Theory and practice of intellectual property
№ 4 / 2022

ISSN (Print) 2308-0361
ISSN (Online) 2519-2744

PDF (Ukrainian)

DOI: https://doi.org/10.33731/42022.265864

Опубліковано                2022-10-19

Judicial protection of trademarks in Italy

Olena Stefan
Ukraine
https://orcid.org/0000-0002-6334-0040

Abstract
The article analyses the system of judicial protection of trademark rights on the example of Italy. The main focus is on the judicial procedures provided for by the Italian civil procedural law in the event of an appeal to the court for the protection of the rights of interested persons. Jurisdiction for consideration of cases related to the protection of trademark rights, as well as cases related to unfair competition, is defined. The examination is also carried out by specialized chambers of intellectual property in general courts that consider civil and criminal cases (first and second instance). The legislation distinguishes between two types of legal grounds for lawsuits: violation of the rights of the plaintiff (owner of the trademark certificate) and recognition of the trademark certificate as invalid. The types of decisions that can be made by the court are analysed. First, the court can decide on «descrizione», according to which the plaintiff, with the participation of a bailiff and an expert, can examine and draw up a detailed description of the goods and/or production methods that infringe his rights. The purpose of this procedure is to officially record the violation of the plaintiff’s rights. Secondly, the court can may decide to impose a sequestration on the defendant’s property. Sequestration is carried out by a bailiff. In some cases, the plaintiff may participate in order to correctly identify the goods subject to seizure. The court may decide on the application of sequestration in the presence of a real threat and the possibility of causing irreversible damage to the plaintiff.

Thirdly, the court may issue a decision imposing a ban on the infringer’s activities related to the production, distribution, marketing, promotion and sale of counterfeit goods. When deciding on the above-mentioned grounds, the court can provide for the collection of a certain monetary fine from the defendant.

The conclusion is formulated that the system of judicial protection of the rights of trademark owners in Italy is characterized by a balance of interests between the owners of trademark certificates, state and public interests. The court that examines this category of cases takes a fairly balanced approach to the application of certain sanctions, considering all the specifics of intellectual property rights, the interests of business entities and the damage caused by violations.

Keywords: trademark, civil litigation, judicial examination, judicial expert, court order, legal proceedings, piracy, counterfeiting

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