Injunctions in cases of infringement of IPRs. The Groups are invited to answer the following questions under their national laws:

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1 Question Q219 National Group: Italy Title: Injunctions in cases of infringement of IPRs Contributors: Reporter within Working Committee: Lamberto Liuzzo Date: Questions I. Analysis of current law and case law The Groups are invited to answer the following questions under their national laws: Availability: 1. Are injunctions for infringement of an IPR available on a provisional/preliminary basis? Yes. 2. Are injunctions for infringement of an IPR available on a permanent basis? Yes. Criteria: 3. If yes to question 1, what are the criteria for the grant of an injunction on a provisional/preliminary basis? The criteria for the grant of an injunction on a provisional/preliminary basis are: fumus boni juris (that is, the appearance of a valid right) and periculum in mora (i.e., danger in delay, consisting of the existence of risk of an imminent injury which could not be adequately compensated at the end of the proceedings by the decision on the merits). 4. If yes to question 2, what are the criteria for the grant of an injunction on a permanent basis? The criteria for the grant of an injunction on a permanent basis that will be issued

2 with a judgment by an IPR specialized court are: the acknowledgement of the existence of a valid IPR and its infringement with complete proof of the violation of the IPR and the need to stop it. When neither party starts the proceeding on the merits within the prescribed terms, the preliminary injunction could also become permanent. 5. If not addressed in answering questions 3 and 4, does the criteria for the grant of an injunction differ depending on whether the injunction sought is on a provisional/preliminary or permanent basis? If so, how? The question has been answered through questions 3 and Are the criteria for the grant of an injunction equally applicable to infringement of all IPRs? Yes. 7. If no to 6, are there any specific criteria or considerations for the grant of an injunctions for particular IPRs? If so, what criteria apply and to which IPRs? N/A. 8. Are there any specific criteria or considerations for particular subject matter, for example, pharmaceutical patents? If so, what criteria or considerations apply to what subject matter? There are no specific provisions by law with regard to the injunction. However, any specific criteria or considerations may be taken into account by the court. 9. Are there any specific considerations relevant to particular IP holders, for example, NPEs? If so, what considerations are relevant and to what IPR holders? According to the Italian case law, specific considerations relevant to particular IP holders (such as NPEs) are not applied. Discretion: 10. Is there any element of judicial discretion in relation to the grant of an injunction for infringement of IPRs? If so, how does the discretion apply? As said above, there are two different types of injunctions in Italy: preliminary and permanent. With regard to the permanent injunction, although the grant is not mandatory (and therefore there is judicial discretion), case law generally dictates that an injunction follows a finding of infringement of the IPR if requested by its holder. With regard to the issuance of the preliminary injunction, it is under the court s discretion to determine whether the IPR holder is or may suffer irreparable injury or the remedies available at law are inadequate to compensate the injury and

3 whether the public interest would be prejudiced by issuing such a remedy. 11. Are there any circumstances in which a court must grant an injunction for infringement of an IPR? If so, in what circumstances? See above under question 10. In particular, the court must grant a permanent injunction if the infringement has been proven and the illicit conduct is still ongoing. 12. Are there any circumstances where infringement of an IPR is proved and no permanent injunction is available? If so, in what circumstances? Yes, if the IPR has lapsed. Scope: 13. Is an injunction granted only against named parties to the infringement proceeding, or is an injunction available more broadly against potential infringers such as customers or manufacturers who are not parties to the proceeding? An injunction is granted only against named parties to the infringement proceeding. 14. Is there a specific form of words used by your courts to describe the scope of the grant of an injunction? If so, what is the 'formula'? Our courts do not use any standard formula when granting an injunction. 15. Is the grant of an injunction referable to the item(s) alleged to infringe the relevant IPR, or may the grant of an injunction be broader in scope? If it may be broader, what is the permissible scope of the injunction? The scope of an injunction must be restricted to the specific infringing items. Judicial trends and practice: 16. Is there any discernible trend in your country as to the willingness or otherwise of courts to grant or refuse injunctions for particular IPRs or in relation to particular subject matter? No, there is not a particular trend. 17. What, if any, has been the impact of the ebay v Merc-Exchange decision or any tendency of the courts in your jurisdiction to treat final injunctions as discretionary? Please explain whether the ebay v Merc-Exchange decision has been relied on or cited by your courts, and in what circumstances. Alternatively, or in addition, has there been any legal commentary on any potential implications of the ebay v Merc-Exchange decision in your jurisdiction? The ebay v. Merc-Exchange decision has not impacted on the tendency of our courts to treat injunctions as discretionary.

4 II. Proposals for harmonisation The Groups are invited to put forward proposals for the adoption of harmonised rules in relation to injunctions for infringement of IPRs. More specifically, the Groups are invited to answer the following questions: Availability of provisional/preliminary injunctions: 18. Should there be a test or criteria for the grant of a provisional/preliminary injunction for the infringement of an IPR? If yes, what should that test or those criteria be? We suggest using the criteria mentioned in the answer to Question If no, what principles should be considered in determining whether to grant an provisional/preliminary injunction? N/A. Availability of permanent injunctions: 20. Should there be a test for the grant of a permanent injunction for the infringement of an IPR? If yes, what should that test be? In our opinion, there is no need to have a specific test. 21. If no, what principles should be considered in determining whether to grant a permanent injunction? In our opinion, the guiding principles could be the ones previously outlined in the answer to Question 4. Discretion: 22. In what circumstances, if any, should the grant of an injunction automatically follow a finding of infringement of an IPR? In our opinion, a grant of an injunction should never automatically follow the finding of an infringement of an IPR. 23. In what circumstances, if any, should the grant of an injunction be denied notwithstanding a finding of infringement of an IPR? The grant of an injunction should always be denied notwithstanding the finding of an infringement of an IPR in cases of important implications on public health or public safety. Differences between IPRs: 24. Should the above test/principles apply equally to all IPRs?

5 Yes, the above principles should apply equally to all IPRs. 25. If no, what should any differences be and why? N/A. Scope: 26. Should an injunction be granted only against named parties to infringement proceeding, or should an injunction be available more broadly against potential infringers such as customers or manufacturers who are not parties to the proceeding? In our opinion, the injunction should be granted against all named parties to an infringement proceeding and should also be available against potential infringers who are not party to the proceeding, provided that the additional parties against whom the injunction is issued are trading the infringing goods. 27. What is the appropriate scope of an injunction prohibiting an infringer from committing further infringing acts? For example, should the injunction relate simply to the IP the subject of the allegation of infringement, or should the injunction be broader in scope? If broader, what is the permissible or desirable scope? The injunction should relate simply to the IP which is subject to the allegation of infringement. SUMMARY According to the Italian Law and Case Law injunctions for infringement of an IPR are available both on a provisional/preliminary basis and a permanent basis. The criteria for the grant of an injunction on a provisional/preliminary basis are the appearance of a valid right and the existence of risk of an imminent injury which could not be adequately compensated by a late decision of the proceeding on the merit. The injunction on a permanent basis is issued by the court when the infringement of a valid IPR, the proof of its violation and the need of its cessation is acknowledged.

6 There are no specific provisions of law, but specific criteria or considerations for the grant of an injunction for particular IPRs or subject matters may be taken into account by the court. A permanent injunctions, although not mandatory, is normally granted by a court following the finding of infringement of an IPR and the request by its holder. Grant of a preliminary injunction is under the discretion of the court, taking into account the criteria defined above and whether the grant would prejudice the public interest. Permanent injunctions are not issued when the infringed IPR has lapsed. An injunction is granted only against named parties in the infringement proceeding. No standard formula is required and its scope is limited to the infringing items. There are no particular trends with regard to the grant or refusal of injunctions and the subject matter involved. Regarding the proposals for harmonization, it is felt that the criteria specified above should be applied for the grant of provisional/preliminary injunctions and that there is no need of specific tests for the grant of permanent injunctions. The grant of an injunction should not automatically follow the finding of the infringement of an IPR and it should be denied in cases of important implications on public health or safety. There should not be any differences between IPRs in the application the above principles. The injunctions should be available not only against named partied to an infringement proceeding but also against potential infringers, even if not party to the proceeding, provided they are trading infringing goods. The injunction should relate only to the IP subject to the allegation of infringement.