Tag: Italy

1
Sky v Skykick AG – is this the end of a claim for “computer software?”
2
Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU
3
EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)
4
When recording also means communication to the public – interaction between copyright and cloud-based video recording services
5
“Vespa” scooters win twice against counterfeiting – Piaggio wins two lawsuits in a month
6
The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks
7
Italy ratifies UPC Agreement and Introduces Provisions Against Indirect Counterfeiting
8
European Copyright Reform
9
The Protection of Creative Designs: New Evaluation Standards Introduced by the Italian Supreme Court
10
A bed Called ‘Nathalie’ – A Dispute Over Creative Designs Protected by Italian Copyright Law

Sky v Skykick AG – is this the end of a claim for “computer software?”

On 16 October 2019, Advocate General Tanchev of the CJEU has issued his opinion in Sky v SkyKick one of the most intriguing trade mark cases at the moment which will likely have a significant impact on EU trade mark law. Crucially the AG has advised that:

  1. “registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest” because it confers on the proprietor a “monopoly of immense breadth which cannot be justified”, and it lacks sufficient clarity and precision; and
  2. trade mark registrations made with no intention to use, in relation to the specified goods and services, may constitute bad faith.
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Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU

A recent decision by the Court of Milan found that a trade mark owner who had consented to products being sold in the European Economic Area (EEA), but only through authorised retailers, could make a claim for trade mark infringement where the product was sold by an unauthorised retailer. This case highlights the effectiveness of implementing a selective distribution system for product manufacturers looking for new ways to protect their brand.

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EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)

On 20 June 2017, a ruling between Sprinter megacentros del deporte SL and Diesel SpA was made regarding similar trademarks indicating there would be a risk of consumers being misled in relation to two similar figurative marks in the form of the letter “D” in respect of identical goods. A consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.

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When recording also means communication to the public – interaction between copyright and cloud-based video recording services

On 29 November 2017, the Court of Justice of the EU (CJEU) released its judgment in response to a reference from an Italian court relating to cloud recording and computing services provided by VCAST Limited (VCAST). The services enabled VCAST’s customers to select live broadcasts of television programmes that VCAST then remotely, through its own systems, recorded and made available in a cloud data storage space. The Italian court asked whether VCAST could provide this service without the permission from the owner of the copyright over the programme, with a specific query as to the application of the private copying exception provided in Article 5(2)(b) of the Information Society Directive (2001/29/EC) (InfoSoc Directive).

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“Vespa” scooters win twice against counterfeiting – Piaggio wins two lawsuits in a month

In just a few weeks, Piaggio – the Italian company manufacturing iconic Vespa scooters – obtained a double victory before Italian courts both under the intellectual property and the copyright perspectives.

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The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks

2017 provides companies based and operating in Italy with a new opportunity for promoting their IP assets.

The Italian Government has launched a tender for granting allowances intended to support historical trademarks, for a total amount of 4,5 million Euro. The purpose of this new initiative is to promote and boost the historical and cultural entrepreneurial heritage of Italy by supporting specific national trademarks.

Allowances are granted for expenses related to manufacturing and commercial promotion of the historical trademark. This includes the purchase of goods and services for manufacturing purposes based on a plan for the promotion of the trademark involving goods and services falling under the scope of protection of the trademark – i.e. Nice classes for which the trademark is registered.

Further allowances could be also granted for activities related to the strengthening of the historical trademark, its extension at European and international level and to Nice classes other than those for which the trademark was previously registered, provided that their application comes along with another one for allowances related to the promotion of the trademark as described above.

In order to obtain the benefit of such allowances, companies of micro, small and medium dimensions complying with specific requirements must prove that their historical trademark is valid, registered before the Italian Patent and Trademark Office (UIBM) or the EUIPO with seniority claim for registration before the UIBM, not revoked, and that its application for registration was filed before the UIBM before January 1, 1967.

Companies can file their application from April 4, 2017 and until allowances stock lasts.

By: Alessandra Feller and Alessia Castelli

Italy ratifies UPC Agreement and Introduces Provisions Against Indirect Counterfeiting

In December 2016 the Italian government ratified the Unified Patent Court Agreement (UPCA). By this ratification, Italian patent law now has a new rule on the prevention of indirect use of an invention (“indirect counterfeiting”), which is unprecedented in Italy.

The text of the new law amends the Italian Industrial Property Code by reference to Article 26 of the UPCA, by stating:

“A patent confers on its proprietor the right to prevent any third party not having the proprietor’s consent, from supplying or offering to supply, within the territory of the state in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known by ordinary diligence, that those means are suitable and intended for putting that invention into effect.

The above paragraph does not apply when the means are common commercial products, except where the third party induces the person supplied to perform any of the acts prohibited under the qualification of direct use of the invention.”

This law – which was added to the pre-existing Article 66 of the Italian Industrial Property Code – makes reference to a list of persons and acts excluded from being able to exploit an invention. Such a list is contained in Article 68 of the Italian Industrial Property Code, which currently remains unmodified.

The implementation of this rule on “indirect counterfeiting” represents a step forward in legal protection for patents in Italy.

By: Alessandra Feller and Alessia Castelli

European Copyright Reform

By Alessandra Bellani and Alessandra Feller

On December 9 2015 the European Commission presented a proposal for European Copyright reform. The proposed framework, inspired by the European digital single market project, aims to provide European users with wider content and strengthen copyright protection, as well as ensure authors a fair remuneration.

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The Protection of Creative Designs: New Evaluation Standards Introduced by the Italian Supreme Court

By Alessandra Feller and Alessandra Bellani

Through judgment no. 23292 of November 13 2015, the Italian Supreme Court introduced a distinction between objective and subjective standards, which should guide the judges’ assessment in order to decide if an industrial design can seek protection under Italian copyright law (the “IC Law”).

The Supreme Court recalled the principles established under the IC Law providing that:

  • industrial designs are worthy of protection if they have a “quid pluris” that consists of creative and artistic features; and
  • simple creative works are worthy of protection even if they only have an intrinsic artistic value.

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A bed Called ‘Nathalie’ – A Dispute Over Creative Designs Protected by Italian Copyright Law

A recent judgment on 16 June  2015 (no. 7432/2015), saw the Court of Milan ascertain the difference between a shape trademark and an artistic shape classified as industrial design protected under copyright law.

The dispute concerned the use and the reproduction of the design of the renowned ‘Nathalie’ bed (the Design), which was created in the ‘70s by Italian designer and architect Vico Magistretti. Mr. Magistretti (and later his heirs) granted an exclusive licence of the Design to the plaintiff.

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