ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
Administrative Litigation Very few intellectual property disputes may be resolved through administrative proceedings. The UIBM provides administrative procedures for opposition, revocation and nullity only for trade marks. Customs Protection In order to try to prevent the entry of infring- ing goods into the Italian territory from a coun- try outside the EU, it is possible to request the Customs Authorities to monitor (via Regulation (EU) No 608/2013) the incoming goods – for a maximum period of one year, which may be renewable – and proceed to suspend the release or detain the goods that are actually infringing any IP right. Civil Litigation The Italian civil litigation practice is largely domi- nated by the use of preliminary measures, main- ly starting with evidence preservation orders ( Descrizione ) issued “ex parte” and followed by preliminary injunctions. Owners may seek preliminary measures before the intellectual property sections of the compe- tent court to quickly intervene against infringing activities before or during the course of legal proceedings. In preliminary proceedings, which are generally much shorter in duration than ordi- nary court cases, the law allows for temporary remedies such as preliminary injunctions, sei- zures and requests for any information (technical and accounting). After the preliminary measure phase, cases that are not settled are transformed into ordinary pro- ceedings to confirm the preliminary measures obtained and to claim damages.
Criminal Proceedings In some cases, it is also possible to file a com- plaint against the counterfeiter (before the Pub- lic Prosecutor’s Office or area police stations) or report the counterfeiting to the Italian Revenue Police ( Guardia Di Finanza ) which, if there are crimes, will forward the facts to the Public Pros- ecutor’s Office. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property In Italy, any third party who wishes to challenge or remove the effects of a technical intellectual property right can file the following. Invalidity/Revocation Action Any third party may file an invalidity or revoca- tion action to challenge the validity, for exam- ple, of a granted patent. This can be based on various grounds, such as lack of novelty, lack of inventive step or insufficiency of disclosure. The request can be submitted by anyone who has a general interest against it, including the Public Prosecutor defending the public interest to not have unjustified monopolies. Declaration of Non-Infringement Third parties can file preliminary or merit pro- ceedings seeking a declaration of non-infringe- ment. This legal action aims to obtain a court declaration that the third party’s activities do not infringe the asserted intellectual property right, but a valid interest in the action must be dem- onstrated to enforce it. In Italy, however, there are no opposition pro- ceedings for technical IP rights (patents and util-
ity models), only for trade marks. 2.3 Courts With Jurisdiction
In Italy, the jurisdiction for intellectual property matters lies with specialised sections of the ordi-
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