Trade mark licenses and contributory infringement of patents in Italy

15 September 2005

Rahul Kakkar

Unlike many other jurisdictions[1], Italian law does not define “contributory infringement”. To obtain an overview of contributory infringement, it is necessary to examine Italian common law.

The foreign systems distinguish between staple and non-staple articles. Staple articles are devices which may be used for several purposes. In certain situations, a supplier’s liability for third parties’ unlawful use of staple products may be dependent upon the commercialisation of such products. Non-staple articles are devices with a specific use and which could only be reasonably used to implement an invention.

The relationship between staple and non-staple articles and contributory infringement, was considered at length in the case of Leeds and Northrup Italy v Sidermes (GADI no. 3383/1996) ( the “Sidermes case”), which was heard before the Court of Milan in the first instance.

The case was appealed to the Court of Appeal which established that the following acts would constitute contributory infringement:

  1. the production and/or sale of non-patented goods which are to be used by purchasers for infringing purposes, and which do not have any other possible lawful use (i.e. non staple articles); or
  2. the production of goods capable of several functions (i.e. staple articles) for the sole purpose of, and with the intention of, infringing a patent.

The Sidermes case went to the Supreme Court which further held that, for contributory infringement to exist, all that must be shown is that the supplier knew that the goods he sold would be used by the purchasers for a purpose that would unlawfully infringe the patent. Therefore, the further condition imposed by the Court of Appeal that the goods should be univocally destined for an infringing purpose, seems not to be required.

This raises the question of what the situation would be if a trade mark, rather than a staple or non-staple article, is involved in the infringement of a patent. For instance, would the licensor of a trade mark be liable for contributory infringement where a licensee used the trade mark to distinguish infringing products?

Currently there is only one reported decision on this point, given by the Court of Naples in a preliminary injunction proceeding in 1999 (Court of Naples, 16 July 1999 in GADI no. 4090). The decision states that the licensor of a trade mark can be liable for patent infringement where a licensee uses the trade mark to distinguish infringing products. In deciding this point, the court interpreted article 1 bis of the Italian Patents Law (now article 66 of the Italian Industrial Property Code[2]) widely. It stated that the patent holder has a right of action against anyone who produces, uses or commercialises the alleged infringing product, including the licensor of the trade mark distinguishing them. This is because the use of a licensed trade mark (especially when well known) favours the “accreditation” on the market of the infringing product distinguished by it.

The court’s decision has been criticised as inconsistent with the Sidermes case. According to some commentators, a supplier should not be guilty of contributory infringement where he is not aware of the purchaser’s intention to use his product for an infringing purpose where the product could be used for other lawful purposes. Thus, there is no reason why the granting of a trade mark license, used to distinguish such infringing products, should itself leave a licensor liable for contributory infringement if he has no knowledge of the infringing activities.

The decision of the Court of Naples has raised further issues not discussed in this article on the already complex area of contributory infringement. However, to date, the decision has not been upheld by the courts or by commentators on the subject.


[1]For instance England and Sweden.

[2]Article 66 states that:

1. The patent right for industrial invention consists in the exclusive faculty to exploit the invention and to profit thereof within the territory of the State, in the limits and under the conditions provided for under the present code.

2. In particular, a patent confers on its owner the following exclusive rights:

a) if the subject matter of the patent is a product, the right to prevent third parties from producing, using, commercialising, selling or importing for such purposes the product at stake, save with the consent of the owner; and

b) if the subject matter of the patent is a process, the right to prevent third parties from applying the process, as well as from using, commercialising, selling or importing for such purpose the product directly obtained with the process at stake.