Today, one of the main assets of a company is its ability to develop and successfully make use of innovative ideas.Jacobacci & Associati assists its clients to protect these assets, providing specialized legal assistance in its core areas of industrial and intellectual property, art law, media and entertainment, antitrust and competition law and data protection and privacy.

Founded in the mid-1990s, our offices in Turin, Milan, Rome, Paris and Madrid now provide domestic and foreign clients specialized services in IP and commercial litigation, transactional and regulatory matters, which include managing cross-border commercial transactions and national and European antitrust issues.

The core characteristics of the practice include a client-centered approach, utilizing experience acquired in Italy and abroad through a strong international practice, attention and efficiency, technological innovation and a detailed focus, on-going professional development and exploration of new frontiers in law and business.

Our Philosophy

Owing to the rigorous academic and professional development of our team, all of whom have significant experience in Italy and abroad, the firm provides the resources necessary to assist national and international clients essentially anywhere in the world, especially in complex, multinational disputes and high-value transactions. For all international operations, in addition to identifying the most appropriate strategy for each client, our international standing allows us to select and coordinate with the most suitable independent professionals and law firms world-wide.

For overseas clients, Jacobacci also serves as an invaluable point of reference in Italy, France and Spain: combining technical and legal expertise with a broad knowledge of various cultural contexts and the language skills necessary to enable us to provide foreign clients and investors with consistent, client-focused legal support in Europe.

Our History

The Jacobacci law firm was founded in 1996 in Turin and Milan by a small team of young lawyers who combined their formidable domestic and international experience with the goal of furthering a new approach to IP protection in Italy and abroad.

In the more than twenty years that followed, the firm opened new offices (in Rome, Paris and Madrid), focused on growing its base of professionals and administrative support staff, and established its presence in the Italian and international Intellectual Property legal market.

The rapid growth of the firm has been multidimensional. Over the years, Jacobacci lawyers have provided services for a multitude of clients in the industrial and commodities sectors, assisting and representing them in all types of complex legal situations that cover the entire panorama of Intellectual Property, all while contributing to the development of innovative legal precedents in both Italy and before the European Courts of Justice in several areas.

For example, in the trade mark field Jacobacci has handled numerous prominent and precedent-setting cases in Italy, with some of the most noteworthy being:

  • the first decision relating to infringement of Intellectual Property committed on the internet (Microsoft vs Carpoint 2000)
  • cross-border protection of a registered designation of origin (Speck Consortium vs Christanell, 2000) and its interplay with trade mark protection (Consortium for the Protection of the “Franciacorta” vs Valdigrano, 2015)
  • the protection of trade marks (Consortium for the Protection of the “Franciacorta” vs Valdigrano, 2015)
  • The use of a 3D trade mark for the protection of the shape of a car (Smart, Daimler Chrysler vs OMCI)
  • Revocation of a trade mark in the case of jointly-owned trade marks (Maserati S.p.A. vs Stilm S.p.A., 2005)

Not to mention successfully representing clients in important cases before the Court of Justice that set EU-wide precedent, regarding:

  • conflicts between trade marks and geographical indications, where the trademark was registered and used long before the geographic indication received protection under EU law (Bavaria / Bayerischer Brauerbund C-343/07)
  • the inter-relationship between European regulations on trade marks and designs, as addressed in the protection of trade marks in the field of automotive spare parts (Ford / Wheeltrims, C-500/2014).

The firm has also handled a wide variety of prominent cases in the patent field, including those concerning:

  • pharmaceuticals (including, but not limited to, actions relating to cross-border negative clearance, Mika Pharma vs Idea AG, 2009)
  • the invalidity of an emergency application for patent protection (Johnson & Johnson Vision Care vs Novartis, 2007)
  • issues relating to the reformulation of patent claims (Decathlon / Danieli)
  • design patents, including, leading cases in the protection of copyright on industrial design and related temporary provisions (Cassina / High Tech, 2014), as well as with the protection of spare car parts (BMW AG vs Ruote Company S.p.A., 2011 and BMW AG vs I-Wheel s.r.l., 2010)

The firm is also a prominent figure in the growing world of Art Law, helping to shape the law by handling important cases regarding:

  • the legitimacy of art appropriation, and with it, addressing whether a derivative work is able to have a completely different meaning from the first work despite taking the same shape (John Baldessari + Prada Foundation / Fondation Alberto et Annette Giacometti, 2012)
  • the legitimacy of the reproduction of another artist’s entire body of work, when done with a satirical and critical aim. (La Biennale di Venezia Foundation + Samson Kambalu / Gianfranco Sanguinetti, 2015)

Finally, with copyrights, the firm has handled numerous significant cases including those arising out of:

  • the need for separate licenses for the cable retransmission of satellite transmissions in hotel rooms (VG Media / Hotel Pollinger, 2015)
  • the recognition of copyrights in the fashion sector (e.g. regarding the creative features the Le Pliage bag – Longchamp vs Top Bag s.r.l., 2013)

After 20 years of experience the Firm continues to strengthen and expand its areas of expertise, which most recently resulted in the creation of a practice area specifically devoted to data protection and privacy, entrusted to attorneys that have extensive experience in both the complex regulations underlying this field and the related legal matters.