In Italy, trade marks are governed by national and European Union law as well as international conventions.
The main source of law relating to trade marks in Italy is Law No. 30 of 10 February 2005, the Code of Industrial Property ("CIP"), which repealed and reorganized all prior legislation on industrial property, including the old Trade Mark Law. The CIP entered into force on 19 March 2005.
The CIP also contains a number of rules relating to trade mark litigation that complement those set forth in the Code of Civil Procedure.
In addition, Italy is party to a number of international treaties:
Moreover, as a Member State of the European Union, Italian trade mark law is also affected by Community legislation. In particular, by Directives (such as the implemented EC Directive No. 2004/48 on the Enforcement of IP rights and Directive No. 2008/95 to approximate the laws of the Member States relating to trade marks ("the Trade Mark Directive")) and Regulations (such as Regulation No. 40/94 on the Community trade mark and Regulation No. 510/06 concerning Geographical Indications).
Court decisions are not binding for future cases between different parties. However, they may certainly have a persuasive effect for future decisions, especially in similar cases, if they are issued by higher courts, and if they represent consistent case law.
Under Italian law, trade mark protection can be obtained either by way of registration or by way of use. However, only use on a scale that is not merely local is acceptable to qualify for protection in a form that is comparable to that of a registered trade mark. In either case, the scope of protection is limited to the goods and services identical or similar to those for which the trade mark is used or registered.
However, pursuant to Articles 12.1(e) and 20.1(c) of the CIP, a registered trade mark having a reputation in Italy (that is, a trade mark that has acquired a reputation for at least some of the goods and services for which it has been registered) is also protected in relation to goods and services dissimilar from those for which it has been registered, provided that:
The interpretation of these provisions, as well as of the corresponding article in the Trade Mark Directive, has caused much debate and has produced a substantial number of court decisions.
According to the decisions of the CJEU and Italian courts, a trade mark has a reputation if it is "known by a significant part of the relevant public for the products or services it covers" (CJEU, General Motors, 14 September 1999, C-375/97).
Italian law also protects trade marks having a well-known status - which differs from a trade mark having a reputation - in accordance with Article 6bis of the Paris Union Convention. A well-known trade mark is an unregistered mark (or at least unregistered in the country where protection under Article 6bis is sought) that is well-known by the public in Italy even though the mark in question is not used in the country and it has therefore acquired the well-known status for reasons other than its use.
According to Article 12.1(a) and (f), a well-known trade mark may be invoked to prevent the registration of a later identical or similar mark for identical or similar goods and services, and if the mark in question (in addition to being well-known) also has a reputation. The same will apply for dissimilar goods and services.
Courts occasionally use the adjective "famous" to designate a trade mark having a particularly high reputation, but the acknowledgement of this status has no significant consequence in terms of protection.
In short, there are no particular rules governing the trade marks of the luxury industry, nor protecting the "aura" of luxury surrounding them in a way that differs from that of a trade mark having a reputation belonging to another industry. However, the proof that a trade mark not only has a reputation, but also has an "aura" of luxury, may be helpful in establishing the additional conditions that must be satisfied by the proprietor to stop third parties from using a similar mark, namely, the detriment to the repute or distinctiveness of the mark or the unfair advantage gained from its use.
There is no recognized test to prove that a trade mark has a reputation. This is assessed based on a number of concurring factors, and the trade mark proprietor should submit as much evidence as possible proving that the trade mark is well known by a substantial portion of the relevant public.
In particular, the following is usually very helpful, if not necessary, to prove reputation:
The purpose of the above is to provide a full picture of the intensity, geographical extent, and duration of use of the trade mark; as well as the scale of the investments made by the undertaking in promoting the trade mark, the market share, and so on (see CJEU, General Motors).
To the extent this is possible, facts should be proved by documentary evidence that must be as objective as possible. For example, a mere spreadsheet recapitulating sales is not relevant evidence, while the same spreadsheet accompanied by a declaration made by an external auditor that he/she has verified the accuracy of the spreadsheet is persuasive evidence. Oral testimony is best used to confirm the origin and content of documentary evidence, thus in case of doubt, the external auditor can be heard as a witness.
Affidavits (sworn declarations) have no greater evidentiary value than a simple declaration. Statements under oath can be usefully rendered only during testimony in court and not by way of affidavit.
Courts are willing to consider expert evidence even though they do not give it substantial evidentiary weight to prove the reputation of a trade mark.
Market surveys are often used to support a number of claims, from acquired distinctiveness of a trade mark, to the actual existence of confusion between two signs or, more often, to prove the share of the public who know the trade mark and associate it with a specific undertaking.
When resulting from the activity of one of the parties, survey evidence is given some value by the courts as long as the questionnaire appears to have been drafted in such a way as to avoid leading questions, and the survey has been carried out by a respectable, recognized entity. Such evidence may be held in higher regard if the party applies to the court to obtain an order for survey evidence and this survey is carried out by an expert appointed by the court. In general, however, Italian courts very rarely resort to survey evidence carried out by experts in trade mark disputes.
In case one of the parties produces a survey, the same shall provisionally bear the costs associated therewith, whereas these costs will normally be charged to the losing party at the end of the proceeding (though the court has some discretionary power in the allocation of costs). Although market surveys may have some impact in determining the outcome of the case, they are usually not considered the most relevant means of evidence. Further, there is no established threshold of recognition beyond which a trade mark is considered to have a reputation, so establishing that a certain percentage of the public knows a certain mark is not overwhelming evidence of reputation (CJEU, General Motors).
Once the proprietor has proved the reputation of the trade mark together with the detriment or unfair advantage, he can stop any use of an identical or similar mark made in the course of trade, that is, intended for any commercial purpose.
The above includes domain names, trade names, company names and other signs used in trade. The platform on which they are used is not relevant and may well include social media, as long as such use qualifies as commercial use.
Metatags pose a different range of problems. The traditional approach of Italian courts is that the use of a third party's mark as a metatag does not amount to trade mark infringement, but rather qualifies as unfair competition (Tribunal of Rome, 18 January 2001, Tribunal of Milan, 8 February 2002 and Tribunal of Naples, 28 January 2001).
More recent decisions have ruled that the use of trade marks as key words (metatags have technically become obsolete), may amount to trade mark infringement if the use is likely to confuse the public because of the manner in which it is made (Tribunal of Milan 26 February 2009 and Tribunal of Palermo, 7 June 2013).
The use of a trade mark in comparative advertising that may be detrimental to the reputation of the mark, takes unfair advantage of it, or creates a risk of confusion, amounts to trade mark infringement. The Tribunal of Milan held that presenting the compared product as identical, yet bearing a different mark, to the product of reference is an attempt to attract consumers thanks to the reputation of the competitor's mark and not by an objective comparison between the respective product characteristics (Tribunal of Milan, 27 June 2013).
The use of a trade mark in parody for the purpose of criticism, controversy or mere humour is a legitimate exercise of freedom of speech, as long as the use is not for commercial gain. On the contrary, if the parody is not the end result, but a mere means to convey a commercial message, then the use may amount to trade mark infringement. The circumstances that the original mark has been distorted for the purpose of parody may exclude confusion and therefore infringement. However, in the case of a trade mark having a reputation, the same is not only protected if there is a likelihood of confusion, but also if the use may be detrimental to the mark or may enable the user to draw an unfair advantage.
Lastly, under Italian law, trade mark infringement is a form of unfair competition and the two actions are often bought together before the same court.
The main Italian law regulating copyright is Law No. 633 of 22 April 1941 (known here as the Italian Copyright Law ('ICL')) on the protection of copyright and other rights related to its exercise, as supplemented and amended by a number of subsequent laws.
A few residual provisions concerning copyright are also contained in the Italian Civil Code (Articles 2575-2583).
In addition to the above mentioned national legislation, Italy is a member of the European Union and, therefore, it is influenced by Community legislation and, in particular, by a number of directives enacted in the copyright field and implemented in Italy.
In addition, Italy is party to a number of international treaties regarding copyright law, generally aimed at setting common rules and a minimum level of protection in the Member States. They include:
Court decisions are not sources of law in Italy, and they are not binding for future cases between different parties. However, they may have a persuasive effect on future decisions, especially if rendered by higher courts and if they form part of consistent jurisprudence. According to well established principles and the Italian Constitution, EU and international law prevail over national legislation.
Within national legislation, statutes and other sources having similar binding force (such as legislative decrees) prevail over secondary sources (such as executive regulations).
Finally, legislation prevails over case law.
According to Articles 1 and 2 of the ICL, copyright protects creative works belonging to literature, music, fine arts, architecture, theatre and cinematography, irrespective of their form of expression, as well as computer programs, databases and provided they have an artistic value - objects of industrial design.
The protection of objects of industrial design has been hotly debated in Italian courts over the past 15 years. The highly subjective character of the artistic value requirement has caused commentators and courts to issue diverging opinions. Recently, case law seems to have found a criterion to establish if an object of industrial design is copyrightable, namely, by ascertaining if the same has been recognized as a work of (applied) art in the relevant circles. Therefore, objects that have become part of permanent collection in museums or that have enjoyed the attention of art critics and, more generally, have been able to move through and transcend the time in which they were created, are usually recognized as having an artistic value (Tribunal of Milan, 13 September 2012). This approach however fails to take into account that the work is protected by copyright as of its creation and not when the public or museum curators perceive it as a noteworthy object of design. Courts have recognized this limitation and have stressed that the inclusion of the object in dispute in museum collections or in a temporary exhibition is a mere confirmation of its original artistic value (Tribunal of Milan, 9 January 2014).
It is disputed whether the list of copyrightable works provided in the ICL is closed or open, but the prevailing opinion is that it is open.
Italian copyright law covers both economic and moral rights.
Economic rights are the rights to make any type of use of the work such as, without limitation, the right of publication, reproduction, transcription, public performance, broadcasting, making available or otherwise communicating to the public, distribution, elaboration, translation, rental and loan. These rights may be assigned or licensed in whole or in part, or waived, and they have a limited duration of 70 years from the death of the author.
Moral rights consist in the author's right to:
All these rights are perpetual and may not be waived or assigned. The relatives of the author may, after his/her death, exercise the right of paternity and the right of integrity. These rights, however, are not acquired by the relatives mortis causa, but are a right of personality belonging to them in their unique capacity as relatives that may not coincide with the rights of heirs.
Finally, the ICL also provides for specific and limited economic rights that is, related rights - concerning specific kinds of works that are granted to certain categories of beneficiaries, such as phonogram producers, producers of cinematographic or audiovisual works, radio or TV broadcasting companies, performers, authors of 'simple photographs' (photos that are not creative enough to be considered works of art), and makers of non-creative databases.
Individuals create artworks, either alone or in a group. The general rule prescribes that the author of the artwork is also the owner of all economic rights, but the rules suffer from an important exception. The copyright in works created by employees in the performance of a employment contract belong to the employers. On the contrary, works created by consultants or suppliers belong to them, unless the agreement stipulates otherwise or they have been created under the direction and for use by the principal, in which case the principal acquires the right to use the work for which it paid. However, such right does not include the right to license third parties or to make copies of the work for use by third parties.
The position of directors of a company may pose a delicate problem if the work has been created in the performance of the director's duties using the company's resources. In this case, it seems that the copyright should belong to the company. This approach cannot be applied to shareholders who have no duties vis-à-vis the company.
The contract by which copyright is assigned in whole or in part or is licensed must be proved in writing (Article 110 ICL) and not by way of testimony. Pure oral agreements are, therefore, valid, but unenforceable in the event one party denies their existence. As a consequence it is a sound precaution to specifically regulate the assignment of copyright in writing within the frame of commercial agreements the performance of which may lead to the creation of copyrightable works. Such assignment must be drafted bearing in mind that the law, in order to protect the author, provides that the contract by which an author agrees to assign the copyright in all his future works or in all categories of work is null and void if the author's obligations are not limited to a specific period of time.
The creation of the work is the only necessary requisite for obtaining a valid copyright. While authors can obtain a notice of copyright by registering a variety of works with the SIAE (the main Italian collecting society), registration is not necessary for the right to come into existence. The use of the copyright notice has no legal value and failing to affix it has no consequence.
In the absence of a registration system that provides a presumption of ownership, copyright enforcement requires producing evidence that the work was created by the party that is seeking enforcement or, in the event the enforcing party is not the author, proof of acquisition from the original author. Evidence other than proof of assignment can be given by any means, including testimony. A general rule regularly applied by Italian courts, however, is that if a party has been making public use of the copyright in a certain work for a long time without having been challenged, it is presumed that that party is the owner of the copyright, until evidence to the contrary is produced by the opponent. In other words, proof of sustained public copyright use is proof of ownership.
The proof of the artistic value of an object of industrial design can also be given by any means, including testimony and expert evidence.
To succeed in an infringement action is not necessary to prove actual copying or the intention to copy. It is sufficient to prove that essential elements of the original work have been reproduced, in whole or in part, in the copy. Case law often holds that infringement occurs when the original work can be 'read' in the subsequent version.
While the law does not expressly mention the intention to copy as a requirement for establishing infringement, the knowledge deriving from access to the original work is relevant for the assessment of damages, as no damages can be awarded where infringement was not wilful or, at least, negligent.
Copyright can be enforced against any subsequent rights, including trade marks, designs, patents and other IP rights. Since names (including names of fictional characters) are rarely protected, pseudonyms are unlikely to infringe an earlier copyright.
Differently from trade marks (that are protected against uses in the course of trade), with the exclusion of very narrow, specific cases, copyright is also protected when the alleged infringer is not making a commercial use of it.
Under Italian law, there are no general defences or exceptions based on fair use or fair dealing. The defendant may only rely on the specific exceptions provided by the ICL. The main exceptions are the following:
The use of a copyrighted work for the purpose of parody has been the subject of frequent dispute in Italy. Art. 5.2(k) of Directive 2001/29 provides that Member States may provide exceptions to the right of reproduction in the case of "use for the purpose of caricature, parody or pastiche". As a rule, a parody of a copyrighted work does not infringe the original work if it satisfies the essential characteristics for a parody. Namely, "first, to evoke an existing work, while being noticeably different from it, and secondly, to constitute an expression of humour or mockery" (CJUE, Vandersteen, 3 September 2014, C-201/13, Tribunal of Venice, 7 November 2015).
Although there is no statute of limitation to bring an action for copyright infringement, the claim for damages must be commenced no later than 5 years from the last act of infringement.
Also, importantly, an action for copyright infringement can be combined with other types of actions, such as design infringement and unfair competition. All these actions can be brought before the same court and decided together.
Italian designs are governed by the provisions contained in the CIP implemented in accordance with Directive 1998/71.
Community designs are governed by the Community Regulation 2002/6 of 12 December 2001 (hereafter 'ECR').
In addition, Italy is a party to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.
Court decisions are not sources of law in Italy, since they are not binding for future cases between different parties. However, they may have a persuasive effect on future decisions, especially if rendered by higher courts and if they form part of consistent case law. According to well-established principles and the Italian Constitution, EU and international law prevails over national legislation.
Italian design rights can only be obtained by way of registration with the Italian Patent and Trade Mark Office (UIBM), while Community designs may either be registered at the Office for Harmonization in the Internal Market (OHIM) or unregistered, the latter being subject to a different set of rules.
The object of protection of design rights is the appearance of the whole or a part of a product resulting from the features of the product or parts thereof, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
Italian and Community law defines the product as "any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs".
Therefore, designs protect a very wide variety of features except for those features that, in the case of components, are not visible during normal use and those that are solely dictated by their function.
Appearances of products that are contrary to public policy or morality are not eligible for protection.
In order to benefit from design protection, the design must satisfy two separate requirements:
The maximum duration of the protection for registered designs is 25 years whereas the protection for unregistered design is granted for 3 years after the first disclosure of the design within the European Union.
The owner of the design is the registrant or the person under whose name the unregistered design was disclosed.
It is however important to remember that registered/unregistered designs are potentially eligible for copyright protection, in which case, since the rules governing ownership are not the same, the owner of the copyright, which almost unavoidably pre-dates the design, can seek a declaration of invalidity of the design. This situation can be avoided by securing the assignment of the copyrights from the author (independent designer, design agency, and so on) by way of a written agreement.
The assignment of design rights does not need to satisfy specific formalities. However, the rule to apply in order to resolve conflicts among concurring assignees is that the first to record the assignment prevails over all other assignees, even if another assignee was the first to acquire the right. Recordation of the assignment is not necessary for its validity, but highly recommended.
Designers enjoy very narrow moral rights in relation to their creations. They are entitled to be recognised as the authors of the design in the register but cannot object to any modification or alteration of the design. As usual, this very limited moral right cannot be waived.
The scope of protection of design rights encompasses all identical designs as well as those that do not produce a different overall impression on the informed user. Unregistered Community designs enjoy the same scope of protection, but only in respect of designs that have been made with the intention to copy the protected design. A number of factors, including prior knowledge of the design, degree of similarity, and so on, are taken in account in order to establish if the similarity is the result of copying or coincidence.
Registered and unregistered designs are protected against any unauthorized uses by third parties, such as the making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or storing such product for these purposes.
The design proprietor is entitled to enforce its rights against any kind of infringement, including infringement arising from use of the design in trade marks, registered designs, patents, domain names, trade names, pseudonyms or other distinctive signs or IP rights, even though a lot of these instances appear to be merely theoretical.
Like copyright, there are some limited uses that do not fall within the scope of protection:
The most common defence to a claim for infringement is to challenge the validity or ownership of the design right and/or to argue that the litigious design does not produce a similar overall impression on the informed user or that the design invoked is actually closer to the prior art than to the alleged infringing product. In relation to an action for damages, the usual 5-year statute of limitation would also apply.
Finally, Article 8.2 ECR for Community design and Article 241 of the CIP for Italian designs provides that a component used for the purpose of the repair of a complex product is excluded from the scope of protection of design.
Actions for design infringement can be combined with both copyright infringement and unfair competition before the same court.
Product placement is regulated by two separate legislative instruments, namely Ministerial Decree 30 July 2004 concerning product placement in movies and Legislative Decree No. 44/2010 for TV programmes.
Product placement in films is permitted if the placement is obvious, sincere and correct and coherent with the context of the story. Also, it is necessary that all product placement be listed in the credits at the end of the film.
Product placement is also permitted in TV programmes if the presence of promotions within the programme is announced at the beginning of the programme and after each advertisement interruption, and it is listed in the end credits.
Finally, all products that are subject to an advertising ban, such as tobacco products, cannot be objects of product placement. In addition, Article 10 of Legislative Decree No. 44/2010 also prohibits the product placement of medicines in accordance with Directive 2007/65 and imposes limits on the placement of alcoholic beverages.
There are no specific remedies in the event a products placement contract is breached, but an injured brand owner is entitled to seek compensation for the damages suffered and the termination of the agreement.
Legal entities are also entitled to the protection of their image and reputation that may be damaged by third parties with an emphasis on the economic damages that may be suffered (legal entities are not capable of suffering psychological or biological damages). Having said that, the rules that apply to individuals cannot be applied to legal persons.
The name of a legal entity is a distinctive sign of the entity and as such is protected against the risk of confusion. In addition, if the company has acquired a reputation, any use in the trade of its name that may be detrimental to it can be prohibited.
The contractual protection of the image and reputation of a company is possible, but the provisions aiming at protecting it should be checked for potential violation of competition rules.
In particular, the Block Exemption (Commission Regulation (EU) No. 330/2010 of 20 April 2010), with respect to vertical agreements, allows selective distribution systems provided that the specific requirements in the Block Exemption are met and that the market share does not exceed 30 per cent.
On this basis, a restriction on the sale of products to certain re-sellers (that are not part of the selective distribution system) may be acceptable under the Block Exemption, and if these requirements are met, such prohibition on such sales may be allowed.
On the contrary, a restriction preventing selling below a certain price or outside of specific time periods in an agreement would be considered a "hardcore restriction" that can never be exempted under either the Block Exemption regulation or under Italian competition law.
Liquidated damages are generally permissible under Italian law. However, the amount of liquidated damages must be proportionate to the breach, otherwise the court has the right to reduce the amount provided in the contractual clause.
The breach of the clauses protecting the corporate image or reputation would generally be considered a legitimate ground for application of liquidated damages.
Private individuals are entitled to control the use of their name, image and other aspects of their identity in accordance with Articles 6 - 10 of the Italian Civil Code and Articles 96 98 ICL whether for commercial use or for any other purpose that is not permitted by the law. In addition, the relatives of said person have a more limited right to prevent the use of the person's name and image. More specifically, they may prevent the use of the name for family reasons that deserve protection and the use of the image that may be detrimental to the respectability and reputation of that person or of his/her relatives. Said relatives' rights survive the passing of the person whose name or image is used.
Any individual is entitled to the right to their own name, likeness and personal identity. These rights, which include the right of publicity, that is, the right to make a commercial use of one's name, are identified as rights of personality and they cease with the passing of the individual. Relatives may have some residual separate right that, however, belongs to them as relatives and not as successors.
Traditionally, personality rights could not be assigned or licensed. However, while this is still true for certain rights, like the right to one's physical integrity, the commercial use of one's name or image - the right of publicity - has become a frequent object of commercial transactions and it is well accepted that the same can be licensed, on an exclusive or non-exclusive basis, although not assigned.
There are no specific formalities required for the validity of a license concerning the right of publicity, however, concluding an oral license makes no commercial sense, although there have been instances where the agreement has been considered to have been concluded by implied consent demonstrated by positive conduct (later regretted). The law on the protection of personal data may however change this approach since it states that consent must be always express.
Although they may appear to be reasonably simple agreements, drafting a license, regarding the use of a celebrity name or image over a relatively long period of time requires a number of considerations. First, the obligations that are imposed on the licensor in terms of his/her behaviour in relation to the licensee's products and business, in general, must be clearly identified. The goodwill attached to a specific celebrity may well turn into a liability should the celebrity behave in a way that is damaging to the licensee and its business and this should be a cause for termination of the license upon notice given by the licensee.
Similar precautions should be taken by the licensor in the event the licensee is involved in practices that are contrary to the licensor's beliefs or ethical principles or, more generally, are incompatible with the way the licensor is perceived by the public. In all of these cases, the licensor should be entitled to withdraw his/her consent to the use of the name and image.
Under Italian law, the passing of the licensor extinguishes the right of publicity. In theory, the licensee could continue using the name and image of the licensor without his consent and without paying his/her successors any consideration. Therefore, these contracts usually provide that upon the passing of the licensor the licensee cannot continue using the now exhausted - right of publicity unless it obtains the consent of the relatives. A preferred approach, however, is to register the name and image of the licensor as a trade mark that, differently from the right of publicity, can be transferred mortis causa.
In this case, after the death of the licensor, the relatives could theoretically object to the use of the name or image of the deceased person. However, it seems difficult to argue that such use is detrimental to the respectability of the deceased since he/she had previously consented to it.
As an exception to the other personality rights, Italian courts have recognised since the early 1980s that, in addition to the licensor, an exclusive licensee also has standing to sue for a violation of the right of publicity.
The right of publicity can be enforced against any unauthorised use, whether for commercial purposes or not and the typical remedy is an injunction. However, the commercial value of the image or name has an impact on the assessment of damages.
The commercial value can be proved by any means. The most obvious manner is to produce a copy of the license agreement showing that other parties were willing to pay consideration for the use of that individual right of publicity. The fame or celebrity of the individual will generally create the presumption that the right of publicity of that person has a commercial value.
The main defence used to seek the dismissal of a claim for violation of the right of publicity is to argue that the image:
The case law has made clear that the information purpose must be the prevailing purpose of the use and not a mere excuse to make a commercial use of the person in question.