ITALY Law and Practice Contributed by: Maurizio Marullo, Giorgio Vagnoni, Claudia Marongiu and Pasquale Ambrosio Cepparulo, LAWP Studio Legale e Tributario
Contractual JV The JV agreement or its ancillary agreements may regulate the terms and conditions of: • the licensing between the co-venturers of their respective IP rights needed to develop the JV’s scope (including trade names, trade marks, tech - nology, patents, know how, trade secrets and list of clients); • the attribution of ownership of the IP jointly devel - oped by the co-venturers; • the confidentiality undertakings mutually assumed by the co-venturers; and • the consequences of the JV termination on IP rights. Moreover, to protect their respective IP rights, each co-venturer typically agrees to co-operate with the other in preventing IP infringement. This may involve taking legal action against third parties who infringe on the JV’s IP rights or the IP rights of individual co- venturers. Corporate JV In the case of corporate JVs, the co-venturers may consider and regulate within the JV agreement or the ancillary agreements the following issues: • definition of the JV name and execution of any licence of use for company names or trade marks needed for this purpose; • decision on the transfer or licensing of IP rights owned by the co-venturers to the JV; • rules governing the attribution of the ownership of the new IP developed by the JV; • consequences of the liquidation or winding up of the JV on the IP rights and licences (if applicable); and • procedures and rules to prevent IP rights infringe - ment and possible strategies for resolving disputes related to IP rights. Licence agreements typically include the several key provisions, essential for defining the terms of the rela - tionship between the licensor and licensee:
the co-venturer appointing them, the directors have to act for the exclusive benefit of the company, as better detailed in 7.3 Conflicts of Interest . In addition, the directorship agreements between the JV and the director typically include non-compete clauses designed to prevent the director from engag - ing in competition with the company. Under Italian law, non-compete clauses shall be limited in terms of Under Italian law, co-venturers are allowed to appoint directors to the JV. However, notwithstanding their appointment by a specific co-venturer, the directors must act in the best interests of the JV. The Italian Civil Code distinguishes between the regu - lation of conflicts of interest in S.p.As. and S.r.l.s. • S.p.A.: directors are required by law to disclose any personal or third-party interests in company transactions to the board of directors and auditors. If a director with such an interest is also a manag - ing director, they must abstain from the transaction and delegate it to the board. If they are the sole director, they must inform the next shareholders’ meeting. Decisions must be justified based on the company’s best interests. scope, timing and territory. 7.3 Conflicts of Interest • S.r.l.: even though a prior information obligation is not required by law, contracts entered into by directors in conflict of interest and third parties may be voided at the company’s request if the third party was aware of the conflict. • S.p.A. and S.r.l.: board resolutions taken with the deciding vote of a director in conflict of interest, resulting in financial harm to the company, may be challenged within 90 days by the other directors or by the statutory auditors (if appointed).
8. IP and ESG 8.1 Ownership and Use of IP
Critical IP issues, such as IP ownership, licensing and protection, should be addressed between the co-ven - turers before establishing a JV.
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