Question:

In Italy the penal enforcement of the intellectual property rights is regulated by both the Penal Code and the Code of the industrial property (art. 127).

In particular, art. 473 and sub. of the Penal Code identify the counterfeiting of designs as an offence to the public faith. In Title VIII, Chapter II of the Penal Code (art. 517, third comma) the legislator recognised as criminal offences the manufacturing and marketing of goods produced by illegally exploiting intellectual property assets owned by others.

Criminal penalties, imprisonment and / or fines might be imposed when the offence is performed by the counterfeiter in order to gain economical or other profit.

The consultancy offered:

At the beginning of 2017, a well known Italian apparel and footwear fashion company, with more than 1,000 single-brand stores and thousands of multi-brand stores in over 100 countries worldwide, has urgently requested our assistance in protecting its industrial property rights.

Based on the photographs of the goods exhibited by the alleged counterfeiter at the trade fair, taken by the company employees, the attorneys of BIESSE have drafted a technical-legal opinion confirming the interference between the registered design and the products exhibited at the trade fair.

The lawyers of the fashion company have promptly reported an ongoing counterfeiting to the Italian authorities in charge for the financial crimes (Guardia di Finanza), and called for immediate inhibitory action, supporting their claims with the technical-legal opinion drafted by the attorneys of BIESSE.

The patent attorneys of BIESSE have supported the client’s claims before the relevant authorities, which have ordered the immediate seizure of the alleged counterfeit goods exhibited at the trade fair. As the trade fair only lasted a few days, all technical and legal assessments and necessary actions were performed with extreme urgency, overnight, in order to fit into a tight timing scheme.

The attorneys of BIESSE have collected the call for action from the client company in the afternoon of the day before the seizure of the counterfeit goods should have been performed. In the early morning hours on the next day, the patent attorneys of BIESSE were submitting the complete and thoroughly drafted technical and legal documentation before the relevant authorities located in a different region from our office.