ENI’s Trademark is refused grant of Protection in class 25 of the Nice Classification.

In 2011 Eni S.p.A. (ENI) asked the European Court of Justice to overturn a decision of OHIM  by which it was declared that there was likelihood of confusion between the trademark EMI owned by Emi Ltd.  and the registration made by ENI for products and services in Class 25 of the Nice classification system (clothing, footwear and headgear).

By decision of 8 September 2011, the OHIM dismissed the appeal lodged by ENI believing that there was an existence of a likelihood of confusion due to the similarity of the goods covered by the mark applied for, namely clothing, as well as the visual and phonetic similarity of the signs.

The EU General Court, in its judgment of 21 May 2014 ( T-599/11 ), in dismissing the action, considered the correct decision of the OHIM Board of Appeal, which concluded for the similarity of the goods and services in question and likeliness of confusion.

The Court of Torino Confirms the trend on YouTube's Responsibility for Copyright Infringement

The Specialized Section of the Court of Torino, by order dated May 5, 2014 , dismissed the claim filed by Delta TV aimed at obtaining an injunction against Google and YouTube.

The case concerns a number of episodes of South American soap operas illegally uploaded on YouTube, which, thanks to the close ties between Google and YouTube, were among the first results which came out on the well-known search engine.

Delta TV has therefore sued Google and YouTube for copyright infringement of a claim of more than EUR 13 million and an injunction to remove all the realted videos from YouTube.

The Court of Torino has rejected Delta Tv’s claims on the basis of Articles 16 and 17 of Legislative Decree no. n . 70/2003 and by recalling case law of the Court of Justice of the European Union (in particular , the SABAM / Scarlett judgment of 24 November 2011 ) , stating that an ISP has no obligation to determine in advance whether the content uploaded by users infringe the legitimate rights of third parties and shall be liable only if, at the time it becomes aware of such infringement, it does not act expeditiously to remove or disable access to illegal content.

Copyright. After 25 years Italy is cancelled from the U.S. blacklist contained in “Special 301 Report”.

The Minister of Economic Development, Federica Guidi, announced today with satisfaction that Italy does not any longer appear in the contents of the 301 Report, the annual document of the Office of the United States Trade Representative. This means that Italy, after 25 years, leaves the infringers’ US black list.
Minister Guidi stated that this as an important result which demonstrates the government's commitment in fighting digital piracy that plagues the world of the Internet and of which Italy is one of the first victims. The new regulations of the Communication Authority, entered into force on March 31, 2014 contributed to this result improving an image of efficiency and in promoting, among other things, the potential of our exports to the United States.
Among the positive notes contained in the aforementioned report is the implementation of the enforcement mechanism created by AGCOM , while it is known that the control of peer- to-peer network is still insufficient and that the delays of the courts in judgments on disputes relating to intellectual property last still too long.

Italian Supreme Court: Defamation is badmouthing on Facebook even without naming the person.

The Supreme Court overturned a decision by the Court of Appeal which acquitted a police inspector who had insulted a colleague on his facebook page without naming him.

According to the Supreme Court "For the purpose of integration of defamation it is sufficient that the person whose reputation is injured is identified by a limited number of people , regardless of the indication of the name ."

The Supreme Court Judges observed that: "The crime of defamation does not require specific intent. Instead, it is sufficient for the existence of the subjective awareness (i) the willing of damaging another's reputation and (ii) that the insult will know by at least two persons."

SKY TV sentenced to pay fair compensation to authors

The Court of Milan reaffirms the legitimacy of fair compensation pursuant to art. 46a of the Law on copyright.In the summer of 2012 Sky Television, objected the unconstitutionality of Article 46a of the Law on Copyright refusing to pay fair compensation to the authors of films broadcasted on digital channels, satellite and on the web.

Sky asked the Court to find that the payment of fair compensation could not be determined by means of the mechanisms of collective bargaining and arbitration provided by "art. 46a co. 4 of the Law on copyright, but should be determined on the basis of mechanisms of individual negotiation, pleading the unconstitutionality of the article to a misuse of power by the legislature.

The Milan Court, in its judgment of 03.01.2014, has stated negatively in reaffirming the legitimacy of Article disputed.

FAQ on Italian Trademarks. Part 2

3. Registration 

3.1 What happens when a trade mark is granted registration?
When a trademark is granted the owner can request a paper certificate. The burden of proof on the validity of the sign will be on the side of the alleged infringing company, but on the other side, the trademark should be used within 5 years or will expire.

3.2 From which date following application do an applicant’s trade mark rights commence?
From the day of application, such right can be enforced, but in this case the burden of proof of the validity falls on the owner.

3.3. What is the term of a trade mark?
The term of the trademark is ten years, after which it can be renewed.

3.4 How is a trade mark renewed?
Renewal of a trademark should be requested within 6 months prior to the term and the owner must pay taxes for renewal must be paid prior the application. A late renewal request can be files in the following 6 months, but the applicant will incur in additional taxes.

4. Relative Grounds for Refusal 

4.1 What are the relative grounds for refusal of registration?

Generally, relative grounds for refusal are circumstances such as: signs affecting third party rights or signs consisting of third party names or other identification means or similar to a commercial name; signs identical to or similar to signs already known as a trademark; trademarks notoriously known to the public pursuant to Article 6 bis of the Paris Union Convention for Industrial Property, (as revised in Stockholm on July 14 1967, ratified by Law No. 424 of April 28, 1976).

4.2 Are there ways to overcome a relative grounds objection?

The possible opposition can be overturned by filing written observations or through negotiation and also limiting the appropriate scope of protection of the trademark or classes of products or services, which were indicated in the application. 

5. Opposition

5.1 On what grounds can a trade mark be opposed?

Oppositions may be based either on the absolute grounds for refusal or relative grounds for refusal. They may also be based on unfair competition acts or in case there is no consent by the persons who have the right to the portrait or the family name, requested by art. 8 of the I.P. Code.

5.2 Who can oppose the registration of an Italian trade mark?

Registration can be opposed by the holder of an earlier registered trademark, the earlier applicant for a trademark, the exclusive licensee and the persons who have a right on a similar trademark. 

5.3 What is the procedure for opposition?

Oppositions can be filed within three months since the publication of the trademark on the Official Bulletin. Two months prior to this term, UIBM communicates the existence of the opposition to the applicant and gives the parties a term to file their observations. The opposition is then decided by examiners who did not take part in the examination of the opposed trademark. Against such decision, a party can bring an appeal before the "Commissione Ricorsi", whose decision can be appealed before the Supreme Court only for violation of law or contradictory decision.

FAQ on Italian Trademarks. Part 1

1 Relevant Authorities and Legislation

1.1 What is the relevant Italian trademark authority? 
The Italian trademark Authority is the "Ufficio Italiano Marchi e Brevetti" (UIBM) which is part of a Department of the Ministry of Economic Development.

1.2 What is the relevant Italian trademark legislation?
The trademark legislation is contained in the Industrial Property Code (hereinafter the “I.P. Code”) adopted by the Italian government with Decree n. 30 of February 10, 2005, as well as the civil code.

2 Application for a Trade Mark

2.1 What can be registered as a trade mark?
As stated in art. 7 of I.P. Code: “Any sign capable of being represented graphically, in particular words, including personal names, designs, letters, figures, sounds, the shapes of goods or their packaging, the combinations of chromatic shades may be registered as a trademark, provided that such signs are capable of distinguishing goods or services of a company from those of other companies”.

2.2 What cannot be registered as a trade mark?
Signs which cannot be described graphically cannot be registered. In addition, trademarks which are contrary to the law, the public order, and the morality cannot be registered. Flags and other signs used to identify Countries cannot be registered as well.

2.3 What information is needed to register a trade mark?
The applicant should provide: name and address; his elected domicile (mandatory for non-residents); the description of the sign with indication of the color (if any). In case of a color trademark, the color shade with reference to an official internationally recognized colour chart as Rahl or Pantone; a picture of the sign (if the trademark is bi-dimensional or tri-dimensional); the indication of the Nice class and the indication of the products or services to be protected; the  indication of priority, if claimed; evidence of payment of taxes; and a power of Attorney, when the service is rendered by a trademark attorney.

2.4 What is the general procedure for trade mark registration?
Trademarks can be registered by filing a paper application at the Chamber of Commerce or online at www.uibm.gov.it.

2.5 How can a trade mark be adequately graphically represented?
A trademark can be adequately represented by any graphic means such as words, figures, numbers, symbols, monograms, chemical formulas, or any other way of representation, including musical notes.

2.6 How are goods and services described?
When applying for a trademark registration, goods should be described according to the Nice classification system. The applicant should indicate whether the application is for single products or services, or whether the protection is requested for one or more entire classes of the Nice classification.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by an Italian trade mark?
Trademark applications made at the UIBM cover both the Italy and San Marino.

2.8 Who can own an Italian trade mark?
Trademarks can be owned by physical or juridical persons, governmental institutions, charity companies (Onlus) or non-profit associations.

2.9 Can a trade mark acquire distinctive character through use?
According to art. 13.2 of the I.P. Code a trademark can acquire distinctive character through use and can be therefore registered. According to 13.3 of the I.P. Code distinctive character can be acquired even after the trademark has been requested or granted. In such a case the trademark is considered valid and cannot be declared void.

2.10 How long on average does registration take?
UIBM usually registers the trademark within 6-12 months since the application is filed.

2.11 What is the average cost of obtaining an Italian trade mark?
The average cost for obtaining a trademark for one class is around EUR 500.00 (fivehundred), of which EUR 157.00 is for taxes.

2.12 Is there more than one route to obtaining a registration in Italy?
Applicants can obtain a registration in Italy by filing an application at the UIBM; by filing an OMPI application and indicating Italy as a designated State; or by filing a Community Trademark which provides protection also in Italy.

2.13 Is a Power of Attorney needed?
A simple Power of Attorney is required for all applications made through a trademark attorney.

2.14 How is priority claimed?
Priority can be claimed in the trademark application by indicating the date and number of the registration of which the priority is claimed. Evidence of the priority right should be provided.

2.15 Does Italy recognize Collective or Certification marks?
Both collective and certification trademarks are recognized by the UIBM.