printing is a great opportunity for innovation in the artistic world, the widespread circulation on the internet of files containing information suitable for reproduction through 3D printers can rise new between IP owners and third party users.

This is what happened with a sculpture made with innovative techniques and designed in one of the European centers of excellence of woodworking: Val Gardena.

This place, which is known in Italy and abroad as the home of religious craftsmanship; in this market, the Demetz family has been active for generations in the creation of sculptures that today it designs and manufactures through the use of advanced methods.

In order to realize a statue commissioned by an American dealer in 2019, the Demetz Art Studio L.t.d., once completed the realization of a drawing and of a first wooden example, turned to a Florentine company to carry out the robotic milling of the statue starting from a 3D scan, which was delivered to the company in a special file, with the express indication to return it or destroy it and, in any case, not to make other specimens of the statue.

Once the milling had been completed and the statue delivered to the United States, the Demetz family noticed on Facebook a post containing a photograph, taken in the same factory where the milling had been carried out that depicted the same identical statue they had commissioned; following to a surprise inspection, they also found on site another copy of the statue being processed and its image inserted in a brochure.

Not having obtained the restitution of the file of the 3D scan, which allowed the realization of the copies of the statue, Demetz Art Studio L.t.d. commenced a preliminary injunction proceedings before the Court of Florence, asking for description, seizure and injunction of the file, the copies of the statue and the promotional material on which it was represented.

The Court granted an inaudita altera parte decree and, in confirming the measure, highlighted several aspects related to the protection afforded by copyright to creative works.

The first interesting aspect of the provision concerns, in general terms, the relationship between artistic creation and new crafting technologies: according to the Court, the creativity and authorship requirements laid down in law for the protection of a work of art are not lost when the same is transposed into a digital image and then mechanically reproduced, not even in cases where the realization of these stages of processing have involved the executive intervention of third parties.

Taking a position specifically on the illicit exploitation of copyright, the Court has disregarded the argument of the respondent who claimed to have used the image of the statue on the leaflets and brochures only to show his craftsmanship.

The Court held that even the representation and use of a copyrighted work show the executive skills of a craftsman constitutes an economical use, oriented to advertising and, absent the authorization of the author, it also integrates a violation of copyright.

By recognizing the creative nature of the statue, the Court of Florence applied art. 12 paragraph 2 of the Italian copyright law, which establishes that the author has the exclusive right to use the work economically in any form and manner.

Since the use of another person's work is aimed in this case at pursuing an economic advantage, such as gaining prominence and notoriety among the public, the system of exceptions and limitations provided for by Italian copyright law could not find application.

In fact, by virtue of Art. 70 of the Italian copyright law, copyrighted work can be used for free - and without any authorization from the author - in all cases where the protection of copyright is in conflict with preminent objectives and values that are often in antithesis with it (e.g. freedom of expression and communication, protection of users' privacy, artistic and scientific progress, etc.).

In this scenario, the 2019 Copyright Directive – that will be soon transposed in Italy - has intervened by making copyright exemptions (such as quotation, criticism, review and uses for the purpose of caricature and parody) the subject of mandatory regulation for all EU member states.

Court of Florence, order of January 7, 2021

Why should you protect your IP?

Protecting IP is becoming increasingly difficult, particularly with the proliferation of online sales. The Internet has created an ideal and, often, an almost anonymous selling place for sophisticated counterfeiters of products.

Why should you protect your IP? According to a 2013 report by PricewaterhouseCoopers, the value of the global impact of counterfeit goods and illicit trade is estimated to be US$650 billion per year. That is US$650 billion of lost revenue for brand owners, authorized manufacturers, distributors and retailers of genuine goods.

Ignoring the infringement of IP rights when it arises can dilute the strength of the right itself, undermining distinctiveness (in the case of a trade mark) and the ability to stop future infringement. This has a knock-on impact on the value of goodwill of a business.

The cure? Many businesses elect to protect their IP by registering trade marks, design rights, and patents with the relevant authority (whether that is a national authority, such as the Office for Harmonization of the Internal Market (“OHIM”) or the World Intellectual Property Organization (“WIPO”).

My suggestions of ways in which a brand can strengthen its position vis-à-vis counterfeiters include the following:

  • Create a strong brand identity, using the same logos, designs, packaging etc., consistently across product lines.
  • Use security features, such as stickers, serial numbers, holograms or mylar/security strips in products to help aid detection of counterfeit goods. These details will also assist in monitoring the security of your manufacturing, distribution and retail processes.
  • Create an authorized manufacturing, distribution and retail network for products.
  • Make each entity in your manufacturing, distribution and sales chain subject to contractual obligations to protect your IP and report to you any instances where it has become aware of possible infringement, either by itself or a third party.
  • Register your IP with relevant national customs authorities to enable them to detect and detain counterfeit goods that are imported and exported, allowing you to take action, where appropriate.
  • Periodically collect and review information about any counterfeit goods that are discovered. You may choose to employ a ‘watching’ service to assist with this monitoring. This information will help you identify jurisdictions and territories where counterfeit goods are being produced as well as any weak links in your manufacturing, distribution and sales chain and the common distinguishing features of counterfeit goods.
  • Clearly allocate responsibility within an organization for dealing with infringements and maintain a portfolio of relevant information so that documents such as registration certificates, precedent letters of complaint and text for witness statements are easily accessible.

For any questions on how to protect you IP, feel free to contact: Gianpaolo Todisco at gianpaolo.todisco@tsclex.com