Nov 2022

Italy

Contributing Firm

Introduction

Italian law provisions against IP infringement are quite effective. National law provides the statutory framework for the registration of IP rights, for the substantive rules applicable to registered and unregistered IP rights, for administrative actions before the Italian Patent and Trademark Office and for enforcement of the same (complemented by the relevant Code of Procedure), primarily under the Industrial Property Code (IP Code) (Law decree no. 30/2005) and Copyright Law (Law no. 633/1941 as modified).

National law provisions are aligned with and have been shaped by European legislation (among others, EC Directive no. 2004/48 and Directive no. 2436/2015) and by the International treaties to which Italy is a signatory.

The Criminal Code and the Code of criminal procedure are the main sources for criminal IP rights enforcement, while Border enforcement is primarily governed by EU Regulation No. 608/2013. 

Courts’ decisions are not binding and thus are not a source of law in Italy. However, especially when issued by higher Courts, they may represent persuasive authority in future cases. 

As part of the Next Generation EU programme, issued by the EU in response to the COVID-19 Pandemic crisis, Italy presented the National Recovery and Resilience Plan (NRRP) that includes:

  • reform of the judicial system to reduce the length of proceedings, especially civil proceedings, and the significant backlog at the Courts; and
  • modifications to IP legislation to guarantee a more rigorous enforcement of rights, also with the aim of simplifying the assessment, storage, confiscation and destruction of counterfeit products. 
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1 . Criminal prosecution & civil enforcement

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1.1. Criminal prosecution

Criminal law provisions protect all registered IP rights but, in some instances, unregistered rights can also be enforced. 

Unlike civil IP matters, in Italy there are no specialized Criminal Courts that deal with intellectual property rights.

Most criminal cases in Court concern trademark infringement but in recent years the number of design infringement cases at criminal Courts has increased.

The infringement of a trademark, design or patent registration, is punished by different provisions of law that cover the acts of counterfeiting, altering, using a trademark, design or patent registration, as well as the acts of manufacturing, importing, detaining for sale or in any way putting into circulation goods counterfeiting registered IP rights (articles 473 and 474 of the Criminal Code).

Several specific provisions of Copyright law come into play when proceedings concern copyright infringement but the criminal process is the same.

Under article 517 of the criminal code, protection can also be sought for unregistered trademarks/signs when the same can mislead the buyer as to the origin or quality of the same.

As a residual provision, article 517 ter of the criminal code punishes all usurpation of a registered IP right.

The aforementioned crimes (except for the one provided by art. 517 ter. 2) are ex officio offenses, i.e. proceedings start automatically with no need for a criminal complaint to be filed by the right holder.

Consequently, the IP owner’s involvement in such proceedings is only voluntary, it is possible for them to take an active part, but they are not obliged to.

Law Enforcement Agencies (LEA) - on their own initiative or following a lead from the IP owner - can seize suspect counterfeit goods as well as the means (predominantly used) to produce them, but the seizure order must then be validated by the Prosecutor. In this phase, the right holder is often requested to support LEA by providing an expert witness report on the goods.

During the trial, the primary burden of proof rests with the Prosecutor who shall provide evidence that the seized goods were in the defendant’s possession and that they infringe an IP right (usually by filing a report that, as a rule, must be ‘confirmed’ in Court by the expert who signed it, thus becoming a Prosecution witness). 

The IP owner is entitled to exercise the rights and faculties provided by the law to the offended party of a crime (e.g., file a criminal complaint, receive updates and oppose the possible request for dismissal of the case and join the proceedings as civil claimant in order to seek damages).

Applicable criminal provisions may lead to a prison sentence of up to 6 years (in the case of aggravating circumstances). More severe penalties are provided if the counterfeiting is carried out in the context of a criminal organization. 

If the Court ascertains that the seized goods are counterfeit, confiscation of the same is always ordered, usually by way of destruction. Costs for judicial custody and destruction of counterfeit goods are paid in advance by the Italian State (that may recover them from the defendant in case of conviction). 

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1.2. Civil enforcement

The IP Code provides the statutory framework for most IP rights: patents, trademarks, domain names, design rights, utility models, trade secrets, geographical indications and denominations of origin. 

Copyright law provides the statutory framework for all creative works belonging to literature, music, figurative arts, architecture, theatre, cinematography and software, as well as databases when eligible for copyright protection. 

Art. 134 of the IP Code devolves jurisdiction over all disputes concerning IP (or indirectly connected to it) to 21 Specialised Court Sections.

The owner of a registered or unregistered IP right protected by the law can file an infringement action through main proceedings to have the Court ascertain the infringement, enjoin the defendant from using the IP right in Italy (or in the EU if the conditions are met), order the seizure and destruction of the infringing goods (as well as of the means predominantly used to produce them), order the withdrawal of the infringing goods from the market, establish a penalty for any subsequent violation of the Court’s order, award damages to the plaintiff, order the publication of the decision and award legal fees. Damages can be calculated in an amount corresponding to either the infringer’s profits or IP owner’s lost profits, whichever is the greater, to which compensation for any further damage, such as expenses incurred or damage to the IP owner’s image can be added. 

The Court may also, in certain circumstances, order that the infringer provides information on the origin and distribution network of the goods or the provision of services that violate the IP right. 

Since ordinary proceedings on the merits may last up to three years in Italy, depending on the circumstances of the case, it can be advisable to seek a preliminary court injunction, enjoining the adverse party from commercializing infringing goods, ordering their seizure and imposing a penalty for further infringement or issuing an order for a preliminary expert report.

To file a preliminary injunction claim the following conditions must be met: 

  • prima facie entitlement to the claim (so-called fumus boni iuris); and 
  • urgency of the claim (so-called periculum in mora). 

A preliminary injunction can also be granted ex parte, if making the defendant aware of the pending case could seriously prejudice the enforcement of the injunction. 

In most cases, a titled right is easier to protect. The registration of a trademark or a design, for instance, grants its owner an easier and more effective protection in Court as an industrial property title enjoys a presumption of validity until otherwise proven.

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1.3. Grey market and counterfeit goods

Article 5 of the IP Code provides that IP rights are exhausted once the branded goods have been put on the market, by the owner or with his consent, in the territory of the State or in the territory of a Member State of the European Union or the European Economic Area.

Therefore, in the absence of the IP owner's consent for marketing in the EU/EEA, the exhaustion of rights is not applicable. 

Also, the general principle of exhaustion does not apply when the owner has a legitimate reason to oppose the circulation of the goods, namely when the condition of the same has been modified or altered after being put on the market. In such cases, the IP owner may bring an action for infringement of his rights.

Italian case law (as well as EU case law) has clarified that the existence of a selective distribution system can also constitute a "legitimate reason" preventing the exhaustion of rights, provided that the product marketed is a luxury or prestigious one that justifies the choice to adopt a selective distribution system and that there is actual harm to the image or prestige of the brand. 

Under the same circumstances in which a civil action can be brought, while the seller of grey market goods is not subject to the penalties provided for the crime of counterfeiting (articles 473/474 of the criminal code), they could be subject to the penalty provided for the less severe crime provided for by article 517 ter of the criminal code (see Section 1. Criminal prosecution & civil enforcement).

Further, IP owners may raise a claim for unfair competition in case of counterfeit products which do not comply with EU Directive 2001/95/EC and/or the Consumer Code (Legislative Decree 206/2005) on general product safety or other legislation on hazardous products (such as REACH regulation), regardless of the sanctions that may be imposed by the relevant Authorities.

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1.4. Criminal v. civil enforcement

The main difference between civil and criminal enforcement is that to obtain a conviction for a criminal offence, the defendant’s wilful intent must always be proven, while this is not a condition in a civil case. 

The advantage of civil enforcement is that the action is pursued by the right holder who can, in a certain way, guide the proceedings, while in criminal proceedings the lead rests with the Prosecutor.

Further, civil enforcement is brought before IP Specialized Court Sections and therefore Judges have a greater knowledge of IP while Judges in criminal Courts are relatively inexperienced in IP matters, especially when the case does not involve a “traditional” word or device trademark.

Nevertheless, collecting evidence can be challenging in civil cases (the burden of proof rests with the plaintiff). In criminal enforcement, LEA can proceed to a seizure much more quickly and has access to effective means to collect evidence that may also lead to discovering connections with criminal organizations, within or outside the country. 

Also costs in civil proceedings can be higher, namely for the judicial custody of the seized goods (that must be paid in advance by the plaintiff and then be recovered from the infringer), while in criminal proceedings, costs for judicial custody and destruction are always paid in advance by the State (eventually then compensated by the defendant, if convicted). 

Naturally, the best option for the IP owner needs to be evaluated on a case-by-case basis.

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2 . Border enforcement

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2.1. Measures

Border enforcement is regulated by EU Reg. 608/2013. According to art. 3 of the regulation, an IP owner can request Customs’ intervention on goods entering the national territory by filing an Application for Action (AFA). An AFA can either be extended only to Italy (based on national or EU IP rights) or to the EU countries, all or some of them (based on EU IP rights).

Customs can proceed ex officio with the suspension or block of goods suspected of infringing an IP right, even if the owner has not filed an AFA. In this case, Customs authorities notify the suspension/block to the IP owner who can file a national AFA within 4 days.  

Customs proceed with the block or suspension of the goods suspected of infringing an IP right and notify the IP owner who will have 10 days (3 for perishable items) to confirm if the goods are counterfeit. This deadline can be extended for a further 10 working days. 

Since counterfeiting, as well as other related offenses, are crimes under Italian law, once the IP owner confirms that the goods are counterfeit, criminal proceedings start against the infringer. 

The goods are kept in judicial custody and the Court will also decide on their destruction (at the end of the trial or during the investigation phase of the proceedings).

Therefore, there are no storage and destruction costs for the IP owner.

The special procedure for small consignments has been applicable in Italy since 1 February 2022 with the entry into force of Law no. 238/2021, providing an administrative penalty for the “final consumer” bringing into Italy no more than 20 counterfeit goods/weight not over 5 kg. If the declared recipient of the goods agrees to or does not raise opposition after having been notified by Customs of the block of the goods, these are confiscated and destroyed.

AFA allows efficient monitoring of the EU borders by simply filing one application (no official fees applicable).

Almost all the IP rights protected by law can be listed in the AFA even though, when it comes to certain infringements, such as non-identical reproductions of a trademark, officers are sometimes reluctant to stop the goods and may invite the IP owner to start a civil action and notify Customs in order for them to seize the goods.

Under EU Reg. no. 2424/2015, border enforcement has been extended also to goods suspected of infringing an IP right that are in transit within the EU. 

This extension allows Customs to also act in case of flows of counterfeit goods which are, often only apparently, not destined for the European market.

Italian Customs cooperate with the other law enforcement agencies and they usually work with the full support of the Italian Tax Police. 

According to EU Reg. 608/2013, Customs – upon formal request - inform the IP owner of:

  • the names and addresses of the consignee, the consignor and the declarant or the holder of the goods for the Custom procedure; 
  • the origin and destination of the products; and 
  • the actual or estimated quantity of the goods. 

Pursuant to art. 21 of the Regulation, such information can be used for several purposes related to the infringement, including to initiate or during civil or criminal proceedings and to seek compensation from the infringer.

Custom officers are sometimes reluctant to provide the mentioned information when criminal proceedings have started due to the secrecy of investigations. 

In most cases criminal proceedings start against anyone who imports counterfeit goods and therefore, besides criminal penalties provided by the law for the infringer, the products get destroyed.

The IP owner may either participate as civil claimant in the criminal proceedings or start a civil action aimed at securing the most appropriate remedies (see Section 1. Criminal prosecution & civil enforcement: Criminal prosecution).

Basic information for the identification of infringing products must be entered in the Custom database when filing the AFA. 

Customs (as well as the other law enforcement authorities in Italy) are often - and willingly - involved in training programs which can be promoted and run also by the brand owners.

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2.2. Recent trends and COVID-19

The COVID-19 pandemic has certainly caused an even more substantial shift towards e-commerce which, anyway, was already a trend. Further, the flows of counterfeit goods into the country became more fragmented, i.e., the number of small parcels increased drastically. 

LEA have documented a lower number of seizures in warehouses and a consistently higher number of small parcels seizures. 

The importation and seizure of personal care equipment and food supplements have certainly increased during the pandemic. 

Customs even seized large flows of counterfeit fabric facemasks bearing well-known trademarks.

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3 . Online anti-counterfeiting enforcement strategies

Copyright Law (art. 171 ter 2. f-bis) prohibits and punishes (6 months up to 3 years in prison plus a fine) the manufacture, import and sale (or transfer) of technologies, devices and services designed primarily for the purpose of breaking digital locks.

Art. 174 ter punishes the person who [..] uses, copies or reproduces protected intellectual works or materials, also by circumventing technological protection measures. An order for the confiscation of the copies and of the devices aimed at the circumvention of technological protection measures is always issued.

The copy for personal use and not for profit is allowed, respecting the technological protection measures (art. 71 sexies).

Italy doesn’t have a specific legislation addressing the online sale of counterfeit goods and liabilities, remedies and punishments for selling counterfeit goods are the same whether the sales are online or in a physical place.

According to the law (decree 70/2003), the hosting provider is not obliged to monitor the content uploaded on a website. Nevertheless, it may be held responsible in case it participates, proactively facilitates, or derives earnings from the infringing activity or whether: 

  • it has been formally informed of the illegal content/activity of the hosted website; 
  • it was not aware of the content due to its gross negligence as reasonably expectable by a professional operator (Decision no. 25070/2021 Supreme Court).

When an IP owner becomes aware of an infringing activity, it may either activate a take-down procedure where available or: 

  • send a cease & desist letter and, if necessary, bring action before a Civil Court (or UDRP proceedings where applicable); 
  • report to LEA which may start criminal investigations and block the website; or
  • report to AGCOM (Authority for the Communications) which can order the ISPs, the uploader and the Webpage and Website Managers to disable access to the infringing content, as well as impose fines in case of non-compliance and report to LEA for further investigations.

When an online infringer also has a physical storefront, it is advisable to report to LEA since the Police can investigate and act, both with respect to online activities and at the physical storefront (by searching the infringer’s premises). LEA take a “follow the money” approach and therefore they also target any advertising or financial intermediary that is participating in transactions related to the illegal content/activity. 

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3.1. Domain names

The Italian ADR procedure is a WIPO-designed UDRP and is extremely effective. Complainants must prove ownership of prior rights on an identical or confusingly similar name (trademark rights or de facto trademark rights) and that the domain has been registered and is maintained in bad faith. The Respondent needs to show, on the contrary, a legitimate interest in the disputed domain name to prevail in the proceedings.

ADR procedures can be started by individuals or companies having the requirements for registration of a domain name under ccTLD.it and, namely, persons who have citizenship, residence or a registered office in the countries of the European Economic Area (EEA), the Vatican, Republic of San Marino and Switzerland. Foreign companies may act through their EU subsidiaries, branch office or licensee. 

Before filing the Complaint, it is mandatory to notify the Italian Domain Name Registration Authority (NIC it) of the right owner’s intention to challenge the ownership of the domain name. This procedure will ensure that the status of the domain name is changed to “challenged” and it will not be possible for the Registrant to transfer the domain until the procedure has been concluded or the challenged status expires (after 180 days if the challenge is not renewed).

The Italian Domain Name Registration Authority has confirmed that, since the beginning of the pandemic, terms such as coronavirus, covid19, covid, masks, mask, virus, Italy, free and antivirus have been extensively registered under the .IT extension. 

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3.2. Social media

The enormous spread of the use of social media along with the growth of e-commerce has entailed an increase in IPR infringements also on social media. 

EUIPO conducted a study in 2021 (published in February 2022) to better understand the volume and frequency of such infringements in six European countries, including Italy.

The analysis, by targeting public conversations of users, showed that social media platforms are tools used for recurrent IPR infringements for both physical products (i.e., clothing items, shoes, toys, pharmaceutical products, jewellery and watches) and digital content (i.e. films, music, e-books and video games). On one hand, Instagram was found to be the preferred channel of the infringement concerning physical products while Twitter and Reddit have proved to be more suitable for the promotion of digital content. 

With specific regard to Italy, the most discussed products in conversations related to IPR infringements are perfume and cosmetics, which are promoted by dupe influencers through online posts or unboxing videos.

Italian Tax Police strongly cooperates with Europol’s Intellectual Property Crime Coordinated Coalition (IPC³) and has participated in Operation Aphrodite (leading to a huge number of products seized, social media accounts and websites closed).

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4 . Additional information

CNAILCIS (National Council for the fight against counterfeiting and Italian Sounding) is the government body deputised to coordinate all the Italian administrations in the fight against counterfeiting. It is a particularly important body serving as point of contact for various Ministries, all the LEA and the main Italian trade and consumer associations.

The Council’s aim is to address the strategic priorities of the national anti-counterfeiting policy through programming of actions to combat counterfeiting and reach concrete results on the whole territory. 

Having a central body where all the stakeholders can address issues related to IP infringement is important to share information and best practices, as well as to discuss and propose amendments and improvements to the law in the proper venue.

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5 . Frequently asked questions

1. Is it possible to obtain the criminal conviction of the infringer and the destruction of the goods in the absence of an expert witness report filed by the IP owner? 

As a rule, Prosecutors ask the IP owner to file an expert report but, in some cases – usually when different brands are involved – the expert report is issued by a single expert appointed by the Office. Further, in the absence of an expert report, Judges can decide on the basis of different evidence (e.g., the testimony of officers particularly expert in anti-counterfeiting, the conditions of the goods, the way of selling them etc.).

Nevertheless, the filing of an expert report increases the chances that the goods get destroyed.    

2. Under Italian criminal Law, is it possible to obtain the seizure of goods that bear a non-identical reproduction of the registered trademark?

Yes, according to consistent case law, the crime of counterfeiting also occurs if the trademark is reproduced partially or in a non-identical way (as long as it is reproduced in a confusingly similar way). 

3. How long does it take for a civil Court to grant a preliminary injunction claim and, once a preliminary injunction is obtained, is the IP owner obliged to always start a case on the merits?

Preliminary injunction claims are usually examined and granted quickly, a few weeks for trademarks, designs and copyrights and a couple of months for patents (as a Court expert is appointed).

Injunctive relief may become final unless any of the parties starts the proceedings on the merits. Nevertheless, the IP owner needs to start proceedings on the merits in case it wishes to confirm a granted seizure order and/or to obtain compensation of damages/surrender of profits by the infringer.

EXPERT ANALYSIS

Chapters

Brazil

Tânia Aoki Carneiro

Canada

Lorne M. Lipkus
Melissa J. Tarsitano

China

Epstein Drangel - IP Counselors Beijing

Greece

Alkisti-Irene Malamis

Israel

Roy Kornick

Mexico

Diana Martínez
Roberto Arochi

The Netherlands

Fleur Boom
Gie van den Broek
Iris van der Wal

Spain

Ana Padial
Gonzalo Barboza
Miriam Anidjar Mogeda
Patricia Ramírez Melgen

Ukraine

Alexander Pakharenko

United Arab Emirates

Felicity Hammond
Munir Suboh

United Kingdom

Fiona Lawson
Simon Barker

United States

Ashly E. Sands
Danielle S. Futterman
Gabriela N. Nastasi
Jason M. Drangel
Kerry B. Brownlee

Uruguay

Agustina Viera
Daiana Pereira
Lucia Cantera
Virginia Cervieri