Active protection of industrial property

Active measures for the protection of industrial property

Advice on the active protection of industrial property is included in the wide range of services offered by ABM, Agenzia Brevetti e Marchi [Agency for Patents and Trademarks]. Our consultants are at your disposal on our premises in Pisa.

The owner of an industrial property right may bring legal civil and / or criminal proceedings against an infringer, that is, one who violates property rights on a patent, trademark, design or utility model.

To obtain criminal protection, you will need to lodge a complaint - a complaint against the alleged infringer before the competent authority to enable prosecution. The procedure will be initiated automatically, when the competent Public Prosecutor becomes aware of the alleged committing of the offence, for example after being notified by the Customs during normal controls that are carried out on goods in transit.

At the end of the criminal process, if counterfeiting has been established, the accused is sentenced to imprisonment, to which may be also be added an order to pay damages in favour of the owner that claimed to have suffered the loss.

For civil protection, the owner of an industrial property right should refer to the Specialised Sections of the Industrial Property Courts, established by Legislative Decree 168/2003, initiate a civil case and summon the alleged infringer.

However, in order to prevent the excessive length of the case adversely affecting his/her rights, the owner of a patent, trademark, design or utility model may request interim protection from the competent court pending the final ruling.

Obviously, the court must carefully consider all the elements that both parties (the holder of and the alleged infringer) submit to it to decide whether or not to grant the interim protection.

Generally, the precautionary measure granted is the so-called injunction, which consists of notifying the alleged counterfeiter to halt production and marketing of goods, such as T-shirts with the same brand, machines that use the same inventive concept, the same models of shoes and so on, until the final judgement on infringement of industrial property rights.

This measure may also be accompanied by the publication in local, specialised and national newspapers and magazines an extract of the decision, in order to enable the consumer to understand that there is a dispute about a certain product, and the seizure of the goods that are believed to be counterfeited.

Another injunction that could be awarded in order to obtain evidence of counterfeiting is the so-called description, which consists of the authorisation granted by the judge for the owner to travel together with the Judicial Officer and a consultant of the court to the company, warehouse or other place where counterfeited goods are believed to be held.

At the end of the civil case, the injunction will be confirmed or revoked by the Court deciding on the dispute and, therefore, the judgement will take its place. In civil cases, once counterfeiting has been confirmed, the judgement will include the injunction and the quantification of damages that the counterfeiter must pay to the owner, as well as the order to publish the extract of the judgement in local, specialised and national newspapers and magazines.

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