19th ANNUAL CONFERENCE
FORDHAM INTELLECTUAL PROPERTY LAW INSTITUTE
Fordham University School of Law
Thurday and Friday, April 28-29, 2011
Hugh C, Hansen
Director
SPECIALIZED TRADEMARK COURTS –
THE ITALIAN EXPERIENCE
Marina Tavassi – President of IP Specialised Court of Milan, Italy
Marina Tavassi
Intellectual Property Specialized Court of Milan
Protection of Intellectual Property Rights
before the Italian Specialized Courts
How it works
The Italian Supreme Court
in Rome
The modernisation process regarding the
protection of Intellectual Property rights.
1.
The creation of the Specialized Courts in Industrial
and Intellectual Property (Law Decree n. 168/2003):
12 Courts of first degree and 12 Courts of Appeal
throughout Italy, dealing with:
- industrial and intellectual property law,
- unfair competition, only recognised as “interfering”
with IP rights,
- competition, whether “interfering” with IP rights.
The Specialized Divisions were established at the
District Courts and Courts of Appeal of Bari, Bologna,
Catania, Florence, Genoa, Milan, Naples, Palermo,
Rome, Turin, Trieste and Venice
2.
Industrial Property Code (patents, trademarks,
designs and models, biotechnologies, …)
Law Decree 10 February 2005 n. 30.
Venues of the Specialized Courts
(art. 120, par. 4., IPC – D.Lgs 27 giugno 2003, n. 168)
Milano
Trieste
Torino
Venezia
Genova
Bologna
Firenze
Roma
Napoli
Bari
Palermo
Catania
(no court in
Sardinia)
Decisions of Specialized Courts
(July 03 - December 10)
“Le Sezioni Specializzate italiane della proprietà industriale e intellettuale”
(Italian IP Courts Report a cura di Massimo Scuffi - Marina Tavassi)
data elaboration: Giovanni F. Casucci MIP Politecnico Milano
Unfair
competition
CONCORRENZA
14%
14%
Copyright
16% AUTORE
16%
BREVETTI
Patents
15%
Patents
15%
15%
BREVETTI
patents
MARCHI
trademarks
DISEGNI
designs
unfair competition
CONCORRENZA
copyrights
AUTORE
DISEGNI
13%
Designs Models 13%
MARCHI
42%
Trademarks 42%
Decisions of Specialized Courts
(July 03 - December 10)
“Le Sezioni Specializzate italiane della proprietà industriale e intellettuale”
(Italian IP Courts Report a cura di Massimo Scuffi - Marina Tavassi)
data elaboration: Giovanni F. Casucci MIP Politecnico Milano
Italian 37%
EUROPEI
European 29%
29%
COMUNITARI
37%
COMUNITARI
INTERNAZIONALI
EUROPEI
INTERNAZIONALI
34%
International
34%
Decisions of Specialized Courts
(July 2003 - December 2010)
“Le Sezioni Specializzate italiane della proprietà industriale e intellettuale”
(Italian IP Courts Report – by Massimo Scuffi - Marina Tavassi)
data elaboration: Giovanni F. Casucci MIP Politecnico Milano
Decisioni Corti Specializzate
(Dicembre 04 - Luglio 05)
TRIESTE
Trieste
Trieste0,5
0,50%
%
%
VENEZIA
Venice
7%
7%
TORINO
BARI
Bari 3%
4%
BOLOGNA
Bologna 89%
%
CATANIA
Catania
3%
3%
FIRENZE
Florence
5%
Turin 1215%
%
5%
GENOVA
Genoa
2
2%
ROMA
Rome 22%18%
Palermo
MILANO
Milan
26%
PALERMO
0,50%
%
NAPOLI
Naples
12%10 %
26 %
%
Types of actions available in Italy
before the Specialized Courts
• actions for infringement
• actions for revocation or nullity of the patent,
trademark, design and model
• actions to attribute the right to the owner
• actions for damages
• actions for interim measures (including
seizures, injunctions, penalties, publication of
the decision)
THE ITALIAN SPECIALIZED
COURTS
• They decide the cases in a panel of three
judges
• No enlarged courts (not including technical
experts)
• Each Division usually consists of six/eight
judges, in addition to the president
• They work with an ultra-district (European /
international) perspective
• They also act as European Courts for European
trademarks, designs and models
EXPERT WITNESSES
IN I.P. LITIGATIONS
• Assessment of patent: object of patent; novelty; inventive
step (prior art); industrial character; sufficient description
• Technical elements to appreciate the existence of the
infringement and its consequences
• Indication of possible remedies
• Purchase of goods by the infringer company
• Estimate of the possible royalties
• Technical elements to calculate damages (loft of profits,
benefits realized by the infringer, fees that the infringer
would have paid in case of licence)
 Peculiarities of the role of the expert in intellectual
property law and competition
THE EXPERT WITNESS
in Italian case law
• He/she can not discharge the burden of proof
charged to the parties
• can not be explorative
• has to provide the judge with the technical
elements necessary to appreciate the right or to
liquidate damages,
judge’s evaluation
without replacing the
MEANS OF EVIDENCE
for pending litigations in IP cases
The Italian background
at party’s own initiative:
– documents production
– testimonial evidence
– formal examination of the opposite party
– submission of decisive oath
– request for documents exhibition order
(Article 210 Civil Procedure Code)
– petition to the judge in order to acquire
information in possession of the opposite party
– request for technical expertise
MEANS OF EVIDENCE
at judge initiative
– request for information to Public Administration
– inspections
– free examination of the parties
– investigation of the testimonial evidence
– technical expertise
OTHER MEANS OF EVIDENCE:
 presumptions
 common experiences advices
 parties’ behaviour (Art. 116 Civil Proc. Code):
refusal to render the examination, to allow the inspections, to
obey to the order of exhibition or acquisition of information.
Typical evidence and injunctions
• Production of evidence by the opposing party
(Article 121.2 IP Code);
• Collecting information through the examination of
the opposing party (discovery: Article 121 bis IPC);
• Order to provide all the elements necessary to
identify the subjects involved in the production
and distribution of the infringing goods or
services and of their channels of distribution
(Article 121.1, IPC);
• Measures to guarantee protection of reserved
information (Article 39 TRIPs; Article 121.3 IP Code);
• Seizure or description of evidence of the reported
violation (Articles 129-130);
• Possibility to ask for the appointment of an expert
in a pretrial phase (Article 128 IPC).
Precautionary measures
of the Italian civil procedure code
Order of facere
General atypical
measures (Article
700 c.p.c.
Order of non facere
(injunction: to refrain
from doing or continuing
to do a particular act or
activity)
M.Tavassi
Precautionary measures
of the Intellectual Property Code
Description (art.130 I.P.Code)
IP Rights : Patents,
Protection of confidential information
Trademarks, other distinctive
signs, geographical indications,
Seizure (art.130 I.P.Code):
designation of origin, designs
- items infringing the right
and models, utility models, new - means to manufacture them
plants varieties, topographies of
- evidence
semiconductor products, know
 Protection of confidential information
how, biotechnologies.
This measures may be
issued even while the
registration or patenting is
still pending (art. 132 I.P.
Code)
Marina Tavassi
Injunction (art.131 I.P. Code)
Provisional protection of
domain names art.133 I.P.Code
Provisional seizure (against piracy
ex art. 144-bis)
Article 125 IP Code
DAMAGES
• Art. 125 - Damages and return of profits made by the
infringer:
•
1. The damages due to the aggrieved party shall be quantified
pursuant to Articles 1223, 1226 and 1227 of the Civil Code, taking
into account all appropriate aspects, such as prejudicial economic
consequences, including loss of profits, which the owner of the
infringed right has suffered, the benefits realized by the infringer
and, whenever appropriate, aspects other than those of an
economic nature such as moral prejudice caused to the rights
owner by the infringement.
•
2. A judgment ordering damages may quantify the damage in
an overall amount fixed on the basis of the records in the case and
of the presumptions inferred therefrom. In this case the loss of
profit is fixed in an amount not lower than the amount of the fees
that the infringer would have paid had he obtained the licence from
the owner of the infringed right.
•
3. In any event, the owner of the right may demand the return
of all profits made by the infringer either as an alternative to the
reimbursement for loss of profits or for the amount exceeding such
reimbursement
Italian Specialized Courts
have they been successful?
YES, for different reasons:
• i) reduction of the number of courts
involved
• ii) certainty in law
• iii) high degree of specilization of judges
• iv) improved skill in the precautionary trial
• v) reduction of the length of the trials
• vi) increasing quality of the decisions
Thank you for your attention!
The Italian Supreme Court
in Rome