News

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

Satispay vs. Sisal Pay: copyright and parasitic competition

The Court of Milan was called to rule on the legal protection of software programs. In particular, the company that owns “Satispay” acted against “Bill Sisal Pay”, claiming the violation of its rights relating to its software, which the other party had allegedly copied. Read more

In these days it has emerged that third parties have sent misleading payment requests to trademark, design and patent rights holders, as they appear to have been issued by the Italian Patent and Trademark Office.

The office has already reported the fact to the competent authorities: https://uibm.mise.gov.it/index.php/it/attenzione-alle-fatture-ingannevoli-con-intestazione-e-nominativi-uibm

This serious fact joins the already numerous misleading payment requests and invoices that are sent to industrial property rights holders using logos and names that create confusion with the names and logos of other offices, such as the European Union Office EUIPO and the International Office WIPO.

We invite you to pay the utmost attention, not to proceed with any payment and to forward us a copy of the requests received for our verification and possible reporting to the competent offices and authorities.

The latest publication of the magazine “Ticino Business”, an editorial initiative of the Canton Ticino Chamber of Commerce, dedicates a space to PGA, on the occasion of the tenth anniversary of its incorporation. Read more

Ten years have passed since PGA was founded on 24 June 2009. Since then, the company has never stopped growing, with an enviable rate for the market sector in which it operates. The forecast for the year 2019 are still growing compared to the excellent results already obtained in 2018. Read more

On October 2nd 2019, at the headquarters of Italian Industrial Property Consultants Institute, in MILAN, a conference was held entitled: “Overview on World Wide patentability requirements of pharma inventions – with special focus on India Patent Law”.

The conference was organized by a team of consultants specialized in chemical and pharma inventions (CFB group). This group conducted a survey in early 2019 with the aim of gathering information from local correspondents in the major countries of strategic interest for the pharmaceutical sector, concerning the requirements relating to the sufficiency of disclosure of pharmaceutical inventions.

The results of the survey were the subject of a presentation held by Fiorella Cristaldi.

On 11 June 2019 has been published in the Official Journal of the EU the Regulation (EU) 2019/933 of 20 May 2019, regarding the SPC manufacturing waiver.
The manufacturing waiver provisions will enter into force on the 20th day after publication, i.e. on 1 July 2019.

Read more

We inform you that a notice of suspension of the possibility of submitting applications for subsidies in favor of micro, small and medium-sized enterprises for the registration of European Union and international trademarks (MARCHI+3) was published in the Official Gazette of the Italian Republic no. 62 of March 14, 2019, due to the exhaustion of the allocated resources following requests received.

Starting February 26, 2019, the Italian Patent and Trademark Office (U.I.B.M.) will allow new trademark applications to be filed in Fast Track mode, in order to reduce the time required for the examination and, in absence of objections, to publish them for the opposition period in 7 days after filing.

Reducing publication times means being able to obtain registration much more quickly; in fact, we remind you that publication opens the opposition period of 3 months and that, in the absence of disputes, the Office can proceed to the granting in few weeks.

Here below the requirements for the Fast Trackprocedure:

1. Individual trademark (not collective)
2. Word or figurative trademark;
3. No priority claim;
4. Goods and services included in the list of the Nice Classification in force;
5. Payment of the Grant Fee through the PAGOPA platform at the same time as the application is filed.

We are at your disposal for any further information and to draw up lists of goods and services that can allow you to access this procedure.