News

Copyright: Daniel Cox’s wolf is a work of art

The Court of Milan upheld the claims of photographer Daniel Cox in the dispute with fashion designer Antonio Marras. In particular, Marras reproduced the iconic photograph of the wolf howling among the snowflakes taken by Daniel Cox on some garments. The photo was found on Google and reproduced by Antonio Marras without asking Cox’s authorization and without mentioning his name.
The Italian judges in Milan have therefore followed an approach already expressed by other Italian Courts which, implicitly referring to the criterion of the “worthiness” of the work, refers to meta-legal criteria and in particular to the theory that a creation can be defined “art” only if the art world defines it as such.
The Court therefore prevented Marras from reproducing, marketing or further distributing the photograph in any form whatsoever, and ordered him to pay damages and legal costs.

Voucher 3i

The Italian Ministry of Economic Development has adopted the executive decree establishing the opening of the deadline for applying for the “Voucher 3i – Investing in innovation”.
You can find further information here.

EUIPO: new indications for the post-COVID phase

In response to the exceptional circumstances created by the Covid-19 outbreak, the Executive Director of the European Intellectual Property Office (EUIPO) issued Decision No EX-20-3 and the subsequent Decision No EX-20-4, both concerning the extension of time limits in proceedings before the Office.
However, with effect from 18 May 2020, those extensions ceased to apply. EUIPO therefore issued a guidance note on time limits after the end of the extension period.

EBA: Patentability of plants and animals

On 14 May 2020, the Enlarged Board of Appeal (EBA), the highest level of judicial authority of the European Patent Office (EPO), issued its opinion G 3/19 (Peper) on the patentability of plants and animals.
After the decision of 5 December 2018 (Case T 1063/18), the EPO’s attention was again drawn to the issue of the patentability of plants and animals obtained exclusively by an essentially biological process. The EBA’s opinion had been sought on this issue.
The EBA therefore adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and stated that the non-patentability of essentially organic processes for the production of plants or animals also extends to plant or animal products obtained exclusively by an essentially organic process.

The Italian Ministry of Economic Development has promoted the “Voucher 3i” program, an incentive for innovative startups that finances patent consulting services with a budget of 19.5 million euros for the three-year period 2019-2021.

The incentive is provided for companies with share capital, including cooperatives, whose equity is not listed on a regulated market or an MTF and it is aimed at the acquisition of consulting services for patenting, through the granting of vouchers for:
– patentability check and researches before the filing of the patent application (up to 2,000 Euro + VAT);
– drafting of the patent application and filing with the Italian Patent and Trademark Office (up to 4,000 Euro + VAT);
– filing abroad of a patent application claiming the priority of a previous italian patent application (up to 6,000 euros + VAT).

It is possible to request in one year up to three vouchers for each type of service and for different inventions, for a maximum total of nine vouchers. Applications may be filed from 15 June 2020, on the specific page of Invitalia website.
The services can only be provided by Industrial Property Consultants registered on the list managed by the Order of Industrial Property Consultants.

Our firm, in the person of Dr. Roberto Allaix, is registered on this list and is available to provide further information.

Il Sole 24 Ore against L’Eco della Stampa: copyright on digital publishing

Upon request of Il Sole 24 Ore S.p.A., by resolution no. 169/20/CONS of May 5, 2020, the Italian Authority AGCOM ordered L’Eco della Stampa S.p.A. to remove several digital publications posted in its online press release. In particular, the italian newspaper reported the presence on the site “new.ecostampa.net” of many articles published in violation of its copyright. AGCOM, therefore, agreed with the claims raised by Il Sole 24 Ore. The reproduction of the contents in question was in fact reserved.

Ambush marketing in the Italian Official Gazette

With the publication in the Italian Official Gazette of the Law no. 31/2020, provisions on “ambush marketing” have entered into force. By this term is meant the association of a brand to a media event without the consent of the organizers.
The Decree Law 11 March 2020, n. 16, dedicates an entire chapter, i.e. Articles 10-14, to the regulation of the prohibition of parasitic activities at sports events and events of national and international importance.

EUIPO Observatory: the new orientations of Europe case-law

The European Observatory on Infringements of Intellectual Property Rights has published the latest version of its case law collection.
In particular, the Observatory gathers the main opinions on the protection of intellectual property rights and makes them available to users through a single database. The Observatory also frequently follows the evolution of European case law in relation to infringements of the same rights.

US Supreme Court: Georgia’s annotated code of law is not protected by copyright.

The Supreme Court of the United States of America, in a recent decision, ruled that annotations of a legislative code cannot be protected by copyright.
The case concerns the Annotated Code of the State of Georgia, which combines normative provisions with doctrinal comments, case law and legislative references. Well, anyone who wants access to such annotations must purchase a specific subscription.
The Supreme Court has therefore ruled that copyright cannot be applied to works created by judges and legislators in the exercise of their functions.
On the other hand, it would be worrying a scenario in which the public would have access only to the “economic” version of the law, whereas the full version, containing the interpretation of the above rules, would be available only to paying customers.

Parmigiano Reggiano against Campbell’s

The American multinational Campbell’s has accepted the request of the Parmigiano Reggiano Consortium to remove from the packaging of its products any image that could violate the intellectual property of the Italian company. In particular, on the packaging of the “Prego” line of sauces were pictures of cheese with the well-known dots that are impressed on every Parmigiano Reggiano cheese. Among the ingredients, however, there was not the Italian product, but a local imitation of it.
This is not the first battle that the Parmigiano Reggiano Consortium has fought to protect its IP rights. The action against Kraft Foods Group Brands LLC was filed only a few months ago. The multinational company is trying to register the “KRAFT PARMESAN CHEESE” trademark in New Zealand, where the Consortium holds the “Parmigiano Reggiano” trademark. Similar disputes are also pending against Kraft in Australia, Uruguay, Paraguay, Chile, Thailand and Ecuador.

Sky/SkyKick: the ruling of the High Court of Justice

Following the judgement of the Court of Justice of the European Union earlier this year, the case was returned to the English High Court of Justice. The ruling is the first application of the European Court’s decision on the alleged infringement of Sky’s trademarks.
By judgment of April 29, 2020, the English Court ruled that SkyKick had infringed Sky’s trade marks for “e-mail services”.

EPO: new extension of deadlines due to COVID-19

In its Communication of May 1, 2020, the EPO stated that in view of the difficult situation in the Federal Republic of Germany, under Article 134(2) of the EPC, the deadlines expiring on March 15, 2020 or later are extended to June 2, 2020. This extension also applies to applications for international PCTs.

EUIPO: further extension of deadlines due to COVID-19

On April 29, 2020, by Decision No EX-20-4, the Executive Director of the EUIPO further extended all deadlines expiring between May 1, 2020 and May 17, 2020 until May 18, 2020. The Office has therefore prepared an information note containing all clarifications in this respect.

“Cura Italia” law: extended validity of the IP rights

With the conversion of the “Cura Italia” decree into law, the validity of the expiring industrial property rights has been extended. Among the numerous changes made during the conversion is, in fact, the amendment of Article 103 of Decree Law No. 18 of 2020.
In the light of this amendment, the UIBM has indicated that:
“All certificates, attestations, permits, concessions, concessions, authorizations and authorization acts however named, including those relating to industrial property rights, which expire between January 31, 2020 and July 31, 2020, shall remain valid for ninety days after the declaration of cessation of the state of emergency”.
In the case of industrial property rights, at the expiry of this term, it will be the responsibility of the interested party who intends to extend the duration of a title, intervene with payments, in the forms already provided by law, to obtain the maintenance or renewal”.

New funding for EPO’s academic research programme

The European Patent Office has announced the new funding for the “ARP – Academic Research Program“.
Proposals may be submitted by individual research institutes or groups of institutes. In the case of a group of institutes, proposals may come from anywhere in the world, provided that the contracting partner (project leader) is based in a member state of the European Patent Organisation. There are no nationality requirements either for the principal researcher or for co-researchers.
The EPO has therefore published the application form and the integrated guidelines for the submission of projects.

Food labelling: ministerial guidelines for the emergency situation of COVID-19

The Italian Ministry of Economic Development issued a recommendation on temporary business support measures for new food labelling requirements. In particular, following the adoption of the urgent measures concerning the containment and management of the epidemiological emergency by COVID-19, companies in the food sector are authorized to use the stocks of labels and packaging materials already ordered before the date of application of EU Regulation No. 2018/775, as well as before the date of publication of the decrees extending the national decrees on the mandatory origin labelling of wheat in pasta, rice, tomato and milk, which are currently being adopted.

WIPO: news for the “Patentscope” database

The World Intellectual Property Organization has made available in recent days a new search function in the patent database “Patentscope” with the aim of facilitating the retrieval of information contained in published patent documents that could be useful to inventors developing new technologies to combat the COVID-19 pandemic. Thanks to the new function, the database will provide scientists, engineers, public health policy makers, stakeholders and the general public with an easily accessible source of information to improve disease detection, prevention and treatment.

Copyright infringement: Telegram removes 7 channels

Following the investigation launched by AGCOM concerning certain channels created on the well-known messaging platform “Telegram” through which users send copyright-protected content, Telegram itself removed 7 of the 8 channels reported.
The Authority, in a press release dated 23.04.2020, also pointed out that, also in relation to the violation of Intellectual Property in order to legitimize AGCOM’s direct intervention against Telegram, it would be necessary to amend the primary legislation to allow operators offering information society services in Italy using national numbering resources to be considered established in Italy – with reference to the rights referred to in the article. 4, paragraph 1, letter a) of Legislative Decree no. 70 of 2003.
This rule would allow the Authority to adopt selective removal orders for content uploaded in violation of copyright addressed directly to operators such as Telegram.

EPO: the oral procedure in videoconference is in progress

The European Patent Office has published the decision taken by iys President regarding the pilot project for oral procedure by videoconference before the Opposition Divisions.
The project will be extended to all oral proceedings before the Opposition Divisions.
The pilot project will start on the date of entry into force of the decision (scheduled for May 4, 2020) and will continue until April 30, 2021.

“BREVETTI+”: extended incentives

The Ministry of Economic Development has extended the incentives originally provided for the Brevetti+ tender.
In particular, it is now planned to provide a capital grant of up to 140,000 euros. All this to support the innovative and competitive capacity of SMEs through the enhancement and economic exploitation of patents on the national and international market.

Italian Patent and Trademark Office publishes 2019 results

The IPTO has published data on decisions taken in 2019 concerning patents, trademarks and designs. Patent applications exceeded 10,000 for the first time since 2006. Over 65,000 applications for the registration of national trademarks, including renewals and international trademarks designating Italy, were received in 2019.

The new Italian regulation of ambush marketing has been approved

Ambush marketing is the association of a brand to a media event without the consent of the organizers. The case of the Danish forward Nicklas Bendtner is well known. During the Denmark/Portugal match of the 2012 European Football Championship, he showed his briefs under the brand name “Paddy Power”, an Irish online bookmaker company.
In view of the next European Football Championships of 2021, the Italian Government has issued Law Decree no. 16 of 11 March 2020 containing “Urgent provisions for the organization and conduct of the Olympic and Paralympic Winter Games in Milan Cortina 2026 and the ATP Torino 2021-2025 finals, as well as a ban on parasitic advertising”. In particular, the Decree prohibits parasitic advertising activities carried out during sports events or events of national or international importance, if not authorized by the organizers.

COVID-19: further postponement of deadlines for UIBM +4, POC 2020 and Marchi +3 calls

The Ministry of Economic Development recently ordered a further postponement of the terms relating to “Designs +4” (which provide bonuses for services aimed at enhancing the value of registered designs), “POC 2020”. (which finances patent enhancement programs) and “Marchi +3” (a program to facilitate the registration of national trademarks abroad).
Below is a brief description of the new terms.
Designs +4: postponement of the deadline for the submission of applications to 9:00 a.m. on 27 May 2020.
POC 2020: postponement of the deadline for the submission of exploitation programmes to 24:00 on 20 May 2020.
Marchi +3: postponement of the deadline for submission of applications to 9:00 a.m. on 10 June 2020.

EPO: new update on measures taken for COVID-19

The EPO has decided to postpone until further notice the oral proceedings before the Examination and Opposition Divisions until 30 April 2020, unless the examination procedure by videoconference is confirmed. A pilot project for the video-conferencing oral objection procedure will be launched.
All events organized by the EPO in March, April and May are postponed. The organizers will contact the participants on an individual basis and, where possible, inform them of the new dates.

IPTO: further postponement of proceedings deadlines

With the entry into force (9 April 2020) of a new decree, the suspension provided for by the “Cura Italia” decree of all deadlines, including the mandatory ones, relating to administrative proceedings, upon partial or ex officio request, pending on 23 February 2020 or started after that date, was further extended.
In fact, Decree Law no. 23 of 8 April 2020 was published on “Urgent measures concerning access to credit and tax compliance for businesses, special powers in strategic sectors, as well as measures concerning health and work, extension of administrative and procedural deadlines”, which in Article 37 states that “The deadline of 15 April 2020 provided for in paragraphs 1 and 5 of Article 103 of Decree Law no. 18 of 17 March 2020 is extended to 15 May 2020”.

Infringement by equivalence: the criteria of the Italian Court of Cassation

By decision no. 2977 published on 7 February 2020, the Italian Court of Cassation carried out a detailed reconstruction of the criteria useful for the assessment of infringement by equivalence.
The decision was taken in a procedure issued by the owner of an Italian patent entitled “Process and plant for the extraction and concentration of tannin from wood and other natural products” and a European patent application relating to the same found.
The main innovation concerns the fact that the Court has chosen to investigate the infringement by applying the German criterion which considers as a symptom of infringement for the equivalents the obviousness or non-originality of the replacement solution adopted by the infringer with respect to the patented solution, taking into account the average knowledge of the technician in the sector. It would therefore not be relevant the variation, even if original, made to a single element of the patented invention, if such variation did not allow to exclude the use, even partial, of the previous patent. Read more

The “BOY LONDON” trademark has been declared invalid: it is contrary to morality

By Decision No 20 461 C, the Cancellation Division of the EUIPO declared the trademark “BOY LONDON” invalid as it evokes Nazi symbolism and it is therefore contrary to morality for the purposes of Article 7(1)(f) RMUE.
The trademark contained a graphic component representing an eagle which, according to EUIPO, strongly resembles the emblem of the German National Socialist Party. Read more