ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
Trade dress is not an autonomous category under Ital- ian law. The overall look and feel of a product, pack- aging or store layout may nevertheless be protected through trade mark, design, copyright and unfair com- petition rules where the relevant requirements are met. Product shapes and packaging may be protected simultaneously as trade marks and designs. The main limits are distinctiveness, functionality and technical necessity. A shape cannot be registered as a trade mark if it results from the nature of the goods, is nec- essary to obtain a technical result, or gives substantial value to the goods. Similarly, design protection does not cover features dictated solely by technical func- tion. 8.5 Copyright and Trade Marks A sign consisting of a work of authorship may be reg- istered as a trade mark. A company logo, for example, may function as a trade mark – enabling consumers to identify the commercial origin of goods or services – while its creative aspects may simultaneously be protected by copyright, pro- vided the design demonstrates sufficient originality. Cumulative protection is established on a case-by- case basis, and Italian courts assessing combined claims involving both copyright and trade mark rights apply each set of rules autonomously, subject to the respective thresholds and limitations. 8.6 Enforcement and Remedies Across Multiple IP Rights Claims based on different IP rights may be brought in the same proceedings where there is a connection between the claims and the court has jurisdiction. It is common, for example, to combine trade mark, design, copyright, unfair competition and trade secret claims in disputes concerning the same product or conduct. Where multiple infringements are established, courts may grant co-ordinated remedies such as: • injunctions; • seizure;
• withdrawal from the market; • destruction; • publication of the decision; and • damages.
The scope of the injunction may reflect all rights infringed, while damages are assessed on the basis of the actual harm suffered. Double recovery is not permitted. The claimant may rely on multiple legal bases ( concurso formale ), but cannot obtain more than one compensation for the same loss. Courts therefore avoid duplication by assessing damages globally or by allocating distinct heads of loss where they are genuinely separate. 8.7 International and Cross-Border Considerations Cross-border IP disputes are managed through EU and international private international law rules, espe- cially the Brussels I Recast Regulation on jurisdiction and recognition of judgments and the Rome II Regu- lation on non-contractual obligations. The territorial nature of IP rights remains central. As a general rule, infringement actions may be brought before the courts of the defendant’s domicile or, in certain cases, before the courts of the place where the harmful event occurred or may occur. For registered rights, validity and registration issues fall within the exclusive jurisdiction of the courts of the state where the right is registered. This distinction is particularly important where infringement and invalidity argu- ments are raised together. EU unitary rights, such as EU trade marks and Com- munity designs, have specific jurisdictional rules and may allow remedies with EU-wide effect. For Euro- pean patents and unitary patents, the UPC may have jurisdiction where applicable. Parallel proceedings are managed through lis pen- dens and related-action rules. Italian courts may stay or decline proceedings where another competent court is already seized of the same or a closely con- nected dispute.
153 CHAMBERS.COM
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