Italian Legislative Decree 131/2010, also known as the corrective decree of the Italian Industrial Property Code (IPC), entered into force on 02.09.2010. The most important changes include the interventions in Section II of Part III “Measures against piracy”, which also reintroduced regulations which had previously been abrogated.
Article 144 of the IPC, as replaced by the corrective decree, defines as acts of piracy clear counterfeiting of registered trade marks and designs and deliberate and systematic infringements of others’ industrial property rights.
As also explained in the report illustrating the corrective decree, during reform of the definition of unlawful conduct in question, the specific case of systematic and deliberate infringement of trade mark rights and rights on registered designs, carried out through clear counterfeiting, was taken into consideration. In practical terms, therefore, a problem of critical ascertainment of the likelihood of confusion should not arise.
In implementation of directive 2004/48/EC, Italian Legislative Decree 140/2006 expressly included among the powers of the judicial authority, if the injured party claims the existence of circumstances liable to prejudice satisfaction of compensation of damages, the power of ordering preventive seizure of real and movable property of the alleged perpetrator of the infringement, including seizure of their bank accounts and other assets up to the presumable amount of the damages (art. 144bis of the Italian Industrial Property Code).
On 23 December, 2010, a specific agency was reintroduced with the responsibility for monitoring, coordinating and prompting actions taken by all administrations to fight the phenomenon of counterfeiting. The objective is to improve and strengthen organically, in all the widest aspects, the fight against counterfeiting throughout the domestic territory through the direct involvement of Ministers.
The National Anti-Counterfeiting Council (CNAC) – the so-called National Anti-counterfeiting Committee in the previous 2005 version – was therefore created. The strategic guidelines of the CNAC are:
- the creation at prefectures of a network of public administrations and territorial coordination task-forces;
- the identification of goods sectors which require urgent interventions and strengthening of the inspection and monitoring functions;
- the performance of a broad-based campaign of information and training throughout the national territory, in the employment sector, but also at schools and universities;
- raising awareness of companies, so that anti-counterfeiting behaviour is adopted.
There were no particular reforms of the regulations governing the interventions which may be adopted by the Ministry of Economic Development. Said Ministry, through the Prefect of the province concerned and the mayors, limited to the municipal territory, may, in fact, continue officially to propose petitions for seizure and destruction of the goods before the specialised section of the judicial district in which the act of piracy takes place.
What has changed compared with the previous formulation of the regulations is that it has now been expressly specified that the sections specialised in industrial and intellectual property are also responsible for dealing with opposition against measures ordering destruction of items which have been pirated proposed in accordance with the law on decriminalisation (Law 689/1981), pursuant to the regulation which attributes to the specialised sections all disputes concerning industrial property.
Source: Rapisardi Intellectual Property
