NEWSLETTER N 1 - January 2009 STUDIO LEGALE VANZETTI & ASSOCIATI Milano - Venezia www.vanzettieassociati.it studio@vanzettieassociati.it
CASE LAW 1. The Supreme Court rules against protection pursuant to Art. 2598.3 Civil Code (C.C.) for Lego bricks. Supreme Court, 29 February 2008, no. 5437 2. The Supreme Court (Full Bench) rules that the Italian Courts have the jurisdiction to declare the nullity of the Italian part of a European Patent granted whilst proceedings are pending. Supreme Court, Full Bench, 12 March 2008, no. 6532 3. Illegal removal of information by a former employee: remit of the ordinary or IP specialized courts? Supreme Court, 19 June 2008, order no. 16744) 4. The Full Bench rules in a case of trademark validation. Supreme Court, Full Bench, 1 July 2008, no. 17927 5. A trademark constituted by the shape of the Bic Cristal pen is ruled to be infringed. Court of Milano, 29 February 2008 6. The Court of Torino enjoins sale in Italy of the Chinese Smart clone. Court of Torino, 20 March 2008 7. Copyright and works of design of Le Corbusier: problems of intertemporal law raised by the new legislation. Trib. Monza, 15 luglio 2008 8. Court of Milano accords protection to the Emiliane Barilla packaging against a look alike. Court of Milano, 28 July 2008 LEGISLATION 1. Common organisation of the market in wine: P.D.O. and P.G.I. also for wines. 2. Abrogation of the post of High Commissioner for the Fight against Infringement. 3. Priority search: a new phase in the Italian patenting procedure. 4. Community Design: new edition of the Locarno Classification.
CASE LAW
1. The Supreme Court rules against protection pursuant to Art. 2598.3 Civil Code (C.C.) for Lego bricks. Supreme Court, 29 February 2008, no. 5437 The Supreme Court has again ruled on the protection of Lego bricks (after handling the question in its decision 9 March 1998, no. 2578, in Giur. Ann. Dir. Ind., 1998, p. 28) - no longer protected by patent - against a competitor s production of a line of bricks which are compatible and can be integrated with the former. Overturning the decision of the Court of Appeal of Milano (of 28 October 2003, in Giur. ann. dir. ind., 2004, p. 592), the Supreme Court ruled that the production and sale of modular components which are compatible with those of a competitor - should the competitor s components not be covered by a patent and it not be a case of slavish imitation leading to a likelihood of confusion - does not constitute unfair competition pursuant to Art. 2598, no.3, Civil Code. (CC), an article which, as is well-known, bars the use of means which do not comply with fair practices and which can damage the other s assets. In fact, in the opinion of the Supreme Court imitation of non-patented shapes is barred only in that it can lead to confusion as to the provenance of goods, and thus compatibility between modular products produced by different companies may not be considered per se unlawful when it does not lead to confusion as to the provenance of such products. As to likelihood of confusion, the Supreme Court upheld the decision of the Court of Appeal in that part which ruled out likelihood of confusion and slavish imitation pursuant to Art. 2598, no. 1 CC, in that this point was not appealed.
2. The Supreme Court (Full Bench) rules that the Italian Courts have the jurisdiction to declare the nullity of the Italian part of a European Patent granted whilst proceedings are pending. Supreme Court, Full Bench, 12 March 2008, no. 6532 Going against previous decisions of the Supreme Court (see, for example, Supreme Court, 8 August 1989, no. 3657, in Foro It., 1990, I, p. 117), the Full Bench confirmed the jurisdiction of the ordinary courts in deciding on the nullity of the Italian part of a European patent, even should the grant procedure before the EPO still be pending when the judicial action is started and the patent is granted in the course of proceedings. In fact, according to the Supreme Court patent grant leads to jurisdiction of the ordinary courts, which must assert it, even if it was previously lacking. The Full Bench then ruled irrelevant the fact that an opposition was brought against patent grant, stressing that publication of patent grant by the EPO, even if subject to administrative petitions from third parties, immediately changes the legitimate interest in obtaining grant into a subjective right which may be protected before the ordinary courts (according to the Supreme Court, moreover, the tenor of Art. 97 of the EPC and relative implementing legislation demonstrates that there are no reasons for incompatibility between administrative procedure and nullity action before the ordinary courts ). The issue resolved by the Full Bench has, in any case, been expressly elucidated by the Code of Industrial Property (CIP) which in Art. 120.1, states that actions involving IP matters in which rights have been granted or are in the process of being granted are brought before the State judicial authority. If a nullity action is brought when a right has not yet been granted the decision may be issued only after the Italian Patent and Trade Mark Office has seen to the application, examining it before applications submitted at a later date.
3. Illegal removal of information by a former employee: remit of the ordinary or IP specialized courts? Supreme Court, 19 June 2008, order no. 16744 This order of the Supreme Court ruled that the Specialized IP Divisions were not competent to decide on a case of illegal removal of company information (a list of clients names and addresses) by a former employee who went on to give the list to a competitor. According to the plaintiff, this conduct constituted both unfair competition and violation of IP rights on trade secrets pursuant to articles 98 and 99 CIP. However, the Supreme Court stated that the information in question could not be protected under articles 98 and 99 CIP, given that said information did not meet all the requirements of said articles. In particular, according to the Court, this was information which was known and easily accessed by experts and personnel in the sector, and had no financial value. The Supreme Court ruling therefore that in the case in question there was no violation of IP rights stated that the Specialized Divisions were not competent on the basis of Art. 134 CIP, which excludes said competence for cases which do not interfere, even indirectly, with the exercise of IP rights.
4. The Full Bench rules in a case of trademark validation. Supreme Court, Full Bench, 1 July 2008, no. 17927 Resolving a long dispute in the area of trade mark validation, the Full Bench of the Supreme Court ruled that also in the system prior to the 1992 reform (a reform which resolved the issue by inserting in Art. 48 Trade Mark Law, now Art. 28 CIP, an express reference to the proprietor of a registered mark) a mark could become valid not only with respect to a non-registered prior mark but also with respect to a registered prior mark. With this ruling, therefore, the Full Bench of the Supreme Court has refuted the jurisprudential thesis whereby, considering the legal value of recording in registers, in the case of conflict between registered marks there may never be use in good faith of the second mark; and it thus asserted clearly that the system of legal recording does not, per se, suffice to exclude good faith. The Full Bench then stated that the institute of validation represents neither loss of the right to use one s own mark nor a form of acquisition of the right to use the mark by a party which has adopted it without any challenge, but rather a case of lapse of the right to bring a nullity or an infringement action. According to the Court, this lapse can be avoided only by bringing the above mentioned actions, since any sending of extrajudicial cease and desist letters is irrelevant for this purpose. Finally, as for the scope of operation of this institute, the Full Bench stated that validation does not operate generally for all the products for which the trademark was registered, but only for those products for which the trademark has (also) actually been used.
5. A trademark constituted by the shape of the Bic Cristal pen is ruled to be infringed. Court of Milano, 29 February 2008t The trademark constituted by the shape of the renowned Cristal Bic pen is valid and the import and sale of pens which are identical to this pen infringe said trademark. This was ruled by the Court of Milano, which first of all recognised the validity of the trademark in question. In particular, the Court stated that the Cristal shape was, on the one hand, not the necessary shape of the product, as the hexagonal base of the body of the pen, the particular shape of the cap and the shape of the clip do not have a functional role ; and, on the other, not in common use in the sector as in the field of disposable pens the combination of the above shapes characterizing the Bic Cristal trademark is not adopted by analogous products from which, in actual fact, it differs. Moreover, the Court ruled that infringement was not excluded either by the fact that the denominative and figurative elements of the Bic pen were not present on the counterfeit product, or by the presence of different marks on the product as the full reproduction of the shape mark in suit is absorbing and thus there is still a clear risk of confusion. The Court finally held that unfair competition due to slavish imitation was absorbed by the ascertained infringement since, other than the interference of the Bic shape mark by the pens in suit which had already been ruled as infringement, no further risks of confusion emerged (regarding, for example, the packaging of the products).
6. The Court of Torino enjoins sale in Italy of the Chinese Smart clone. Court of Torino, 20 March 2008 ourt of Torino, 20 March 2008 The Specialized Division of the Court of Torino awarded protection to the shape of the well-known Smart City Car, registered by Daimler Chrysler both as a Community Trade Mark and as an international model (also designating Italy), against the Noble e Buble cars produced in China and imported by two Italian companies. Although the Court ruled that both cars infringed the Smart shape mark, it held that only the Noble the model which, unlike the Buble, also copied the bi-colour effect of the Smart chassis infringed the international model. The decision in addition to being an emblematic case of defence of European products against Chinese copies is interesting in that it admitted, in relation to the same shape of a product, the cumulation of protections accorded by the Community Trade Mark and legislation on Community designs or models. According to the Court, these are in fact exclusive rights which albeit having the same subject matter (the shape of the product) are based on different parameters. In order to establish the likelihood of confusion between marks, reference must be made to the average consumer, whilst in establishing likelihood of confusion between models the reference point is the informed user, i.e. a person who albeit not necessarily an expert in the field still pays more attention to details than the average consumer. It must therefore be held, again according to the Court, that the average consumer may be confused even when there are differences (such as the absence on the Buble car of the Smart bicolour characteristic) which for the informed user would be sufficient to rule out risk of confusion. On the left, the Noble and the Buble. On the right, the Smart
7. Copyright and works design of Le Corbusier: problems of intertemporal law raised by the new legislation. Court of Monza, 15 July 2008 As is well-known, Decree Law 15 February 2007, no. 10 (which became Law 6 April 2007, no. 46), made significant amendments to articles 44 and 239 CIP, relating to the protection of works of design pursuant to copyright. For what concerns Art. 44, the Decree, bringing domestic law into line with community law (the violation of which had given rise to an infraction procedure being brought against Italy), extended copyright protection for works of industrial design which, per se, possess creative character and artistic value from 25 to 70 years; for what concerns Art. 239, which contains interim rules on the operativeness of the above protection, the Decree eliminated the socalled moratorium period provided by the previous version of the article (a period of ten years, starting from 2 February 2001,in which the holder of the rights may not take action against the use of its copyright protected designs). The Court of Monza has recently given one of the first interpretations of this new, in many ways problematic, legislation. The occasion was a case concerning the protection of armchairs and divans designed by Le Corbusier, requested by the holder of the rights on these works (the company Cassina) against the production and sale by two competitors of furniture which imitated said designs. In particular, the Court held that the new text of Art. 239 CIP was only applicable to conduct subsequent to entry into force of Decree Law 10/2007 (15 February 2007). Thus it held that production and sale by the defendants prior to 15 February 2007 was lawful whilst production and sale after that date was unlawful. The Court of Monza then stated that the extension of copyright to 70 years also applied to the works of authors who had died prior to entry into force of the above Decree law.
8. Court of Milan accords protection to the Emiliane Barilla packaging against a look alike. Court of Milano, 28 July 2008 The sale of tortellini whose packaging copies the characteristics of that of the well-known Barilla Emiliane line of dry pasta is an act of unfair competition, even should there be a different mark on the packaging which cannot give rise to confusion. Thus ruled the Specialized Full Bench of the Court of Milano. The packets in suit copied all those features which characterize the Emiliane packaging, i.e. the typical sack shape of the packaging, the yellow background and the red writing, as well as the partial, off-centre image of the product served up on a plate. This, according to the Court of Milano, is conduct intended to introduce elements of confusion onto the market, and aims to take advantage of the image of the competitor. This ruling is one of the few Italian decisions on look alikes, i.e. the practice (particularly common among products sold under the marks of the large distribution chains) of using packaging which, albeit carrying a mark which may not be mistaken for others on the market, slavishly imitates to a greater or lesser degree the characterizing features (shape, lines, labels, slogans, designs and colours) of the packaging of the better known companies, in order to attract the attention of consumers.
LEGISLATION
1. Common organisation of the market in wine: P.D.O. and P.G.I. also for wines. EC Regulation 479/2008, replacing the abrogated EC Regulation 1493/1999, has significantly amended the regime of the European wine market. Of its many amendments it is worth pointing out that which concerns designations of origin and geographical indications. With the aim of increasing the competitiveness of the Community s wine producers, strengthening the reputation of Community quality wine and creating a wine regime that operates through clear, simple and effective rules, the Regulation provides for the possibility of adopting starting from 1 August 2009 the initials P.D.O.(Protected Designation of Origin) and P.G.I.(Protected Geographical Indication) for wines. Such initials have, for some time now, been used for foodstuffs. Individual countries will, however, not be forced to abandon domestic designations already provided under national legislation (for example, in Italy the initials D.O.C., D.O.C.G. and I.G.T. ). In fact under Art. 59.2.a) of the Regulation, the initials traditionally used in the member states may continue to be placed on labels. It will be up to the individual wine producers, therefore, to decide whether or not to adopt the new designations and indications or to keep the traditional ones.
2. Abrogation of the post of High Commissioner for the Fight against Infringement. Entry into force of Decree Law no. 112 of 25 June 2008, which became Law 6 August 2008, no. 112, led to the abrogation of the post of High Commissioner for the Fight against Infringement. This post covered the tasks of monitoring and collecting data on infringement, of coordinating and laying down the objectives of policies and strategies for IP protection, of studying and drawing up legislative and administrative measures for IP protection and of assisting companies which are the victims of infringement. The decision, criticised from many sides, to abrogate the post of High Commissioner (instituted by Law 80/2005, the so-called competitiveness decree ) is part of a legislative policy manoeuvre which Art. 68.5 of the cited Decree Law 25 June, no. 112, described in these terms: in order to eliminate the duplication of organizations and functions and to promote greater efficiency in services and the rationalisation of procedures, those administrative structures which mainly carry out technical and highly specialized activities which can be linked to the institutional functions conferred on state or peripheral administrations, are eliminated and their relative tasks transferred to the Offices carrying out the same functions.
3. Priority search: a new phase in the Italian patenting procedure. With the entry into force of Ministerial Decree no. 32572 of 27 June 2008 (published in the Official Gazette of 2 July 2008, no. 153), the European Patent Office(EPO) will carry out priority searches on patent applications submitted to the Italian Patent and Trade Mark Office (IPTMO) starting from 1 July 2008. This new stage of the patenting procedure is regulated by an agreement of 18 June 2008 between the Department of Economic Development Head Office for Intellectual Property IPTMO and the EPO. Priority searches exclusively concern patent applications for which a foreign priority is not claimed pursuant to Art. 4 CIP, and they do not need to be carried out if the IPTMO holds, in the light of what is known to all, that lack of the requisites of validity is certain or absolutely evident. Priority searches are also excluded for patent applications for utility models. With the introduction of this stage of the patenting procedure, now: - patent applications must be accompanied by an English translation of the claims. If there is no translation, the applicant must pay the administration the sum of 200 Euro for translation costs (filing dues for search as per Table A), letter a), no. 7 attached to Ministerial Decree 2 April 2007); - the IPTMO asks the EPO for a search report within 5 months of the date of the patent application, and the report is drawn up by the EPO within 9 months of the date of application; - pursuant to Art. 6. paragraphs 1 and 2, of Ministerial Decree no. 32572/08 the IPTMO, after publication of the application will proceed with the examination under Art. 170.1.b) of the Code, on the basis of the search report and any documentation submitted by the applicant, and if it finds that, considering the search report and any arguments or amendments made to the claims or text by the applicant, a patent cannot be granted for the application under examination, it issues a refusal letter giving the grounds for its decision ; - upon filing an application for a European Patent which claims an Italian priority for which a priority search has been carried out, the applicant is exempt from the payment of the search fee (1.050 euro) which would otherwise have to be paid to the EPO.
4. Community design: new edition of the Locarno Classification. On 1 January 2009 the ninth edition of the Locarno Classification came into force. This is the international classification of industrial designs and models which has been in use since 8 October 1968. In particular, the new edition provides for: - the introduction of a new class 32-00 entitled Graphic Symbols and Logos, Surface Patterns, Ornamentation for getup, graphic designs, graphic symbols, logos, ornamentation and surface patterns; - the cancellation of class 99-00 (entitled Miscellaneous which comprised all products not included in the other classes) and the reclassification of its products into other classes; - the introduction of 99 new products.
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