ITALY: An Introduction to Intellectual Property

Italy: A Strong IP Market and Jurisdiction

Italy is one of the strongest and most interesting countries in the European IP landscape, from an economic and industrial point of view, and as a jurisdiction. Today in particular, Italy presents itself as an interesting gateway to Europe, thanks to advanced legislation, national courts specialised in IP matters and the presence of a local and central division for the Unified Patent Court (UPC). Indeed, Italy is among those European countries with the highest number of patent applications, and continues to invest in innovation – while at the same time building on an incredibly rich heritage that spans from cultural goods to works of art (such as music, movies, art, food, design, fashion).

Patents

In the area of patent law, the establishment and development of the UPC represents the most significant change for patent holders in recent decades. The opening of Milan’s local division on 1 June 2023 was followed by the inauguration of Milan’s seat of the central division on 1 July 2024. The choice for Milan underlines the importance of the north-Italian metropole between the countries participating in the new system.

As in other important UPC patent jurisdictions, domestic case law from prior to the establishment of the UPC is expected to stay relevant, as Milan’s local division includes two national judges. Italy’s important and well-regarded pioneering role in the area of collecting pretrial evidence is also the subject of great curiosity in other countries, including those characterised by a high volume of decisions. With its search order procedure, developed along the lines of the French saisie-contrefaçon, the experiences in Italy – particularly in the Milan courts – were already taken into account during the process of drafting the UPC Rules of Procedure and Evidence.

It was no surprise, then, that the UPC’s very first decision concerned a procedure for preservation of evidence brought before Milan’s local division. The authorisation order was issued only one day after an application was filed by a German patent holder. It allowed the taking of evidence without prior hearing. This first UPC decision was widely appreciated in the patent world as a signal of the UPC’s – and, in this case, of the Milan’s local divisions’ – effectiveness and speediness.

2024 confirmed the attractiveness of the UPC’s Italian local division, and that the experience of Italian judges in granting and implementing evidence preservation measures is highly popular among patent holders. Hurdles to overcome include how to address judges with different backgrounds in domestic law and the challenging regime of deadlines. Experience and knowledge of both national practice and cross-border proceedings represent a plus for professionals assisting clients before the UPC, especially where – as in Italy – there is a broad mixture of decisions and experience with procedural instruments.

Copyright

Copyright protection in Italy is also dynamic and advanced, thanks to regulatory interventions and case law. Italian copyright law is constantly updated to implement EU laws, and new rules were recently introduced to implement the Copyright Directive into the Digital Single Market (including rules on platforms for sharing user-generated content, equitable remuneration for authors and artists, and extended collective licensing).

An interesting peculiarity of the jurisdiction is the attribution of powers to the Authority for Communications Guarantees, which, among other things:

• issues injunction orders for online copyright violations;

• monitors collecting societies; and

• manages compensation for the digital use of news.

A bill intended to regulate the profiles of artificial intelligence (AI), including copyright aspects, was also recently proposed. It relates to the labelling obligations of “deep fakes”, the protection of intellectual works made via AI, and other issues.

Italian case law has long been at the forefront of copyright protection, having an established track record, especially in the precautionary field, with the issuance of so-called dynamic injunctions against internet service providers (such as telecoms, in particular). These are blocking orders issued very quickly, ex parte, requiring telecoms to obscure illicit content/services in the shortest possible time (enforcement can take as little as half an hour or an hour from notification, made by certified email), and are also able to affect new ways of transmitting the same content used by pirates. All that is needed is to notify the telecom of the new IP addresses and DNS used for transmission.

Also of interest are the new cases handled by antitrust entities to combat abuses of economic dependence in the digital world; these are intertwined with the new platform obligation rules, and concern profiles of potential boycotts carried out by platforms when they exclude those rights-holders who do not accept the licensing conditions imposed by the platforms.

Distinctive Signs

Distinctive signs (from trade marks to geographical indications) are traditionally very important in a context such as Italy’s, which is rich in historic companies, craftsmanship, and agrifood products of great value recognised throughout the world. For this reason, the registration and protection of distinctive signs is at the centre of market penetration strategies, and recently has also been supported by public contributions.

For example, Italy has introduced a financial contribution to facilitate the registration of new non-agrifood geographical indications, introduced at the European level. The aim is to support the development and protection of the countless local businesses that produce and export high-quality products linked to artisanal and manufacturing traditions, or even to the features of the local territory (such as Murano glass, Como silk, Gorizia lace, Carrara and Vitulano marble).

It is also interesting to note that the protection strategies are varied, since the Italian legal system provides different institutions (such as certification marks) as well as both administrative and ordinary civil procedures. All this is also co-ordinated with a further protection apparatus, provided by the broad and consolidated Italian jurisprudence on unfair competition.