Information / Faqs

FAQ - Enforcement

What are the available options for the enforcement of intellectual property rights in Italy?

There are several available options for the enforcement of intellectual property rights in Italy.

  • Out-of court actions – putting pressure on the infringer in a number of cases is sufficient to terminate an infringing activity.
  • Interim measures – these are effective in stopping the infringing activity and are obtainable in a short time.
  • Court actions – according to the circumstances civil and criminal proceedings are both available options.
  • Application for customs action – customs may take action against goods suspected of infringing intellectual property rights according to a procedure set forth by a European regulation which the Italian Customs are very proactive in applying.

Who can represent parties before Italian courts?

Only lawyers registered with Italian Bars can represent parties before Italian courts. Patent and trademark attorneys are not allowed to represent clients before Italian courts but they can appear as ex parte experts.

Do Italian courts follow the reasoning of foreign courts that have issued decisions in similar cases?

Since virtually all basic principles of intellectual property law have been harmonised throughout the European Union, Italian courts must of course take into consideration decisions rendered by the Court of Justice of the European Communities, but may also be attentive to the reasoning of foreign courts that have issued decisions in similar cases. Foreign case law may also provide useful arguments, if suitably presented.

Can infringement and invalidity actions take place simultaneously?

Infringement and invalidity actions can take place simultaneously. As a matter of fact it is quite usual for a defendant in an infringement action to counterclaim the invalidity of the allegedly infringed intellectual property right as part of the same proceedings. Likewise, where a declaratory judgment for non infringement of a right is sought, the right holder may counterclaim infringement of the right. Each party bears the burden of proving the alleged invalidity or infringement, and may submit any kind of evidence.

Does Italy have specialised intellectual property courts?

In 2003 Italy introduced specialised intellectual property sections – renamed as business law sections in 2012 – in the courts of Turin, Milan, Venice, Trieste, Genoa, Bologna, Florence, Rome, Naples, Bari, Catania and Palermo. The experience of these courts is considerable due to the fact that they have exclusive jurisdiction on civil litigation concerning intellectual property.