The infringement of Trademarks through Adwords. Court of Milan, April 23, 2013.

A company can not lawfully make use of another's trade mark, without authorization, to engage through search engines  on their sites.

The services offered by Google (Ad Words) do not exclude the obligation of the advertiser to comply with the industrial property rights.

The risk of confusion in the market about the origin of the services constituted grounds for trade mark infringement even when you use not allowed by the owner, a word corresponding to the trade mark to open a sponsored link

The unlawful use of a word corresponding to the trade mark to open a sponsored link constitute an infringement under Article 21 of the Italian IP Code  and creates a likelihood of confusion in the market with respect to the origin of the service.

In this case, the court stated that the use of a sign identical with the mark part of the defendant, which launches as a keyword to show a related advertisement, was such as to corroborate the existence of a material link in trade between the services concerned and the trade mark proprietor, could lead to error in the origin of the products 'Internet user.

Court of Milan 23/04/2013.

Italy: New Rules for Copyright Protection Over the Internet.

From the end of March 2014, copyright holders will be able to get infringing material steadily removed from the internet within 35 days from filing the request. Italy’s new AGCOM regulation will soon introduce a fast track procedure to assess and deal quickly with copyright infringement over the world wide web.

The new regulation on the protection of copyright on electronic communications networks and implementing procedures regulation (Legislative Decree 9 April 2003, No. 70) was adopted on December 12, 2013 and defines and regulates the activities of the Italian Anti-Trust Authority (a.k.a. AGCOM) with respect to copyright protection over the internet. The regulation will come into force on March 31, 2014.

According to the regulation, any copyright owner or licensee of on audio, audio-visual, photographic, videogame, editorial and literary works and software can file a request with the AGCOM for the removal from the internet of a work infringing that copyright. The AGCOM must then decide on the admissibility of the request within seven days from receipt.

If the request is considered admissible, the AGCOM will inform the provider of the beginning of the procedure and, if possible, the uploader and webmaster of the web page or site. The AGCOM’s communication to the provider shall identify the the works and provisions allegedly infringed, as well as a brief summary of facts and assessments carried out.

Any decision on the merits for removal like a temporary restraining order  to protect the infringed right must occur within 35 days from the filing of the request. If the infringement is ascertained, the AGCOM must order the offending party to remove any infringing item or restrict access to the web site in the case of multiple infringements. If the website is hosted abroad, the AGCOM can order the provider to disable access.

It must be noted that the procedure may not be requested where legal action has already been taken for the same infringement in from of the Courts, and that the regulation does not apply to final users and in case of direct software sharing among final users.