PGA Intellectual Property Newsletter – Dicembre 2021

PGA Intellectual Property Newsletter – Dicembre 2021

by PGA


What happens if the national patent claims a broader range of protection than the European one?

In a recent judgment, the Court of Rome provided important clarifications on the relationship between a European patent and its Italian portion. As is well known, the European patent is granted after a unified procedure, which has effect in all the Member States designated by the applicant. However, it’s outcome is not a single patent but a bundle of national patents. In several Member States, for the European patent to take effect, it must be validated with the filing of a translation of the claims or of the full text as granted at European level. However, the disharmony between the European process and the national steps is a critical issue. Indeed, it is not uncommon to find differences between the scope of protection of the national portion of a European patent and the EP patent as granted by the EPO (European Patent Office).
In particular, in the case under discussion, the company T.T. S.r.l. started legal action against S.S. GmbH to obtain a declaration of non-interference between its “T-Coboard” desolarizing panel and the defendant’s European Patent No. 2004395. In addition, TT asked the judge to declare invalid the Italian portion of the S.S. patent, due to lack of novelty. The Italian portion, in fact, had a scope of protection broader than that of the corresponding EP patent. Precisely, this broader scope was part of the state of the art and thus the related claims were not novel.
The Court, however, pointed out that it would always be admissible to rectify the Italian portion of an EP patent, pursuant to Article 57 of the Italian IP Code, which expressly contemplates the case of a possible discrepancy with the text filed with the European Patent Office.
Where, therefore, the law establishes that “the Italian translation of the papers relating to the EP application or EP patent as granted is effective in the territory of the State, if it confers a protection narrower than that conferred by the text drawn up in the language of the procedure of the European Patent Office”, this does not outline a hypothesis of invalidity of the Italian portion of the patent containing a claim broader (than in the EP patent), but limits the prevalence of the translation of the national patent to the sole case where the different claim is narrower compared to the European patent.

The Italian Supreme Court on the domain name that violates a registered trademark

The Italian Supreme Court recently ruled on interference between a trademark and a domain name. In the case under discussion, the Company RTI S.p.A., owner of the registered trademark “NONSOLOMODA”, sued the Company Computer Line S.r.l. and Mr. Riccardo Nicolò Riso. In particular, RTI challenged the registration of the domain, containing a website aimed at promoting tailoring activities and the sale of telephones. The Court of first instance decided in favour of RTI, declaring that the registration of the domain constituted an infringement of the trademark registered by RTI. However, the Board of Appeal overturned the outcome of the first instance judgment.
In third instance proceedings, the Supreme Court revoked the decision of the Board of Appeal. The Supreme Court pointed out, in fact, how the trademark Nonsolomoda had acquired notoriety also as a result of the well-known, and homonymous, national broadcast. These circumstances are relevant in the light of Article 22 of the Italian IP Code. This law provision forbids use of a domain name identical or similar to a trademark if, because of the identity or similarity between the commercial activity of the owners of such signs and the goods or services for which the trademark has been registered, there is a risk of confusion. The second paragraph of the same rule specifies that this ban extends to the use of a domain name identical or similar to a registered well-known trademark even for not similar goods or services. All this, where the use of the sign without reasonable grounds allows to take unfair advantage of the distinctive character or reputation of the trademark or is detrimental to them.

Strength of patronymic trademarks

In a recent ruling, the Italian Supreme Court, called to rule on an infringement case, focused on the protection given by a patronymic trademark.
Mr. Camillo Zaccagnini, owner of the homonymous farming company, appealed against the decision by which the Court of Rome, accepting the claims made against him by Azienda Agricola Ciccio Zaccagnini S.r.l., had declared the invalidity of the trademarks “Azienda Agricola Zaccagnini Le Tre Colline” and “Zaccagnini Camillo”, prohibited the use of such trademarks, ordered the withdrawal from the market of the products bearing the counterfeited trademarks and ordered to pay damages to the plaintiff. The Board of Appeal rejected the appeal. Camillo Zaccagnini then further appealed the decision before the Supreme Court.
The Supreme Court, after an in-depth analysis of the protection given by a patronymic trademark, rejected the appeal. In particular, with regard to the legitimacy of the use of the patronymic Zaccagnini by the appellant, the Court stated the following conclusions. Article 8, paragraph 2, of the Italian IP Code specifies that the registration of the patronymic trademark does not prevent the person who is entitled to the name from using it provided that the prerequisites of Article 21, paragraph 1, exist: this rule states that the rights of a registered trademark do not allow the owner to forbid third parties from using it in their own economic activities, provided that the use is in accordance with the principles of fair competition, of his own name and address.
That said, the Court has ascertained that the use of the patronymic Zaccagnini by the appellant should be considered unlawful, precisely because it was carried out in violation of the principles of commercial fairness, leading to the association of the appellant’s trademarks with those of the better-known appellant company.

The Court of Milan on unfair competition for appropriation of merits and hooking

The Court of Milan, called to rule in the case Wallmax vs Roxtec, has confirmed important principles on unfair competition. In such matter, Wallmax claimed that Roxtec was the owner of a patent which expired in 2010 and concerning a cable entry module composed of several layers. After the patent expired, Wallmax began producing orange and black cable entry modules, which were really similar to Roxtec’s, and then replaced them with so-called multicolor modules. Wallmax then asked the Court to declare that its conduct could not constitute unfair competition against the defendant.
On the contrary, according to Roxtec, Wallmax had engaged in unfair competition by appropriating merits, hooking and denigrating the products and the business of the defendants; activity consisting in presenting its products in terms identical or equivalent to those of Roxtec, in some cases boasting better specs.
The Court then recalled that unfair competition takes place through hooking, punishable pursuant to art. 2598 no. 2 of the Italian Civil Code, when a company – even without any confusing aspect – makes a reference or a matching of its products to those of a better-known competitor, in order to take advantage of the market’s knowledge of such products and of the reputation they have, with consequent savings in advertising expenses (Court of Milan, May 16, 2013).
Unfair competition for appropriation of merits, however, does not consist in the adoption, albeit parasitic, of techniques or processes already used by other companies (which may give rise, instead, to unfair competition through imitation), but occurs when an entrepreneur, in advertising or in equivalent forms, attributes to his own products or to his own company qualities, such as awards, recognitions, indications of quality, requirements, virtues, which they do not possess, but which belong to the products or business of a competitor, so as to disturb the free choice of the market (Italian Supreme Court, January 7, 2016, no. 100).
However, the Court noted that in the promotional communication of the parties were only represented the technical characteristics of the products and were adopted generic statements about the simplicity of installation. These elements and circumstances do not represent any form of unfair competition.

Gucci case: in the infringement of a well-known trademark, the risk of confusion is not relevant

The Italian Supreme Court has recently provided some clarifications on the case of infringement of a well-known trademark. The judgment focuses, in particular, on the ability of the infringing trademark to generate confusion.
As a matter of fact, Gucci S.p.A. took action against a Chinese citizen for counterfeiting the well-known fashion trademark. However, the Court of Appeal held that there was no likelihood of confusion between the conflicting trademarks, even though they were very similar. In fact, the notoriety of the Gucci trademark would suggest that there was no risk of confusion, both because of the fame of the trademark itself and because the trademark is aimed at a particularly high target market, which is considered less likely to be confused.
Not of the same opinion is the Italian Supreme Court, which has clarified that, for the purposes of protecting the well-known trademark, the assessment to be made must disregard the existence of a risk of confusion between the signs. On the contrary, what must be investigated is (i) whether the infringer has taken unfair advantage of the reputation of the earlier trademark, as well as (ii) the reputational damage caused by the infringing trademark. In this context, it is important to examine the degree of similarity between the marks, which in this case was very high.


ITA presents its new liveries, but the newly acquired “Alitalia” trademark is missing

ITA Airways, the company that will take the place of Alitalia as official Italian airline, has acquired the trademark for the sum of 90 million euros. However, what is surprising and intriguing is not the fact itself, but what the company announced during the conference immediately following the deal. ITA has in fact publicly presented the livery chosen for its aircrafts on which, however, there would be no trace of the “Alitalia” brand.
There is, however, an issue of no small importance: should ITA not use the trademark in question for a period of 5 years, it could be declared revoked, pursuant to Article 24 of the Italian IP Code. This revocation would allow anyone to use the trademark of the historic company. In any case, ITA’s marketing manager has already stated that “The Alitalia trademark was purchased with the aim of managing the transition to the new livery and reserving the right to future uses of the trademark”. It will therefore be necessary to understand if these “future uses” will be sufficient to avoid the revocation of the trademark. All this, considering that a merely promotional use might not be enough to maintain the monopoly.

Italian Tax decree: changes to R&D tax credit and patent box in sight

The Italian Council of Ministers has approved the draft of the Tax Decree linked to the Budget Law 2022 which, among the various innovations envisaged, introduces significant changes to the regulations governing the tax credit on research and development and the facilitating measure of the Patent Box.
Awaiting the publication in the Official Gazette of the final text of the Tax Decree, the following provisions of the approved measure are highlighted.
With regard to the tax credit for research and development, the possibility of “reimbursement” is provided for in the event of undue use of the tax credit for investments in research and development activities accrued from the tax period following the one in progress as of December 31, 2014, until the one in progress as of December 31, 2019, without application of sanctions and interest.
With reference to the rules of the Patent Box, a 90% increase is envisaged for research and development costs incurred in relation to software protected by copyright, industrial patents, trademarks, designs and models, as well as processes, formulas and information relating to experience acquired in the industrial, commercial or scientific field that are legally protectable, used directly or indirectly in the performance of the business activity.