{"id":29075,"date":"2023-06-23T16:02:17","date_gmt":"2023-06-23T15:02:17","guid":{"rendered":"https:\/\/www.lexibc.com\/?p=29075"},"modified":"2023-06-23T16:04:36","modified_gmt":"2023-06-23T15:04:36","slug":"what-is-intellectual-property-in-italy","status":"publish","type":"post","link":"https:\/\/www.lexibc.com\/en\/what-is-intellectual-property-in-italy\/","title":{"rendered":"What is Intellectual Property in Italy?"},"content":{"rendered":"<p>Intellectual property (IP) is\u00a0 property that constitutes <strong>an intangible asset, such as an invention, a literary or artistic work, a design, a name or an image. <\/strong>The lack of physical attributes differentiates IP from other types of property.<\/p>\n<p>Here you will find an introduction to IP law and protection in Italy.<\/p>\n<h2>What are the types of IP?<\/h2>\n<h3><strong><u>Patent<\/u><\/strong><\/h3>\n<p>A patent refers to the IP exclusive rights of exploiting an invention. This enables the owner to <strong>prevent others from making, selling, using, importing and\/or exporting a good or<\/strong> 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.<\/p>\n<p>There are three types of patents that can be granted:<\/p>\n<ul>\n<li><strong><em>Utility<\/em><\/strong> \u2013 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.<\/li>\n<li><strong><em>Design<\/em><\/strong> \u2013 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.<\/li>\n<li><strong><em>Plants<\/em><\/strong> \u2013 invention or production of new plant species or varieties.<\/li>\n<\/ul>\n<h3><strong><u>Trademark<\/u><\/strong><\/h3>\n<p><strong>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<\/strong> 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.<\/p>\n<p>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 \u201cMade in Itay\u201d, 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 <a title=\"Industrial Property Law and Copyright Law\" href=\"https:\/\/www.lexibc.com\/en\/industrial-property-and-copyright-law\/\" rel=\"\">this kind of disputes<\/a>.<\/p>\n<p>&nbsp;<\/p>\n<blockquote><p>Law No. 58 of 28 June 2019 established the Register of <strong>National Interest Historical Trade Marks <\/strong>(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.<\/p><\/blockquote>\n<h3><u>Copyright<\/u><\/h3>\n<p>A copyright refers to the original work of an artist, author or composer, such as books, artworks,\u00a0 but also innovation, in the form of software code. <strong>A copyright \u00a0is a<\/strong> 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.<\/p>\n<p><strong>Copyright protection covers the lifetime of the creator<\/strong> 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.<\/p>\n<p>The works created by AI or software may be protected by copyright provided that they are novel and have a creative character \u201creflecting the personality of its human creator\u201d. So the test of creativity is actually stricter for AI works.<\/p>\n<p>&nbsp;<\/p>\n<blockquote><p>This was discussed in a recent <a title=\"Sentenza n.1107 del 26 Gennaio 2023\" href=\"https:\/\/www.italgiure.giustizia.it\/xway\/application\/nif\/clean\/hc.dll?verbo=attach&amp;db=snciv&amp;id=.\/20230116\/snciv@s10@a2023@n01107@tO.clean.pdf\" rel=\"nofollow noopener\" target=\"_blank\">Italian ruling n. 1107 of 16 January 2023<\/a>, where the Italian Supreme Court confirmed that the digital image &#8220;The Scent of the Night&#8221; 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&#8217;s rights. The Supreme Court recognized that the work obtained through a software, a digital image with a &#8220;fractal&#8221; 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.<\/p><\/blockquote>\n<p>&nbsp;<\/p>\n<h3><strong><u>Trade Secrets<\/u><\/strong><\/h3>\n<p>A trade secret is confidential information that a business uses and improves in order to maintain a competitive position in its market. <strong>It can be a manufacturing, industrial or commercial asset<\/strong>. Some examples of trade secrets are manufacturing processes, \u00a0marketing strategies, sales methods, lists of suppliers and clients.<\/p>\n<p><strong>Trade secrets may have an unlimited period of protection<\/strong>. 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 <a title=\"NDA and Confidentiality Agreements in Italy\" href=\"https:\/\/www.lexibc.com\/en\/nda-and-confidentiality-agreements-in-italy\/\" rel=\"\">contractual undertakings of non-disclosure<\/a>.<\/p>\n<p>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 <a title=\"Directive (EU) 2016\/943\" href=\"https:\/\/eur-lex.europa.eu\/legal-content\/EN\/TXT\/?uri=CELEX%3A32016L0943\" rel=\"nofollow noopener\" target=\"_blank\">Directive (EU) 2016\/943 <\/a>on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.<\/p>\n<p>&nbsp;<\/p>\n<h2><strong>Intellectual property rights in Italy<\/strong><\/h2>\n<p>IP rights in Italy are well developed.<\/p>\n<p>Italy is party to the main international IP treaties and namely:<\/p>\n<h3><strong>Patents<\/strong><\/h3>\n<ul>\n<li><em>Patent Cooperation Treaty 1970 (PCT)<\/em><\/li>\n<li><a title=\"European Patent Office\" href=\"https:\/\/www.epo.org\/\" rel=\"nofollow noopener\" target=\"_blank\"><em>European Patent Office (EPO)<\/em><\/a><\/li>\n<\/ul>\n<h3><strong>Trade Marks<\/strong><\/h3>\n<ul>\n<li><a title=\"Madrid Agreement 1891\" href=\"https:\/\/www.wipo.int\/treaties\/en\/registration\/madrid\/summary_madrid_marks.html\" rel=\"nofollow noopener\" target=\"_blank\"><em>WIPO Madrid Agreement Concerning the International Registration of Marks 1891<\/em><\/a><\/li>\n<li><a title=\"Paris Convention 1883 - Protection of IP\" href=\"https:\/\/www.wipo.int\/treaties\/en\/ip\/paris\/summary_paris.html\" rel=\"nofollow noopener\" target=\"_blank\"><em>Paris Convention for the Protection of Industrial Property 1883<\/em><\/a><\/li>\n<\/ul>\n<h3><strong>Copyright<\/strong><\/h3>\n<ul>\n<li><a title=\"Berne Convention\" href=\"https:\/\/www.wipo.int\/treaties\/en\/ip\/berne\/\" rel=\"nofollow noopener\" target=\"_blank\"><em>Berne Convention for the Protection of Literary and Artistic Works<\/em><\/a><\/li>\n<\/ul>\n<h3><strong>Design Rights<\/strong><\/h3>\n<ul>\n<li><a title=\"Hague Agreement\" href=\"https:\/\/www.wipo.int\/treaties\/en\/registration\/hague\/summary_hague.html\" rel=\"nofollow noopener\" target=\"_blank\"><em>Hague Agreement Concerning the International Registration of Industrial Designs 1925<\/em><\/a><\/li>\n<\/ul>\n<h3><strong>Italian Civil Code and the Industrial Property Code<\/strong><\/h3>\n<p>Italian Civil Code and the <a title=\"Industrial Property Code\" href=\"https:\/\/www.wipo.int\/wipolex\/en\/legislation\/details\/21556\" rel=\"nofollow noopener\" target=\"_blank\">Industrial Property Code<\/a> 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.<\/p>\n<p>&nbsp;<\/p>\n<h2>IP Institutions in Italy<\/h2>\n<h3><strong>Italian trademarks and patents<\/strong><\/h3>\n<p>The IP Office (<a title=\"Ufficio Italiano Brevetti e Marchi\" href=\"https:\/\/uibm.mise.gov.it\/index.php\/it\/\" rel=\"nofollow noopener\" target=\"_blank\">Ufficio Italiano Brevetti e Marchi<\/a>) for the registration of trademarks and patents in Italy is the Ufficio Italiano Brevetti e Marchi (UIBM).<\/p>\n<h3><strong>\u00a0Copyright in Italy <\/strong><\/h3>\n<p>The main office which collects the rights of the authors in Italy is the SIAE (<a title=\"SIAE\" href=\"https:\/\/www.siae.it\/it\" rel=\"nofollow noopener\" target=\"_blank\">Italian Company of the Authors and Editors<\/a>)<\/p>\n<h3><strong>The Italian Communications Authority (AGCOM)\u00a0<\/strong><\/h3>\n<p>The <a title=\"AGCOM\" href=\"https:\/\/www.agcom.it\/piattaforme-online\" rel=\"nofollow noopener\" target=\"_blank\">Italian Communications Authority (AGCOM)<\/a> 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.<\/p>\n<h3><strong>EU Trademark<\/strong><\/h3>\n<p>The registration of a EU trademark, which is valid also in Italy may be asked to the <a title=\"EUIPO\" href=\"https:\/\/euipo.europa.eu\/ohimportal\/en\" rel=\"nofollow noopener\" target=\"_blank\">European Union\u00a0Intellectual Property\u00a0Office (EUIPO)<\/a><\/p>\n<h3><strong>EU Patent<\/strong><\/h3>\n<p>The registration of a patent which is valid also in Italy may be asked to the <a title=\"EPO\" href=\"https:\/\/www.epo.org\/\" rel=\"nofollow noopener\" target=\"_blank\">European Patent Office (EPO)<\/a>. 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.<\/p>\n<h4><strong>\u00a0The Unitary Patent<\/strong><\/h4>\n<p>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.<\/p>\n<h4><strong>The Unified Patent Court<\/strong><\/h4>\n<p>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.<\/p>\n<p>&nbsp;<\/p>\n<h2><strong>How to protect Intellectual Property in Italy<\/strong><\/h2>\n<p>For effective protection of\u00a0intellectual property\u00a0(IP) rights in Italy, it is important, first of all, to have <strong>an overall strategy<\/strong> to protect your IP.<\/p>\n<p>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.\u00a0For example, <strong><u>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.\u00a0<\/u><\/strong>Therefore, you should consider how to get trademark, design\u00a0or patent protection before introducing your products or services in the Italian market.<\/p>\n<p>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.<\/p>\n<p>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 <a title=\"Patent Cooperation Treaty\" href=\"https:\/\/www.uspto.gov\/patents\/basics\/international-protection\/patent-cooperation-treaty\" rel=\"nofollow noopener\" target=\"_blank\">Patent Cooperation Treaty<\/a> for patents or the <a title=\"Madrid Protocol\" href=\"https:\/\/www.uspto.gov\/trademarks\/laws\/madrid-protocol\" rel=\"nofollow noopener\" target=\"_blank\">Madrid Protocol<\/a> for trademarks, which could help protect your IP in many countries of the world, including Italy.<\/p>\n<p>On the contrary, <strong><u>copyrighted works are automatically protected in Italy from\u00a0the date of creation or publication <\/u><\/strong>according to applicable international agreements.\u00a0However, 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 \u201copt out.\u2019\u201d 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.\u00a0 The law also allows schools to use sections of copyrighted materials without the copyright holder\u2019s permission if used in secure online systems accessed only by students and teachers.<\/p>\n<h3><strong><em><u>Protect your IP before entering the Italian market<\/u><\/em><\/strong><\/h3>\n<p>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.<\/p>\n<h3><strong><u>Seek legal advice and enforce your IP rights<\/u><\/strong><\/h3>\n<p>It is important to seek specialized legal advice from the beginning and to enforce IP rights timely. Right-holders who delay\u00a0registration on enforcement\u00a0of\u00a0their 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\u2019s unauthorized use.\u00a0 In Italy, specialized tribunals are competent for IP disputes and procedural rules and remedies may differ from those available in Italian ordinary disputes.<\/p>\n<h3><strong><em><u>Choose the right Italian business partners <\/u><\/em><\/strong><\/h3>\n<p>Italian partners such as distributors or licensees may be good ally in protecting IP or detecting potential third-party\u2019s 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\u00a0IP rights on your behalf in Italy.\u00a0It 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.<\/p>\n<h3><strong><em><u>All businesses should seek IP protection and fight counterfeiting<\/u><\/em><\/strong><\/h3>\n<p>IP protection is important for all companies not only for luxury brands and very big enterprises.<\/p>\n<p>We give advice to foreign small and medium size companies, helping them to understand the importance of protecting IP and stop counterfeiting.\u00a0 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.<\/p>\n<p>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.<\/p>\n<p>For any information you may <a title=\"Contact\" href=\"https:\/\/www.lexibc.com\/en\/contacts\/\" rel=\"\">contact us<\/a>.<\/p>\n<p>&nbsp;<\/p>\n","protected":false},"excerpt":{"rendered":"<p>Intellectual property (IP) is\u00a0 property that constitutes an intangible asset, such as an invention, a literary or artistic work, a&#8230;<\/p>\n","protected":false},"author":5,"featured_media":29076,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[13],"tags":[],"class_list":["post-29075","post","type-post","status-publish","format-standard","has-post-thumbnail","category-news_post"],"menu_order":0,"_links":{"self":[{"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/posts\/29075","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/users\/5"}],"replies":[{"embeddable":true,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/comments?post=29075"}],"version-history":[{"count":1,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/posts\/29075\/revisions"}],"predecessor-version":[{"id":29080,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/posts\/29075\/revisions\/29080"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/media\/29076"}],"wp:attachment":[{"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/media?parent=29075"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/categories?post=29075"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.lexibc.com\/en\/wp-json\/wp\/v2\/tags?post=29075"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}