Investing in Italy: Intellectual Property

Italy offers a wide range of opportunities for foreign investors, especially those interested in acquiring Italian technologies, brands and distribution channels to secure a gateway to Europe.

In recent years the Italian Government has undertaken additional economic and legal reforms in a variety of areas in order to increase the country’s long-term growth, foster competitiveness worldwide and harmonise its domestic legal system with the rest of Europe.

This fourth article in a series of five delves into what investors such as private equity and venture capital firms need to know about intellectual property law in Italy.

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Following the adoption of the Intellectual Property Code (Codice della Proprietà Industriale), in force since 19 March 2005, the Italian legal system provides stronger and more effective enforcement of IP rights.

As Italy is party to the most important international IP treaties, foreign investors will find a favourable business environment that is in a position to secure their rights related to patents, copyrights, trademarks and designs, providing them with the same legal protection that Italy provides to its own nationals.

Patents are available for inventions of products or processes. They are granted by the Italian Patent and Trademark Office (the “IPTO”). Italy operates on a “first-to-file” basis, which grants the patent to the inventor who files it first.

The inventor must submit documentation setting out the description, drawings, tables and anything else that is necessary in order to prove novelty, an inventive step, industrial applicability and legality.

The IPTO carries out a search as to novelty of the patent application and provides it to the applicant and, with the support of the European Patent Office (the “EPO”), carries out a substantive examination into the validity of the patent: the outcome is usually reliable and the relevant costs are included in the patent application fees.

A patent application or an issued patent may always be challenged before the IP courts.

Protection lasts twenty years from the application date and cannot be renewed.

It is possible to obtain protection throughout Europe (as well as in a small number of non-EU countries) through European patents, by way of a single procedure initiated before EPO in Munich, Germany, and followed by national validations. In addition, in 2016 the Italian Parliament ratified the Agreement on a Unified Patent Court and in 2019 adopted the Legislative Decree No. 18/2019 introducing minor amendments to the Intellectual Property Code in order to coordinate internal legislation with the relevant European provisions on the unitary patent. Such provisions establish a unitary patent system, allowing patent protection in (currently) seventeen adhering EU Member States through a single procedure initiated before EPO but without the need for multiple validations in every State of interest; furthermore, the EU unitary patent system requires the payment of a single renewal fee directly to EPO; moreover, the relevant European provisions establish a supranational court with jurisdiction over such unitary patents (one of the branches of such court is located in Milan and will be operational starting from June 2024).

Finally, the Legislative Decree No. 102/2023 introduced a provision according to which in case the same invention is patented as both an Italian patent and a European Patent valid in Italy or a European unitary patent, all having the same filing or priority date, then the Italian patent will retain its effects and will coexist with the European one.

In addition, the Italian legal system also provides patents for utility models, granting protection to solutions suitable for conferring greater efficiency and/or improved convenience of use on objects, machines or parts of the latter. The requirements for patentability of a utility model are novelty (understood in the same terms as for inventions), an inventive step (of a lesser degree compared to inventions), legality and industrial applicability. Finally, protection lasts ten years from the application date and cannot be renewed.

A word, name, symbol, device and even a sound or colour (as recently set forth by the Legislative Decree No. 15/2019 that expressly eliminates the requirement of graphic representation of trademarks) that distinguishes one company’s product and service from those of others can be registered as a trademark and protected by registration with the IPTO, provided that some specific requirements are met. Further, according to the above mentioned Legislative Decree No. 15/2019, amending the Intellectual Property Code, it is also possible to request the trademark registration of the so-called “certification trademarks”, which certify that certain products or services satisfy specific features (e.g., in terms of materials and quality).

As a general rule, applicants must set out the categories of goods and services covered by their trademarks. If an identical or confusingly similar trademark already covers the same categories, the application is invalid; furthermore, if the trademark has a national reputation, protection is also extended, under certain conditions, to non-related goods or services. Application fees are made up of revenue stamps and office administration costs. An administrative procedure for opposing Italian and international trademark applications has been implemented in Italy since 2011.

A notice of opposition to a trademark application may be filed with the IPTO within 3 (three) months of the publication date of the relevant application in the Trademarks Official Bulletin (or, with reference to an international trademark application including Italy, from the first day of the month following the publication of the relevant application in the Gazette de l’Organisation Mondiale de la Propriété Intellectuelle des Marques Internationales) by either: the owner of an earlier (or effective from an earlier date) Italian trademark registration or application, or the exclusive licensee or the right holder over portraits, names or well-known signs.

It is not necessary in Italy to use symbols to indicate that a trademark has been filed or is registered.

Protection is also granted to non-registered trademarks; however, de facto trademarks generally enjoy limited protection compared to registered trademarks.

Foreign trademarks can be protected through registration as long as identical or similar trademarks are not already registered or used in Italy. Unlike patents, trademarks are not time limited and can be renewed every ten years. It is possible to obtain, through a single application, a European Trademark (the “ETM”) which is valid for all EU countries.

The ETM system is administered by the European Union Intellectual Property Office (the “EUIPO”) based in Alicante, Spain.

The IPTO can also grant design registrations. This provides legal protection for a product shape, drawing, decoration or other external decorative element.

Functional features are not protected. The requirements for the registration of a design are novelty, legality and individual character. Protection is given for a minimum period of five years from the application date and can be renewed five times for a total of up to twenty-five years. Moreover, Regulation (EU) No. 6/2002 introduced the European design, a unitary protection title that is valid for the entire European territory and is issued by the EUIPO through a cost efficient procedure; the regulation also provides special protection for unregistered designs: the author of an unregistered design that meets the requirements for a valid registration is granted an exclusive right on such design valid for three years from the date of first disclosure.

Applicants can choose between a number of international applications for patents, trademarks and designs in order to obtain worldwide protection through a single procedure.

The Italian Copyright Law (Law No. 633/1941) regulates the protection of various types of creative works including books, music, drawings, photographs, movies, software and TV broadcasting. Protection lasts for the author’s lifetime plus seventy years. Unlike patents or trademarks, formalities such as filing or registration are usually not required to enjoy copyright protection. The author’s rights generally result from the creation itself; however, it is advisable to carry out certain registration formalities to better identify the author or the creation date of a certain work.

Remedies against infringement of patents, trademarks, designs and copyrights can include interim and final injunctions and seizure of assets, compensatory damages, ban/recall of the infringing items and publishing of the court’s ruling at the infringer’s expense. The infringer may also be liable to criminal penalties under the Italian Criminal Code for the infringement or alteration of trademarks, patents, designs and copyrights and the sale and marketing of the infringing products.

Furthermore, companies and entities may be held liable and punished with economic and prohibitive penalties if criminal offences relating to IP rights are committed by their managers or employees. The relevant crimes include infringement of patents, trademarks, designs and copyrights, alteration of geographical indications or appellations of origin, sale and marketing of infringing products, other crimes against trade and commerce, and certain other criminal offences against copyright on software, music and films.

It should be noted that Italian law also safeguards confidential information (such as formulas, procedures or know-how) in three ways:

1. imposing duties of confidentiality on specific individuals and entities, such as employees or public bodies;
2. prohibiting espionage and other unfair behaviour; and
3. ensuring enforcement of non-disclosure and non-competition agreements between the parties concerned.

Confidential information may be protected as trade secrets, thus enjoying the jurisdictional measures applicable for the protection of industrial property rights, provided that it is:

1. confidential in nature;
2. kept secret by its owner through proper measures; and
3. has economic value as a consequence of its secrecy.

Italian legislation on trade secrets has been recently strengthened by the implementation, through the Italian Legislative Decree No. 63/2018, of the EU Directive No. 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

Breaches of geographical indications and appellations of origin are also frequently enforced to better protect the outstanding reputation of certain Italian products in terms of quality and style, especially in the wine and food sectors. The protection of such IP rights has been recently strengthened, inter alia, by establishing as an absolute ground for refusal of trademark registration the circumstance that the sign covered by the trademark application is in conflict with geographical indications and/or appellations of origin. There are also specific criminal rules against the use of the “made in” indication as well as other signs, devices or expressions which could incorrectly lead the consumer to think that products or goods are of Italian origin. In particular, the improper use of expressions such as “made/produced/manufactured in Italy”, “conceived/designed in Italy”, “Italian style/design” and similar, or even the use of a trademark in a misleading way, can be punished under the Italian Criminal Code if it could mislead the final user to believe that the product has an Italian origin when it has not. Finally, the legislation relating to the “made in Italy” has been recently renovated with Law No. 206/2023, introducing various novelties including, inter alia, the “Made in Italy label”, an official label created to counter the phenomenon of Italian sounding goods and certifying the authenticity of goods of Italian origin, which can be affixed on a voluntary basis by companies producing goods in Italy.

Specialized business courts, located in major Italian cities, also have jurisdiction over all IP related matters. In particular, proceedings where one of the parties is a foreign entity fall under the jurisdiction of a limited number of courts, located in only a few Italian cities (i.e., Milan, Turin, Venice, Genoa, Rome, Naples, Bari, Catania, Cagliari, Trento and Bolzano).

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Fabio Ilacqua is a Partner at Gianni & Origoni. Connect with him on LinkedIn here.