Co-published editorial

Bugnion SpA Policing very much in fashion in Italy

With Italy’s policing bodies boasting internal departments to investigate IP infringement, and a range of actions possible, the country is well-geared to tackle the counterfeiting threat. However, brand owners must also ensure they police the threat themselves

A recent report has revealed that the market counterfeiting National Committee, as must be commenced within one month of for counterfeit products in Italy generated a foreseen under Article 145 of the Industrial an interim injunction being issued, as turnover of over €7 billion in 2008, of which Property Code, is expected to be established failure to do so nullifies the injunction. clothing and fashion represented 56%, soon. This committee will be “empowered to Civil law tools are useful and effective fashion accessories a further 35% and monitor any signs of the infringement of when the act of counterfeiting and the party multimedia and IT products 9%. This industrial property rights… and to responsible are already known to the suggests that piracy remains a marginal coordinate and study measures to combat trademark owner. However, the hardest task concern where fakes pose a greater risk to [such infringement], as well as to assist is normally identifying the exact location consumers, such as in the pharmaceutical, enterprises for [their]... protection against and scale of the infringing operation, the food and automobile components sectors. unfair competition practices”. channels through which goods are Deputy Prime Minister Gianni Letta has In 2009 the department launched distributed and information about the highlighted the twofold problem in the media campaigns to raise public awareness organization behind the activity. national fight against counterfeiting: “Italy of the damage caused by the trade in Certain private organizations promote is the country in the world most affected by counterfeit goods, as well as the social and collective investigations and actions, the counterfeiting and, at the same time, it is... personal risks involved. From a legislative most influential being INDICAM. among the main manufacturers of perspective, the government asked Nevertheless, a trademark owner’s main counterfeit goods.” The distinction of being Parliament to approve amendments to the recourse is to the police and Customs. the European Union’s most prolific Criminal Code and other legislation in order manufacturer of fakes – and third in the to tighten anti-piracy measures and protect Criminal enforcement and role of the police world – is particularly unwelcome because Italian industries. The criminal law generally All of Italy’s policing bodies have internal of the prominent role of organized crime in offers the most powerful weapons against departments devoted to the investigation of the counterfeit goods trade. Moreover, counterfeiting, but Italian law affords more IP infringement cases. Italy’s famous luxury and other brands than one approach to IP rights protection. The Guardia di Finanza, Italy’s tax police, suffer more than most. In light of this is empowered by Legislative Degree 68/2001 problem, anti-counterfeiting efforts in Italy Civil action to “act against counterfeiting of trademarks are not only driven by economic concerns, Any action against counterfeiting would be (and audiovisual piracy) in order to safeguard but also pursued on public order grounds. in vain in the absence of a reliable IP rights the economic development of the country”. It enforcement system. The introduction of has created a marks, patents and IP division Political and social perspective specialized IP court sections, which handle in order to analyze, investigate and act The social and political dimensions of the only IP cases, has made the Italian against counterfeiting and related crimes. fight against counterfeiting ensure that it is enforcement system more effective. Special departments of the police may often discussed in public debates and Moreover, Italy has implemented the EU IP conduct investigations under the direction included on government agendas. Rights Enforcement Directive (2004/48/EC). of public prosecutors or may act on the In early 2009 the Ministry of Economic Once counterfeit goods and details of an basis of a report by a trademark owner. Development, the government body infringement have been discovered, a When police officers discover goods that responsible for anti-counterfeiting, was trademark owner can obtain a preliminary they believe may infringe IP rights, they may extensively restructured. The Department for injunction quickly and effectively. Of the make a criminal seizure and will usually ask the Fight Against Counterfeiting was created possible interim injunctions available to the trademark owner to cooperate in the and the post of high commissioner for the trademark owners, restraining orders and resulting investigation. In such cases the fight against counterfeiting was abolished. injunctions for seizure of the infringing police force acts on the basis of Articles 473, The department is also in charge of goods are likely to be most appropriate and 474 and 517 of the Criminal Code, which were coordinating and implementing the useful in anti-counterfeiting actions. implemented by Law 99/2009 of July 23 development of the Italian Patent and However, trademark owners must 2009. They provide for the prosecution and Trademark Office. Furthermore, an Anti- remember that ordinary court proceedings punishment of parties that counterfeit, alter

72 World Trademark Review April/May 2010 www.WorldTrademarkReview.com Country correspondent: Italy

or use distinctive signs belonging to a third of counterfeit goods and – with the relevant party; bring into the country and place on court authorization – to dispose of such the market products which falsely bear goods at the counterfeiter’s expense. marks or signs; or sell industrial products Furthermore, Law 80/2005 of May 14 2005 which falsely bear marks or signs. provides that purchasers of counterfeit goods Law 99/2009 introduced new may be fined between €500 and €10,000. provisions, some of which are particularly Customs operates according to the EU significant. Article 473bis provides for the Customs Regulation (1383/2003) concerning forfeiture of counterfeit goods and any customs action against goods suspected of materials used for counterfeiting, while infringing certain IP rights. The regulation Article 473ter provides that the involvement provides that a customs authority can act of a criminal organization dedicated to against suspect goods in two ways. piracy will be considered an aggravating First, the authority may act ex officio if circumstance. Such criminal acts may result it has sufficient grounds to suspect that in heavy fines, prison sentences of up to goods infringe a party’s IP rights. It may four years and the destruction of infringing suspend the release of the counterfeit goods goods by order of the criminal court. Simone Verducci-Galletti or detain them for three days, in which time The Industrial Property Code sets out Associate it may ask the rights holder to provide further criminal law provisions in Article [email protected] information to confirm the initial suspicion 127, which states that “without prejudice to of infringement. Second, action can be taken the application of the… Criminal Code, Simone Verducci-Galletti is a registered at a rights holder’s request. Once a decision whoever manufactures, sells, exhibits, Italian and Community trademark and has been issued accepting the application, displays, makes industrial use of or design attorney. He graduated in law from and after consulting the applicant if introduces into the country items violating the University of Perugia and specialized necessary, the authority may suspend the a valid industrial property right, pursuant to in EU law and economics. Before joining release of suspect goods or detain them for the rules of the present code, shall be Bugnion’s Milan office in 2004, Mr 10 days. Such a measure may apply only to punished – at the opposing party’s request – Verducci-Galletti worked as a consultant goods covered by the application. On by a fine of up to €1,032.91”. with IP firms in Rome and Alicante (Spain). detaining or suspending the release of Mark owners should consider certain His areas of practice cover trademarks, goods, the authority will inform the rights aspects of the criminal enforcement route. designs, copyrights and related legal issues. holder and, if the necessary preconditions Case law has established that criminal law are met, will report to the police. If the provisions apply only to registered authority is not notified that measures are trademarks, not to applications. Moreover, being taken against the detained goods, it these provisions do not extend to must release the goods. counterfeit goods deemed ‘gross’ fakes. The In Italy, Customs is extremely active and criminal law protects a public interest – that its results have been made possible partly is, public confidence – rather than the by the implementation of sophisticated private interests of a trademark owner. information systems and, in particular, the Thus, a criminal action, once initiated, will Fully Automated Logical System Against be controlled by the police and the public Forgery Fraud. This database is continually prosecutor. However, the owner of the updated by customs authorities, applicants, infringed trademark will be called upon to associations and consumers. The aim is to cooperate with the investigation and may collect as much information as possible in seek damages during the criminal trial. order to make the checks on goods more Although in 2006 the European accurate. The database can display images of Commission adopted a proposal to products and other useful information in strengthen the application of the criminal order to help customs authorities to law to IP offences, the Italian legal system is determine whether a product is a fake. one of the few in the European Union to Donatella Prandin Italy offers a comprehensive set of tools provide for criminal enforcement of IP rights. Partner to combat counterfeiting and piracy [email protected] effectively. A company seeking to avoid the Administrative route and role of Customs dangers of counterfeiting in Italy should So far, this article has considered the Donatella Prandin is a partner of Bugnion consider filing an application with Customs trademark owner’s position where infringing SpA and is the foreign department manager. under the regulation. There are also benefits goods are manufactured in Italy or have She graduated in law from the University of to establishing a close working relationship been imported into the country. The task of Milan and joined the firm in 1991. She is a with Customs, including through use of the preventing infringing goods from entering registered Italian trademark attorney and a online tools that the authorities provide. the Italian territory lies with Customs. Community trademark and design attorney. In addition, constant monitoring of the Italian administrative law provides Ms Prandin has extensive IP experience. Her market (eg, through distributors) enables a further rules. Article 146 of the Industrial practice covers trademark, copyright, company to act promptly in determining Property Code establishes the right of a major designs and domain name issues. whether to request police intervention in a or prefect to order the administrative seizure case of suspected infringement. WTR www.WorldTrademarkReview.com April/May 2010 World Trademark Review 73