ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
The judicial authorities in both interlocutory and substantive proceedings may also order, upon a justified and proportionate request by the applicant, that information be provided on the origin and distribution networks of the goods or services infringing a right: this information is obtained by questioning the infringing parties or third parties. 2.11 Initial Pleading Standards In the pleading initiating the proceedings, the plaintiff must set out clearly, specifically and concisely the factual and legal grounds for the claim, indicate the evidence it intends to rely on and the documents it offers to produce. The content of the writ of summons is provided by Italian procedure law: it must contain, for example, the indication of the competent judi- cial office, the parties, the subject matter and the grounds for the claim, the form of order sought, or the application made. The initial pleading is not typically required to include extensive evidence. However, it should refer to key facts and evidence that will be pre- sented during the course of the proceedings. Parties are generally allowed to supplement their pleadings with additional arguments or evidence during the course of the proceedings. This can be done in response to counterargu- ments raised by the opposing party or as a result of new developments in the case. The rules underlying the lawsuits in intellectual property proceedings are the same as those of the general Code of Civil Procedure (CPC), but the Italian system is based on a complex exchange of written pleadings between the par- ties (as a rule, in interlocutory proceedings alone, there is an exchange of at least five pleadings): the parties have several opportunities – both in
interlocutory proceedings and in proceedings on the merits and on appeal – to submit new argu- ments and documents. 2.12 Representative or Collective Action In the Italian regulatory system, class actions have been envisaged since 2019, but not spe- cifically for IP matters: at present, there are two general regulations that exist side by side (one contained in the CPC and one contained in a special directive that can only be activated by consumer associations, which entered into force in April 2023). At present, however, there is no precedent for class actions in IP matters. 2.13 Restrictions on Assertion of an Intellectual Property Right The exercise of intellectual property rights is sub- ject to compliance with antitrust and competition laws: for example, unfair competition practices, anti-competitive agreements and the abuse of a dominant position are prohibited. The exercise of intellectual property rights should not unduly restrict competition in violation of these laws. Moreover, the sending of a warning letter not properly grounded or expressing extremely aggressive tones may generate the right to obtain an injunction against such behaviour and the determination of a specific financial and image liability against the patentee. In certain circumstances, competition authori- ties or the court may grant compulsory licences to third parties if the exercise of an intellectual property right is deemed anti-competitive or results in a restriction of competition: more spe- cifically, in the context of standard-essential pat- ents (SEPs), the owner may have made FRAND (fair, reasonable and non-discriminatory) com-
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