News

Monday, February 3, 2020

Corte di Cassazione, ruling no. 735/2020: on the infringement of new plant varieties and on the exclusion of ex officio invalidity questions

The Italian Supreme Court ruled in a new plant variety infringement matter, confirming the Court of Appeal’s conclusions that the variety had been infringed through the cultivation of the plant without the prior authorisation of the IP holders. The decision includes an interesting analysis of Courts duties and powers regarding invalidity claims of new varieties and IP titles in general.

Friday, January 31, 2020

C-311/18 (“Schrems II”), AG’s Opinion: Commission Decision 2010/87 on standard contractual clauses for the transfer of personal data to processors established in third countries is valid

Transfer of personal data towards third countries: the AG suggests that Commission Decision 2010/87/EU, establishing standard contractual clauses for the transfer of personal data to processors established in third countries, is compliant with Art. 7, 8 and 47 of the EU Charter of Fundamental Rights, as it includes mechanisms ensuring that unlawful transfers can be suspended or prohibited, thus ensuring protection of the data subjects’ fundamental rights.

Monday, January 27, 2020

Corte di Cassazione, ruling no. 31932/2019: former owners of an intellectual property title are indispensable parties to an action for revocation or invalidity

The Italian Supreme Court on legal standing in patent invalidity proceedings: it is mandatory that also subjects who transferred their rights on the patent be joined to invalidity proceedings, since they are recorded in the register as owners, pursuant to art. 122, paragraph 4, IPC.

Monday, January 13, 2020

The CJEU on the exhaustion of digital goods: copyright exhaustion does not apply to e-books – C-263/18, 19 December 2019

Copyright exhaustion does not apply to e-books, whose resale is to be considered as a communication to the public – pursuant to art. 3 of Directive EC 2001/29 - not as a means of distribution of the work – under art. 4 of the same directive.

Friday, January 10, 2020

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.

Wednesday, December 11, 2019

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.

Friday, December 6, 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.

Thursday, November 21, 2019

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.

Friday, October 25, 2019

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.

Thursday, October 24, 2019

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.