Fabrizio DE BENEDETTI

Chair of BoA - Head of trademarks

Fabrizio De Benedetti

Experience

Fabrizio has over 40 years’ practice covering all aspects of intellectual property rights.

He is widely recognised for his substantial contribution to the preparation of Italian and European laws in the field of trademarks and of intellectual property in general, as well as for his membership in ministerial committees in charge of:

  • Implementation of the Industrial Property Code (IPC) in application of the European Union Trademarks directive (2017-2019).
  • Integration into the IPC of the rules for the implementation of the Unified Patent Court Agreement (2016).
  • Preparation of the so-called IPC Corrective decree (2010).
  • Preparation of the IPC Implementation rules (2010).
  • Reordering of legislation and preparation of the IPC (2002-2003).
  • Revision of design legislation for the implementation of Directive 98/71/EC (2001).
  • Application of the Madrid Protocol in Italy (1996).
  • Application of the TRIPs Agreement in Italy (1995).
  • Revision of Italian Trademark Law (1990-92).
  • Revision of Italian Inventions Law and integration of European Patent law (1979-80).

Consequently, Fabrizio possesses a global vision of Italian and European intellectual property legislation which is an invaluable asset in advising on particularly complex points of law, or on the application of new provisions at European and international level.

He has been a member of the Government Committee for the creation of the professional register of the Italian Industrial Property Consultants Institute and subsequently for many years Vice President and President of the Institute itself; he later sat on the Institute’s Board until 2015.

He is currently a member of the Academy of the Italian Patent and Trademark Office, along with a select group of accredited experts.

During his extensive career he has assisted many Italian and foreign clients in diverse and complex contexts involving several countries not only for aspects concerning the protection and enforcement of trademarks, patents, designs, copyrights and know-how, but also in connection with international agreements and contracts, transfers of intellectual property rights, portfolio audits and evaluations.

Evaluation of intellectual property rights

In 1986 he devised and developed the first method for the economic evaluation of trademarks (known as “royalty-based method”) that was quickly adopted as a global standard and is still recognised as the most valid method.

He has carried out hundreds of evaluations of trademarks, patents and designs for renowned companies including Istituto Poligrafico e Zecca dello Stato, Enel Trade S.p.A., B.Ticino, Gucci, Expansion Electronic, Alinari, Buitoni, Perugina, Purina, Magaldi Ricerche e Brevetti S.r.l. and other companies of the Nestlé Group.

He heads the SIB team dedicated to the evaluation of intellectual property rights.

He has published contributions on the evaluation of intellectual property rights in the following books:  “Proprietà intellettuale e concorrenza” edited by Gustavo Ghidini and Giovanni Cavani (Zanichelli Editore, 2022 and 2023 editions); “La valutazione del marchio “Perugina” in “Il marchio In & Out” edited by Stefano Sandri (McGraw-Hill, 1998); “Il valore dei marchi alla luce della nuova legge del 1992” in “La riforma della legge marchi”, edited by Gustavo Ghidini (Cedam, 1995).

On 29 November 2022 he held a presentation on the evaluation of intellectual property assets for the Academy of the Italian Patent and Trademark Office.

Lecturing and publishing

Fabrizio is often invited to speak at conferences at university and international level on many aspects of intellectual property, in Europe and in many other countries, particularly on trademark issues.

He has authored articles, comments and contributions in Italy and abroad and is co-author of “Proprietà intellettuale e concorrenza”, edited by Gustavo Ghidini and Giovanni Cavani (Zanichelli Editore, 2022 and 2023 editions), as well as of “Commentario al Codice di Proprietà Industriale” edited by Adriano Vanzetti (Giuffrè Editore, 2013). He is editor and co-author with Gustavo Ghidini of the commentary on the Italian Industrial Property Code “Codice della Proprietà Industriale, commento alla normativa” (Il Sole 24 Ore Pirola, 2006).

Activity

Cooperates with the team on particularly complex cases, contributing the vast experience acquired at national and international level.
Trademark and patent counseling.
Unfair competition.
Licensing and contracts.
Evaluation of patent and trademark portfolios.
Legislative counsel in the field of intellectual property.

Memberships

Member (Past President and Board member) of the Ordine dei Consulenti in Proprietà Industriale (Italian Industrial Property Consultants Institute), of the the Collegio dei Consulenti in Proprietà Industriale (Italian section of FICPI) and of the Institute of Professional Representatives before the European Patent Office. Founding Member, Past President and Member of Honour of ECTA (Advisory Committee, Supervisory Board). Member of Honour of FICPI. Member of INTA, UNIONAIPLA, MARQUES and PTMG as well as of the Institute of International Affairs; Foreign Member of the Chartered Institute of Patent Agents.

Recognitions

Who’s Who Legal: Global Leader and Italy Leader, Trademark Attorneys, 2015-2024.
WTR 1000 – The World’s Leading Trademark Professionals 2020-2024.
Leaders League IP Attorneys 2021-2024.

Qualifications

Italian and European Trademark Attorney, Community Design Attorney, European Patent Attorney.

Education

Master’s degree in Economics, La Sapienza University of Rome.