Abstract
The Italian legal system confers to the holders of a registered brand the right to use it exclusively, as established by Art. 20 of the Italian Industrial Property Code. The IP right holder may therefore prohibit third parties from selling products marked with a distinctive sign even when commercialization takes place, for example, through a distribution system.
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Notes
- 1.
Legislative Decree 10 February 2005, No. 30. Art. 20 of the Italian Industrial Property Code provides that “1. The rights of the owner of the registered trademark consist of the authority to make exclusive use of the trademark. The owner has the right to prevent third parties from using in the course of trade, without his consent: a) any sign which is identical to the trademark for goods or services which are identical to those for which the trademark is registered; b) any sign that is identical or similar to the registered trademark, for goods or services that are identical or similar, where due to the identity or similarity between the goods or services, there exists likelihood of confusion on the part of the public, that can also consist of a likelihood of association of the two signs; c) any sign which is identical with or similar to the registered trademark in relation to goods or services which are not similar, where the registered trademark has a reputation in the Country and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark. 2. In the cases mentioned in paragraph 1, the owner of the trademark may in particular prohibit third parties from affixing the sign on their products or packages; offering the goods, putting them on the market or stocking them for those purposes, or offering or supplying services under that sign; importing or exporting the goods thereunder; using the sign on business papers and in advertising. 3. The business person may affix his own mark to the goods he puts on the market, but he may not delete the trademark of the manufacturer or business person from whom he received the goods or wares.”
- 2.
ECJ, case 107/82, AEG-Telefunken, ECLI:EU:C:1983:293.
- 3.
Article 8, paragraph 2 of the directive, the corresponding provisions are found in Article 23.3 of the Criminal Code.
- 4.
Being a European Regulation, will find full and direct application in all EU Member States, both in relation to private individuals and public authorities, without the need to transpose its provisions by a national law.
- 5.
CJEU, case C-439/09, Pierre Fabre, ECLI:EU:C:2011:649.
- 6.
CJEU, case C-230/16, Coty Germany GmbH v Parfümerie Akzente GmbH, ECLI:EU:C:2017:941.
- 7.
See European Commission, Final report on the E-commerce Sector Inquiry, paras 41–42: “As a result, the findings indicate that marketplace bans do not generally amount to a de facto prohibition on selling online or restrict the effective use of the internet as a sales channel irrespective of the markets concerned. …” and, moreover, that “As a result, without prejudice to the pending preliminary reference, the findings of the sector inquiry indicate that (absolute) marketplace bans should not be considered as hardcore restrictions within the meaning of Article 4(b) and Article 4(c) of the VBER.”
- 8.
Art. 17 of the Law No. 633 of April 22, 1941, for the Protection of Copyright and Neighboring Rights (amended up to Legislative Decree No. 8 of January 15, 2016) provides that: “1. The exclusive right of distribution concerns the right to market, place in circulation or make available to the public, by whatever means and for whatever purpose a work or copies thereof and also includes the exclusive right to introduce into the territory of the countries of European Community, for distribution, copies of a work made in countries not members of the European Community. 2. The distribution right shall not be exhausted within the European Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community is made by the rightholder or with his consent.
3. What is provided for under paragraph 2, shall not apply to the making available to the public of a work in such a way that members of the public may access it from a place and at a time individually chosen by them, even when the making of copies of the work is permitted. 4. For the purposes of exhaustion under paragraph 2, the free delivery of copies of a work for promotional purposes or for teaching or scientific research, when carried out or authorized by the right holder, shall not be deemed to be exercise of the exclusive right of distribution.”
Acknowledgements
Special thanks go to Camí Garcia i Carreté, associate lawyer and Maria Tusa, trainee at Jacobacci Milan for their significant help and fruitful cooperation in the drafting of this publication.
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Francetti, M. (2019). Italy. In: Këllezi, P., Kilpatrick, B., Kobel, P. (eds) Liability for Antitrust Law Infringements & Protection of IP Rights in Distribution. LIDC Contributions on Antitrust Law, Intellectual Property and Unfair Competition. Springer, Cham. https://doi.org/10.1007/978-3-030-17550-4_21
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