ITALY Trends and Developments Contributed by: Giovanni F Casucci, EY Tax & Law
Introduction Contrary to the stereotypes of inefficiency and lateness that are widely held against Italy and its institutions, the specific judicial system (that has characterised the judicial defence of intellectual and industrial property rights since 2003) is, on the contrary, an example to be observed and appreciated in the European panorama. As shown by various statistics published by specialised journals (such as JUVE Patent) and specialised databases (such as DARTS IP), Italy constitutes the second largest European country in terms of volume of litigation concerning regis- tered patents and designs. Furthermore, according to the June 2023 the EU Intellectual Property Office (EUIPO) report on Trade Secrets Litigation Trends, Italy is the country with the highest volume of all EU litiga- tion, considerably higher than countries known for IP litigation (France and Germany). This figure, which is understood to also include litigation concerning registered trade marks, is entirely consistent with Italy’s role as the second European country in terms of European design and trade mark filings with EUIPO. The fact that, unfortunately, Italy does not have a corresponding position for patents in the annual European Patent Office (EPO) statistics is cer- tainly not an indication of a lack of innovation capacity but simply an indication of scepti- cism towards patent investments. In fact, Italian entrepreneurs believe that it is only appropriate to invest in a patent when there is a high level of innovation contained in the invention, not set- tling for solutions that are simply “not obvious”. In this article the author will outline why he believes Italy already represents a significant
strategic option for foreigners to handle litiga- tion very effectively, not only for patents but also for all other IP rights. A Unique System With 11 Specialised Courts Ever since the 2003 reform, in which specialised sections on industrial property (thus including patents, trade marks, design, trade secrets and copyrights) were established for the first time, the approach of the Italian judiciary has been to give maximum attention to this issue, which is strongly influenced by EU legislation and the case law of the CJEU. This attention has manifested itself first and fore- most in the management of timeframes, allow- ing it to benefit from preferential treatment com- pared to normal civil litigation. Following the various reforms, a specific selec- tion of 11 courts (half of the 22 competent for civil litigation) was created in 2014 to give pri- ority treatment to litigation involving foreigners (as claimants or defendants). This selection is intended to respond to the specific recommen- dation contained within the Guidelines on EU trade marks to invite member states to appoint a reduced number of courts with the power to handle counterclaims for nullity and injunctions within the EU territory. The Real Timing of Industrial Litigation in Italy The “time” factor is considered a key priority in the Italian litigation and the entire substantive and procedural regulatory system is designed to allow for efficient management. Of course, like any “tool”, it must be well known and properly used. Firstly, to support this point, there is a fact that has astonished many European professionals
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