19th ANNUAL CONFERENCE FORDHAM INTELLECTUAL PROPERTY LAW INSTITUTE Fordham University School of Law Thurday and Friday, April 28-29, 2011 Hugh C, Hansen.

19th ANNUAL CONFERENCE FORDHAM INTELLECTUAL PROPERTY LAW INSTITUTE

Fordham University School of LawThurday and Friday, April 28-29, 2011

Hugh C, HansenDirector

 SPECIALIZED TRADEMARK COURTS –

THE ITALIAN EXPERIENCE 

Marina Tavassi – President of IP Specialised Court of Milan, Italy

19th ANNUAL CONFERENCE FORDHAM INTELLECTUAL PROPERTY LAW INSTITUTE

Fordham University School of LawThurday and Friday, April 28-29, 2011

Hugh C, HansenDirector

 SPECIALIZED TRADEMARK COURTS –

THE ITALIAN EXPERIENCE 

Marina Tavassi – President of IP Specialised Court of Milan, Italy

Marina TavassiMarina TavassiIntellectual Property Specialized Court of MilanIntellectual Property Specialized Court of Milan

Protection of Intellectual Property Rights Protection of Intellectual Property Rights

before the Italian Specialized Courtsbefore the Italian Specialized Courts

How it worksHow 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)

Trieste

Venezia

Bologna

Roma

Bari

Catania

(no court in Sardinia)

Milano

Torino

Genova

Firenze

Napoli

Palermo

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

BREVETTI15%

MARCHI42%

DISEGNI13%

CONCORRENZA14%

AUTORE16%

BREVETTI

MARCHI

DISEGNI

CONCORRENZA

AUTORE

Copyright 16% Patents 15%Patents 15%

Designs - Models 13%

Trademarks 42%

Unfair competition 14% patents

trademarksdesignsunfair competitioncopyrights

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

COMUNITARI37%

INTERNAZIONALI34%

EUROPEI29%

COMUNITARI

INTERNAZIONALI

EUROPEI

Italian 37%European 29%

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)

BARI3%

BOLOGNA9%

CATANIA3%

FIRENZE5%

GENOVA2%

MILANO26%

NAPOLI12%

PALERMO0%

ROMA18%

TORINO15%

TRIESTE0%

VENEZIA7%Trieste 0,5 %

Venice 7 % Bari 4 %Bologna 8 %

Turin 12 %

Rome 22%

Palermo 0,5 %Naples 10 %

Trieste 0,5 %

Florence 5 %

Genoa 2 %

Milan 26 %

Catania 3 %

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

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, without replacing the

judge’s evaluation

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

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

Precautionary measures of the Italian civil procedure code

General atypical measures (Article

700 c.p.c.

Order of facere

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

Precautionary measures of the Intellectual Property Code

IP Rights : Patents, Trademarks, other distinctive signs, geographical indications, designation of origin, designs and models, utility models, new plants varieties, topographies of semiconductor products, know how, biotechnologies.

This measures may be issued even while the registration or patenting is still pending (art. 132 I.P. Code)

Description (art.130 I.P.Code)Protection of confidential

information

Seizure (art.130 I.P.Code): - items infringing the right - means to manufacture them - evidence Protection of confidential information

Injunction (art.131 I.P. Code)

Provisional protection of domain names art.133 I.P.Code

Provisional seizure (against piracy ex art. 144-bis)Marina Tavassi

Article 125 IP CodeDAMAGES

• 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 Courtshave 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