Intellectual property (IP) is property that constitutes an intangible asset, such as an invention, a literary or artistic work, a design, a name or an image. The lack of physical attributes differentiates IP from other types of property.
Here you will find an introduction to IP law and protection in Italy.
What are the types of IP?
A patent refers to the IP exclusive rights of exploiting an invention. This enables the owner to prevent others from making, selling, using, importing and/or exporting a good or service that is based on the invention. Patents last for 20 years starting from the filing date, subject to the payment of annual fees. An exception is made for some pharmaceutical patents which may receive, within certain limits, time extensions for protection.
There are three types of patents that can be granted:
- Utility – machines, products, processes or chemicals. It may also be granted for improvements to inventions. The protection lasts 20 years from the registration. This is the most common patent.
- Design – forms, objects, patterns, and other visual appearance characteristics of a 2D or 3D object. This only protects visual, not functional aspects of an invention. A Registered Design can be renewed every 5 years for a maximum term of 25 years. An unregistered design provides many of the same rights, but only for up to 3 years.
- Plants – invention or production of new plant species or varieties.
A trademark is any word, logo, graphic sign, sound, the shape of a product or its packaging, a colour combination or design that gives a distinguishing characteristic to a good or a service. Trademarks are important to help the consumer to establish the authenticity of the goods and/or the services and, above all, are used to protect brand assets, such as product names and to identify the source of a service, differentiating the product or the service from the competitors.
Since the number of filings for trademarks is always increasing in Italy and in the EU, based on the Italian sounding (for certain type of products that may be related to the “Made in Itay”, such as garments, food and jewellery), it is more difficult to find new trademarks to register and this leads also to an increase in the number of oppositions to new filings and actions on annulments of trademarks. We can help in this kind of disputes.
Law No. 58 of 28 June 2019 established the Register of National Interest Historical Trade Marks (introducing into the IP Code Articles 11 ter, 185 bis, and 185 ter). Registration in the register of historical trade marks constitutes an official recognition of the historical nature of the mark and it protects historical Italian businesses from being shut down and/or relocated abroad. Historical trade marks are either: 1) Registered in Italy for at least 50 years; Unregistered (de facto) and used in Italy for at least 50 years for goods or services.
A copyright refers to the original work of an artist, author or composer, such as books, artworks, but also innovation, in the form of software code. A copyright is a work which is both original and artistic in nature. The legal requirements include: 1) Novelty, 2) Creative character. Copyright protection arises automatically on creation of the work and no formalities are needed.
Copyright protection covers the lifetime of the creator up to 70 years after his/her death At the moment, in EU and in Italy, a creator can be only a human person and not a robot or an AI system.
The works created by AI or software may be protected by copyright provided that they are novel and have a creative character “reflecting the personality of its human creator”. So the test of creativity is actually stricter for AI works.
This was discussed in a recent Italian ruling n. 1107 of 16 January 2023, where the Italian Supreme Court confirmed that the digital image “The Scent of the Night” used by RAI, the Italian Radio television Broadcaster, as the scenography of the Italian Songs Festival in 2016, was protected by copyright: its reproduction without permission constituted a violation of the author’s rights. The Supreme Court recognized that the work obtained through a software, a digital image with a “fractal” floral subject (i.e a repetition of its forms on different scales of magnitude), was sufficiently original and creative. The Supreme Court added that the digital image was capable of reflecting the personal view of its author who had expressed her free and creative choices. Therefore, the scenography of the Italian festival which reproduced this work, without permission, was a copyright violation and the Italian radio television broadcasting company was condemned to pay damages (40.000 euro) to the author.
A trade secret is confidential information that a business uses and improves in order to maintain a competitive position in its market. It can be a manufacturing, industrial or commercial asset. Some examples of trade secrets are manufacturing processes, marketing strategies, sales methods, lists of suppliers and clients.
Trade secrets may have an unlimited period of protection. However, according to Articles 98 and 99 of the Italian Industrial Property Code, in order to be entitled to legal protection, the holder of a trade or industrial secret should adopt adequate measures aimed at keeping the information confidential, measures which generally include contractual undertakings of non-disclosure.
The Italian law on trade secrets is generally viewed as one of the most protective in Europe. Italy enacted also the EU provisions of the Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
Intellectual property rights in Italy
IP rights in Italy are well developed.
Italy is party to the main international IP treaties and namely:
- Patent Cooperation Treaty 1970 (PCT)
- European Patent Office (EPO)
- WIPO Madrid Agreement Concerning the International Registration of Marks 1891
- Paris Convention for the Protection of Industrial Property 1883
Italian Civil Code and the Industrial Property Code
Italian Civil Code and the Industrial Property Code incorporate and enact the IP provisions of the European and international legislation. These Italian laws contain the rules related to trademarks, patents, inventions, models, designs etc. and the way in which they can be protected, used or sold.
IP Institutions in Italy
Italian trademarks and patents
The IP Office (Ufficio Italiano Brevetti e Marchi) for the registration of trademarks and patents in Italy is the Ufficio Italiano Brevetti e Marchi (UIBM).
Copyright in Italy
The main office which collects the rights of the authors in Italy is the SIAE (Italian Company of the Authors and Editors)
The Italian Communications Authority (AGCOM)
The Italian Communications Authority (AGCOM) is the authority which has the power to block access to computer servers and web sites located in Italy if there is an online infringement of copyright. However, piracy is also a global problem, since many infringers provide illegal content through servers located outside Italy.
The registration of a EU trademark, which is valid also in Italy may be asked to the European Union Intellectual Property Office (EUIPO)
The registration of a patent which is valid also in Italy may be asked to the European Patent Office (EPO). The first of June 2023, the EU Unitary Patent and the Unified Patent Court system has started to work. This is a cost-effective option for patent protection and dispute settlement across Europe.
The Unitary Patent
Now it is possible to get patent protection in 17 EU Member States by submitting a single request to the EPO, making the procedure simpler and more cost effective for applicants.
The Unified Patent Court
The Unified Patent Court (UPC) is an international court set up by participating EU Member States to deal with the infringement and validity of both Unitary Patents and European patents, putting an end to costly parallel litigation and enhancing legal certainty.
How to protect Intellectual Property in Italy
For effective protection of intellectual property (IP) rights in Italy, it is important, first of all, to have an overall strategy to protect your IP.
Secondly, IP may be protected differently in Italy than in other countries. Registration in Italy and/or European Union might be required to protect your IP and enforce it in Italy under local laws. For example, trademarks, design or utility patents will be protected in Italy if they are registered according to the administrative procedures at the EU or national level. Therefore, you should consider how to get trademark, design or patent protection before introducing your products or services in the Italian market.
Trademark and design titles can be obtained for the whole of the EU at the EU Intellectual Property Office (EUIPO), based on a first-to-file system. Individual trademarks valid only for Italy can also be obtained at the national IP office.
Similarly, as indicated in the paragraph above, a Unitary Patent can be obtained for 17 EU countries, including Italy, through a simplified process at the European Patent Office; an individual patent title can be directly obtained from the patent office in Italy. There are also other international registration systems such as the Patent Cooperation Treaty for patents or the Madrid Protocol for trademarks, which could help protect your IP in many countries of the world, including Italy.
On the contrary, copyrighted works are automatically protected in Italy from the date of creation or publication according to applicable international agreements. However, the extension of protection and the relevant enforcement rights against unauthorized use will vary according to the laws of Italy and the EU. As an example, in December 2021, Italy enacted the EU Copyright in the Digital Single Market (CDSM) Directive. The Italian version is more lenient on sharing the digital search results unless rights holders “opt out.’” The Italian law also recognizes the exception to copyright for cultural heritage preservation: the reproduction of works permanently held by cultural heritage institutions cannot be limited by a contract. The law also allows schools to use sections of copyrighted materials without the copyright holder’s permission if used in secure online systems accessed only by students and teachers.
Protect your IP before entering the Italian market
Before entering a market or dealing with a local partner in Italy, it is vital to protect IP rights, because little can be done for the right-holders that have not taken the steps necessary to secure and enforce their IP in a timely way.
Seek legal advice and enforce your IP rights
It is important to seek specialized legal advice from the beginning and to enforce IP rights timely. Right-holders who delay registration on enforcement of their rights may find that their rights have been harmed or reduced due to legal problems such as Italian or EU statutes of limitations, passing of time without prosecuting a lawsuit or without impeding third-party’s unauthorized use. In Italy, specialized tribunals are competent for IP disputes and procedural rules and remedies may differ from those available in Italian ordinary disputes.
Choose the right Italian business partners
Italian partners such as distributors or licensees may be good ally in protecting IP or detecting potential third-party’s infringements. However, it is always advisable to choose the right Italian partners and get all the relevant information before starting a collaboration and supplying confidential information or consenting your partner to register IP rights on your behalf in Italy. It is important to work with legal counsel familiar with EU and Italian law to create a well structured contract including non-compete clauses and confidentiality/non-disclosure provisions, as well as defining the use of IP rights during and after the partnership.
All businesses should seek IP protection and fight counterfeiting
IP protection is important for all companies not only for luxury brands and very big enterprises.
We give advice to foreign small and medium size companies, helping them to understand the importance of protecting IP and stop counterfeiting. As an example, we help small and medium size companies to alert the Italian customs agency, Agenzia delle Dogane (AD) which controls Italian ports and has a good track record for interdicting counterfeit and substandard goods coming into Italy and the European Union.
Moreover, usually, we help companies to create or revise contracts including non-compete clauses and to define the use of IP rights during and after their partnerships.
For any information you may contact us.