Who we are

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.

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 (Rome, then Paris, Madrid and Valencia), 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), and for the Vespa scooter (Piaggio vs Znen, 2018)
• Revocation of a trade mark in the case of jointly-owned trade marks (Maserati S.p.A. vs Stilm S.p.A., 2005)
• Interlocutory protection for a mark constituted by first letters of the last name of a celebrated fashion designer (John Richmond vs Saverio Moscillo et al., 2017)
• Ownership and use of trademarks relating to sporting competitions (endurance trail race “Tor des Géants” in Regione Autonoma Valle d’Aosta vs Valle d’Aosta Trailers, 2016)
• Defending a Spanish medical group (Prisa) in an administrative dispute over the trademark RadioTubers (RadioTubers vs YouTube, 2019)
• Representing a large Portuguese energy group in trademark infringement proceedings (EDP vs Naturgy, 2020)
• Representing a well-known automobile company in criminal trademark proceedings relating to counterfeit spare parts for cars and trucks, leading to the seizure of the accused products (Volvo, 2021)

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)
• Assisting a Spanish shoe brand before the EU Court in Alicante for the protection of the 3D trademark referred to as “Pelotas”(Camper, 2020)

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)
• Infringement by equivalents (Teva vs Mylan, 2017)
• Validity of Supplemental Protection Certificates (Gilead vs Mylan, 2018)
• Identification of the closest prior art (Allergan vs Mylan, 2022)
• Inadmissibility of acts aimed at impeding a decision in PI actions in Italy (Mühlbauer vs Ixla, 2022)
• Representation of a French automobile producer in enforcing a European patent, obtaining an order to cease infringement (Faurecia vs Benteler, 2021)
• Successfully representing a Spanish pharmaceutical company in proceedings enforcing an SPC for Escitalopram (2015)
• Assisting a Spanish bank in a contractual dispute relating to the co-ownership of a patent regarding an invention relating to electronic payments (Bankinter, 2020)
• Providing consulting services for the University of Alicante on strategies for patent licensing and negotiations with an important European pharmaceutical company (2016)

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

• Providing consulting for a large american audiovisual platform for product placement in the production of films/TV series for the European market (2021)
• Implementation of the GDPR and new Spanish regulation on privacy for a Spanish political party (2019)
• Successfully representing a large Spanish beer group in a legal dispute before the authority Autocontrol relating to a national television advertising campaign for a new product (Mahou-San Miguel, 2021)
• Providing consulting services for a large Spanish producer of shoes on the regulations on electronic commerce, implementing EU rules on consumers and digital marketing campaigns (2020).

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)
• representing a group of editors of press, books and managines in criminal proceedings against a website that offers digital content free of charge, obtaining the maximum penalty and confirmed by the Spanish Supreme Court (Youkioske, 2016)
• consulting for the Spanish copyright collection body (CEDRO) in the national collective negotiations for the grant of licenses for content protected by copyright relating to newspaper clipping activities (2020)
• successfully defending an entertainment producer against accusations of plagiarism and unfair competition relating to the trade dress of a musical act (Stage, 2021)
• Assisting in criminal proceedings for the protection of audiovisual content protected by copyright (AMC Networks vs P2P, 2020)