The new Italian Industrial Property Code: the main innovations

12 May 2005

Rahul Kakkar, Marilina Palmiotto

The pressing need for a uniform Code collating the different laws regulating IP matters, particularly those heard from 1990 onwards, has now been comprehensively satisfied.

On 19 March 2005, the Legislative Decree of 10 February 2005, no. 273, entered into force and introduces the "Italian Industrial Property Code". The dispositions concerning the proceedings will begin to operate within six months of the Legislative Decree coming into force.

The Code is composed of 245 articles and repeals 39 laws that were in force before its implementation.

The Code aims at simplifying and rationalising the entire discipline of Industrial Property rights. This "reformation process" has introduced substantial innovation in this field.

The most important outcome of the Code concerns the IP proceedings rules.

The Code confirmed the jurisdiction of the twelve ad hoc Courts (established according to the Legislative Decree no. 168/2003) in charge of IP disputes.

According to article 134 of the Code, these Courts have exclusive jurisdiction over IP litigation. They have the power to deal with disputes regarding national, international and Community trade marks, as well as patents and new plant varieties, utility models, designs and copyright, and unfair competition when "interfering with the protection of industrial and intellectual property".

Another important innovation set forth under the Code concerns the application to IP proceedings of the new procedural provisions governing the corporate proceedings introduced in 2003/2004.

These provisions have a significant bearing on the ordinary procedure under the Code of Civil Procedure. The "new procedure", in general terms, is characterised by a preliminary and direct exchange of information between the parties without their filing before a court. Only when one of the parties requests judicial intervention will a hearing be scheduled and a judge designated. This new procedure is characterised by the "privatisation" of the pre-trial phase by referring the case to the judge only when it is ready for evidence collection and decision.

Further innovations introduced by the Code concern the delicate issue of restorative damages.

Article 125 of the Code explicitly provides not only for the recovery of lost profits but also for an account of the profits of the infringer. An account of profits will be assessed by the judge, based on the revenues gained by virtue of the violation of the rights and the compensation that the infringer should have paid as royalties.

This should make it easier for the holder of the infringed rights to give evidence of the damage suffered and therefore increase the possibility of recovering greater damages in line with the current tendency in case law.

The Code also confers on domain names the express qualification of distinctive signs. In fact, in this regard, article 12 on the "Novelty" feature prohibits the registration of trade marks identical or similar to previous domain names. Article 22 in turn prohibits the registration of domain names conflicting with previous trade marks.

A provision with significant implications has also been introduced in relation to trade secrets. These are now expressly considered specific objects for protection within industrial property rights. In this respect, article 98 of the Code protects confidential information, including business information, as well as technical industrial expertise.

The provisions regarding inventions developed by researchers are also of interest. Where a researcher is employed by a university or public administration body that has research among its institutional purposes, the researcher will now be exclusively entitled to the rights arising from the invention.

The Code has also introduced a definition of piracy, distinguishing it from counterfeiting. Comprehensive infringements of IP rights will now be considered piracy if such infringements are carried out by fraud.

Finally, the new legislative body does not consolidate the law regulating copyright. This continues to be governed by law no. 633/1941.