Infringement Proceedings

The complexity of the matters examined by judges frequently leads them to appoint a court-appointed technical expert (CTU). The role of the CTU is performed by a technical expert in patent matters who must assess the validity of the patent, where it is challenged by the alleged infringer (as often occurs), and the actual reproduction of the protected features of the patent in the product examined. The parties to the proceedings in turn retain party technical experts (CTP) who, on the basis of the expert question formulated by the judge, prepare the defence briefs.

The Industrial Property Code (CPI) provides that the owner of a patent application, ornamental design (design) application, or trade mark registration application may take legal action against any infringement, namely against the manufacture, marketing, import, or export of:

• i) products incorporating a device identical or equivalent to that covered by their patent or patent application;
• ii) products with an appearance identical or very similar to that covered by the ornamental design registration;
• iii) products and/or services and/or activities bearing marks, logos, or names identical or confusingly similar to their own mark, used in the same sector.

Conversely, a party who considers itself obstructed in its activity, potentially or in fact (for example following a cease-and-desist letter or a writ for infringement), may request that the court declare the absence of infringement and/or seek the invalidity of competitors' patents, ornamental designs, or trade marks. Usually, in response to a writ or an interim application, the alleged infringer enters an appearance denying infringement and counterclaiming for the invalidity of the industrial property title invoked against them.

When referring to an infringement action, one is generally referring to a response to the unauthorised use of industrial property rights. Infringement actions may in particular comprise declaratory actions, injunctive actions, description orders, seizures, damages claims, etc. An infringement action may be brought by the owner of an industrial right (owner of a patent, trade mark, design, utility model, know-how, etc., or the relevant application) or by the licensee.

Infringement actions may encompass both ordinary substantive actions and urgent interim measures.

An application for a declaration of infringement may seek:

• immediate cessation of the unlawful conduct;
• a damages award, calculated primarily on the infringer's profit;
• reimbursement of litigation costs;
• the fixing of a penalty for any future infringements, should the infringer dare to continue their conduct;
• seizure and/or destruction of the infringing products;
• an order to withdraw from the market, and publication of the order in newspapers and trade publications.

Depending on the case and specific circumstances, the application may be filed by way of ordinary proceedings, by serving a writ, or by way of urgent interim proceedings, by filing an application.

By way of interim proceedings it is possible to apply (see Articles 129–131 CPI) for a "description" order covering objects, machinery, industrial processes and procedures, and accounting records, i.e. an order that allows the collection of technical, factual, documentary, and accounting evidence, in preparation for the subsequent substantive action.

Interim measures allow the owner of a patent (or a design, trade mark, etc.) to request the court to order:

• a judicial description: the court may authorise the court officer and the court-appointed technical expert (CTU) to describe objects or industrial processes allegedly infringing the patent at the manufacturer's premises or elsewhere; at the description, as also in the case of seizure, the parties' technical experts and legal consultants may be present; the description must be filed by the court officer with the Court Registry and will constitute evidence in the subsequent proceedings;
• seizure of the infringing products;
• an injunction against the manufacture and sale of counterfeit products;
• an order to withdraw counterfeit products from the market;
• publication of the order in newspapers or trade publications;
• acquisition of technical and accounting documentation relating to the alleged patent infringement activity.

In ordinary proceedings, the owner of the infringed patent (or trade mark, ornamental design, etc.) asks the court to:

• declare the existence of the infringement;
• order the infringer to cease the infringement (injunction);
• order the infringer to pay compensation for all damages suffered and to destroy all infringing products, and also possibly to publish the judgment or part thereof in one or more newspapers or trade publications.

The territorially competent court is the one where the infringer is based or where the infringement occurred. Other alternatives are possible depending on the circumstances. Together with the infringement action, an unfair competition action (related proceedings) and a damages claim may also be brought. Infringement actions may be brought before the Specialised Sections of the courts for business matters, present at the Courts of Appeal of the main city of each Italian Region (in Lombardy there are two: in Brescia and in Milan, while Valle d'Aosta comes under the Piedmont section).

It is evident that initiating proceedings or entering an appearance must be preceded by thorough technical assessments and legal considerations, in order to identify the best strategy to adopt.

As a rule, when the validity and infringement of patents and designs are in dispute, the Judge appoints a Court-Appointed Technical Expert (CTU), usually a registered patent attorney, to whom the Judge delegates the technical investigations of the case. These are set out in writing in an expert report known as a CTU opinion. The outcome of the CTU opinion frequently determines the outcome of the dispute.

An unregistered trade mark (also known as a common law trade mark) is protected in Italy on the basis of actual use and reputation, primarily through Article 2571 of the Civil Code. The protection is essentially determined by the extent of use:

- if use has given the mark a "reputation that is not purely local", it is possible to invalidate the registration of a subsequent identical or very similar mark for identical or very similar goods or services;

- if use is purely local, the owner may continue to use the mark notwithstanding the registration by another party, but only in the geographical area and for the specific goods and services for which prior use was made, and in the same manner. They must also tolerate the use and registration of the subsequent mark.

In legal proceedings, owners of unregistered trade marks are required to provide evidence of use of the mark and of any reputation acquired over the years. "Legal" proof of reputation is not straightforward, and it is therefore always advisable to register one's trade mark.