1. SPECIALIZED TRADEMARK COURTS – THE ITALIAN EXPERIENCE
19th ANNUAL CONFERENCE
FORDHAM INTELLECTUAL PROPERTY LAW INSTITUTE
Fordham University School of Law
Thurday and Friday, April 28-29, 2011
Hugh C, Hansen
Director
SPECIALIZED TRADEMARK COURTS –
THE ITALIAN EXPERIENCE 
Marina Tavassi – President of IP Specialised Court of Milan, Italy

2. Protection of Intellectual Property Rights
Marina Tavassi
Intellectual Property Specialized Court of Milan
Protection of Intellectual Property Rights
before the Italian Specialized Courts
How it works
The Italian Supreme Court
in Rome

3. The modernisation process regarding the protection of Intellectual Property rights.
The creation of the Specialized Courts in Industrial and Intellectual Property (Law Decree n. 168/2003):
12 Courts of first degree and 12 Courts of Appeal throughout Italy, dealing with:
- industrial and intellectual property law,
- unfair competition, only recognised as “interfering” with IP rights,
- competition, whether “interfering” with IP rights.
The Specialized Divisions were established at the District Courts and Courts of Appeal of Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice
Industrial Property Code (patents, trademarks, designs and models, biotechnologies, …)
Law Decree 10 February 2005 n. 30.

4. Venues of the Specialized Courts
(art. 120, par. 4., IPC – D.Lgs 27 giugno 2003, n. 168)
Milano
Torino
Genova
Firenze
Napoli
Palermo
Trieste
Venezia
Bologna
Roma
Bari
Catania
(no court in
Sardinia)

5. Decisions of Specialized Courts (July 03 - December 10) “Le Sezioni Specializzate italiane della proprietà industriale e intellettuale” (Italian IP Courts Report a cura di Massimo Scuffi - Marina Tavassi) data elaboration: Giovanni F. Casucci MIP Politecnico Milano
Copyright 16%
Patents 15%
Patents 15%
Unfair competition 14%
patents
trademarks
designs
unfair competition
copyrights
Designs - Models 13%
Trademarks 42%

6. Decisions of Specialized Courts (July 03 - December 10) “Le Sezioni Specializzate italiane della proprietà industriale e intellettuale” (Italian IP Courts Report a cura di Massimo Scuffi - Marina Tavassi) data elaboration: Giovanni F. Casucci MIP Politecnico Milano
Italian 37%
European 29%
International 34%

7. Decisions of Specialized Courts (July December 2010) “Le Sezioni Specializzate italiane della proprietà industriale e intellettuale” (Italian IP Courts Report – by Massimo Scuffi - Marina Tavassi) data elaboration: Giovanni F. Casucci MIP Politecnico Milano
Venice 7 %
Bari 4 %
Trieste 0,5 %
Trieste 0,5 %
Bologna 8 %
Catania 3 %
Turin 12 %
Florence 5 %
Genoa 2 %
Rome 22%
Milan 26 %
Palermo 0,5 %
Naples 10 %

8. Types of actions available in Italy before the Specialized Courts
actions for infringement
actions for revocation or nullity of the patent, trademark, design and model
actions to attribute the right to the owner
actions for damages
actions for interim measures (including seizures, injunctions, penalties, publication of the decision)

9. THE ITALIAN SPECIALIZED COURTS
They decide the cases in a panel of three judges
No enlarged courts (not including technical experts)
Each Division usually consists of six/eight judges, in addition to the president
They work with an ultra-district (European / international) perspective
They also act as European Courts for European trademarks, designs and models

10. EXPERT WITNESSES IN I.P. LITIGATIONS
Assessment of patent: object of patent; novelty; inventive step (prior art); industrial character; sufficient description
Technical elements to appreciate the existence of the infringement and its consequences
Indication of possible remedies
Purchase of goods by the infringer company
Estimate of the possible royalties
Technical elements to calculate damages (loft of profits, benefits realized by the infringer, fees that the infringer would have paid in case of licence)
Peculiarities of the role of the expert in intellectual property law and competition

11. THE EXPERT WITNESS in Italian case law
He/she can not discharge the burden of proof charged to the parties
can not be explorative
has to provide the judge with the technical elements necessary to appreciate the right or to liquidate damages, without replacing the judge’s evaluation

12. MEANS OF EVIDENCE for pending litigations in IP cases The Italian background
at party’s own initiative:
documents production
testimonial evidence
formal examination of the opposite party
submission of decisive oath
request for documents exhibition order (Article 210 Civil Procedure Code)
petition to the judge in order to acquire information in possession of the opposite party
request for technical expertise

13. MEANS OF EVIDENCE at judge initiative inspections
request for information to Public Administration
inspections
free examination of the parties
investigation of the testimonial evidence
technical expertise
OTHER MEANS OF EVIDENCE:
presumptions
common experiences advices
parties’ behaviour (Art. 116 Civil Proc. Code):
refusal to render the examination, to allow the inspections, to
obey to the order of exhibition or acquisition of information.

14. Typical evidence and injunctions
Production of evidence by the opposing party (Article IP Code);
Collecting information through the examination of the opposing party (discovery: Article 121 bis IPC);
Order to provide all the elements necessary to identify the subjects involved in the production and distribution of the infringing goods or services and of their channels of distribution (Article 121.1, IPC);
Measures to guarantee protection of reserved information (Article 39 TRIPs; Article IP Code);
Seizure or description of evidence of the reported violation (Articles );
Possibility to ask for the appointment of an expert in a pretrial phase (Article 128 IPC).

15. Precautionary measures of the Italian civil procedure code
Order of facere
General atypical measures (Article 700 c.p.c.
Order of non facere (injunction: to refrain from doing or continuing to do a particular act or activity)
M.Tavassi

16. Precautionary measures of the Intellectual Property Code
Description (art.130 I.P.Code)
Protection of confidential information
Seizure (art.130 I.P.Code):
- items infringing the right
- means to manufacture them
evidence
IP Rights : Patents, Trademarks, other distinctive signs, geographical indications, designation of origin, designs and models, utility models, new plants varieties, topographies of semiconductor products, know how, biotechnologies.
This measures may be issued even while the registration or patenting is still pending (art. 132 I.P. Code)
Injunction (art.131 I.P. Code)
Provisional protection of domain names art.133 I.P.Code
Provisional seizure (against piracy ex art. 144-bis)
Marina Tavassi

17. Article 125 IP Code DAMAGES
Art Damages and return of profits made by the infringer:
1. The damages due to the aggrieved party shall be quantified pursuant to Articles 1223, 1226 and 1227 of the Civil Code, taking into account all appropriate aspects, such as prejudicial economic consequences, including loss of profits, which the owner of the infringed right has suffered, the benefits realized by the infringer and, whenever appropriate, aspects other than those of an economic nature such as moral prejudice caused to the rights owner by the infringement.
2. A judgment ordering damages may quantify the damage in an overall amount fixed on the basis of the records in the case and of the presumptions inferred therefrom. In this case the loss of profit is fixed in an amount not lower than the amount of the fees that the infringer would have paid had he obtained the licence from the owner of the infringed right.
3. In any event, the owner of the right may demand the return of all profits made by the infringer either as an alternative to the reimbursement for loss of profits or for the amount exceeding such reimbursement

18. Italian Specialized Courts have they been successful?
YES, for different reasons:
i) reduction of the number of courts
involved
ii) certainty in law
iii) high degree of specilization of judges
iv) improved skill in the precautionary trial
v) reduction of the length of the trials
vi) increasing quality of the decisions

19. The Italian Supreme Court
Thank you for your attention!
The Italian Supreme Court
in Rome