The Court of Rome on marks including superlatives and the consequences of bankruptcy of a defendant, while the trademark case is still pending

A mark including a superlative found infringed by a mark with the same superlative and other aspects similar to the earlier mark; the bankruptcy of a defendant while a trial is pending involves the inadmissibility of monetary claims against that party within the pending case. 

The protection of the PGI "Aceto Balsamico di Modena" does not extend to the use of its individual non-geographical terms

CJEU, C-432/18: the PGI “Aceto Balsamico di Modena” is protected as a whole. Hence, the common terms “aceto” and “balsamico” of said PGI do not enjoy individual protection - 4 December 2019.

C-567/18 (Coty/Amazon): AG’s Opinion: the boundaries of e-commerce intermediaries’ liability for trademark infringement, caused by goods stocked by the intermediaries but sold by third parties

AG Campos Sanchez-Bordona suggests a distinction between electronic intermediaries based on their actual involvement: exempting from liability custodians carrying out ancillary activities, provided they do not intervene in the infringement knowingly or with reasonable grounds to be aware of it, whilst not exempting subjects practically involved in putting third parties vendors’ goods on the market.

Court of Turin: Cross-border Interim Injunction - 14 November 2019

The Court of Turin issued a EU cross-border injunction within preliminary proceedings, concerning C&D letters sent to the EU distributors of an Italian company, for the alleged infringement of design and trademark rights.

CJEU, C-688/17: a party subject to provisional measures is not automatically entitled to be compensated for losses - 12 September 2019

National legislation providing that a party shall not be compensated for losses caused by provisional measures, which it has suffered because it did not act as may generally be expected, is not precluded, regardless of the fact that the patent on the basis of which the provisional measure had been granted has subsequently been found to be invalid. However, when making its assessment, the national court must be allowed to take into account the objective circumstances of the case, including the conduct of the parties.

The role of a trade mark’s goods and services specification and the implications of an incorrect specification: intention to use and bad faith – 16 October 2019

A.G. Tanchev issued its opinion in case C-371/18 (‘Sky’), originating from a preliminary ruling on the implications of a registered mark’s specification lacking clarity and precision, suggesting that in certain instances, lack of intention to use some of the goods or services may constitute an element of bad faith. 

CJEU, C-18/18: Limits to host providers’ obligation to remove illegal information - 3 October 2019

Courts and administrative authorities of the Member States can issue orders against host providers, with effects worldwide, requiring that content that is identical or equivalent to those previously declared illegal be removed.

CJEU, C-507/17: the CJEU sets the European boundaries of the “right to be forgotten” – 24 September 2019

CJEU, C-507/17: EU law requires the operator of a search engine to carry out a de-referencing procedure on the versions of its search engine that correspond to all the Member States

The definition of a work and the cumulation of design and copyright protection – 12 September 2019

In case C-683/17 ("Cofemel"), the Court of Justice ruled on the definition of a work under Directive 2001/29/EC and on the criteria for the possible cumulation of design and copyright protection. For additional info, click on READ MORE.

Autostrade per l'Italia wins the "Tutor war" - 14 August 2019

The Supreme Court sided with Autostrade per l'Italia, a Benetton Group company in litigation brought by a Tuscan company, which had claimed that Autostrade per l'Italia infringed one of its patents. Thus concludes a legal battle that has been ongoing for several years.

The Supreme Court found that the Tutors - machines for measuring vehicle speed - installed by Autostrade per l'Italia in various parts of its road network do not violate the Tuscan company's patent, and therefore can continue to remain in function. The Court's decision overturns the conclusions reached by the Court of Appeal of Rome just over a year ago.

The judges of the Supreme Court, who had already issued a previous decision on this subject matter, accepted the arguments set forth by counsel for Autostrade per l'Italia, Giuseppe Bernardi, Lucio Ghia and Fabrizio Jacobacci. Autostrade per l'Italia is the largest Italian operator of motorway sections (managing almost 3 thousand kilometers of roadways), and belongs to the Benetton family. The ltigation was initiated by a company from the Tuscan town of Greve in Chianti, Craft S.r.l., which sought, among other things, compensation for damages, which had already been denied by the lower courts, and which was in the early stages of this dispute defended by the law firm of the current Italian Prime Minister, Giuseppe Conte. Craft started this lengthy legal battle, in which the first decision was issued in 2008, alleging the infringement of one of its patents that, using the principle of average speed and two remote stations connected with a central computer, detects and identifies vehicles that travel over the speed limit by the optical reading of the license plate.

The conclusion of the long-standing "Tutor war" follows victories by Autostrade per l'Italia in the first two court instances. Then, following a first postponement of the Supreme Court proceedings, the Court of Appeal of Rome issued a decision finding that Craft's patent was infringed by Autostrade per l'Italia's use of the Tutor devices and even ordered destruction of the same. Thanks to continued opposition by Autostrade per l'Italia's defense team, the destruction of the Tutor devices was avoided.

According to the Supreme Court's decision on August 14th, the device described in Craft's patent and the Autostrade per l'Italia devices - the SICVe (developed in the early 2000s) - utilise "two separate vehicle detection systems "(one that is optical, while the other is inductive / magnetic) and, therefore, there was no infringement.

On the Autostrade per l'Italia road network, the Tutor devices can therefore continue to perform their functions of identifying and deterring excessive speed. Since the installation of the Tutor devices, the Traffic Police has been able to issue millions of tickets for speeding offences and the Italian State has collected billions of Euros in fines.