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THE DISPUTE RESOLUTION PROCEDURE FOR DOMAIN NAMES

In today’s digital landscape, the notion of “digital identity” has become increasingly significant, much like the one of trademarks. The notion of digital identity encompasses that of domain names as intangible assets; these unique identifiers appear after the “@” symbol in email addresses and follow “www” in website addresses. In essence, a domain name functions […]

Design protection in Europe: the reform of EU designs.

As of May 2025, the new provisions will start to apply, introducing significant changes to Council Regulation (EC) No. 6/2002, which will profoundly affect the legal and commercial landscape of the sector. The secondary legislation will follow in July 2026, providing further operational details and clarifications on its applicability. A further change will then take […]

Golfera, with Barzanò & Zanardo, triumphs in the battle to protect the shape trademark

This ruling not only acknowledges the notoriety of the “Golfetta” trademark but also prohibits the use of a similar trademark concerning high-protein cured meats. This significant decision underscores the legal valuation of three-dimensional trademarks, reinforcing entrepreneurial investment aimed at solidifying market positioning for these products. Then, what was the pivotal element behind the success of […]

The Battle of Gianduiotto

The gianduiotto, the renowned, prism-shaped chocolate that figures among the symbols of the city of Turin, has been at the heart of a conflict between the Committee for “Gianduiotto di Torino” PGI and the Swiss giant Lindt & Sprüngli. After nearly two years of negotiations, the parties have reached a compromise that paves the way […]

50 SHADES OF GREEN (CLAIMS): CONSUMER PROTECTION IN A SUSTAINABLE WORLD

On one hand, this is certainly true. “It is good for the environment”, “zero impact” (the so-called “green claims” or “environmental claims“), etc. are undoubtedly attractive statements both to the public and to companies, which not infrequently include these slogans not only in their products but also in their distinctive signs, make their brands “green” […]

Anti-Counterfeiting Report: Publication of the 2022-2023 Report

This report provides an in-depth analysis of the counterfeit market, drawing on data from the Agency of Excise Duties, ADM and the Guardia di Finanza (GDF) regarding products seized between 2008 and 2022. Notably, the counterfeit items confiscated in Italy primarily consist of clothing, footwear, and accessory items. According to the IPERICO database (Intellectual Property […]

SHAPE AND THREE-DIMENSIONAL TRADEMARKS IN BARILLA’S LEGAL BATTLE Analysis and comparison of judgements

COMPARISON WITH PREVIOUS CASES: FERRERO vs MOCCA S.R.O. SPOL: Tic Tac To provide context to this recent ruling, it is valuable to compare it with the case of Ferrero vs. Mocca S.r.o. Spol, which involved the three-dimensional trademark consisting of the packaging of “Tic Tac” sweets. Despite differences in the products involved, both cases underline […]

On September 1st 2024 Romania will join the European Patent with Unitary effect and the Unified Patent Court

On June 1st, 2023, the Unified Patent Court and the European Patent with unitary effect came into force. Please refer to our website for further related information: https://barzano-zanardo.com/en/approfondimenti/are-you-ready-for-the-unitary-patent-and-the-unified-patent-court/ As you will recall, the European Patent with unitary effect is effective in all states which had ratified the relevant agreement at the time of registration of […]

The new revised EU regulation on Geographical Indications is now in force

As a consequence of years of discussion between technicians and politicians and various trilogues of the EU institutions, the new Regulation was approved on February 28th by the European Parliament in plenary session and formally adopted by the European Council on March 26th; following its publication in the OJEU on April 23rd, 2024, the regulation […]

Design protection in the fashion industry: the New Balance vs Golden Goose and the Longchamp cases

The New Balance vs Golden Goose litigation New Balance has sued the well-known Italian luxury footwear company Golden Goose before the District Court of Massachusetts, in the United States. The “Dad Star” sneaker is at the center of the dispute, a model of shoes which Golden Goose began selling in late 2021. New Balance claims […]

Domain parking at the Bulgari Hotel? No, thanks. BULGARI obtains the reassignment of the domain name

Domain Parking A domain name is defined as “a unique name that forms the basis of the Uniform Resource Locators (URLs) that people use to find resources on the Internet (e.g., web pages, email servers, images, and videos)”, and it serves to identify a specific address on the Internet belonging to a company, organization, institution, […]

COLLECTIVE TRADEMARK AND GEOGRAPHICAL INDICATION: THE CUMULATION OF THE TWO PROTECTIONS IS POSSIBLE EVEN IN CASE THE SIGNS UNDER COMPARISON ARE SIMILAR OR IDENTICAL.

On December 18th, 2020, the Consortium for the Protection of the Grana Padano Cheese filed the application for registration no. 18358002 for the sign as an EU collective figurative trademark for the following goods in Class 29, as amended on July 7th, 2021: Cheese complying with the specification of the protected designation of origin […]

European Medicines Agency (EMA): 7th Revision of the Guideline on the acceptability of names for human medicinal products.

The scope of this Guideline is to provide information on the overall procedure for submitting and reviewing the acceptability of proposed (invented) names for human medicinal products processed through the centralised procedure, as well as detailed guidance on the criteria applied by the Name Review Group (NRG) when reviewing the acceptability of names. The NRG […]

CONFERENCE “IP & BUSINESS” Milan, 23.11.2023

The Intellectual Property was not presented by the Director, Mrs. Anna Maria Bardone, as an academic matter, but rather as an indispensable bridge with companies, under the collaborative spirit of common and sustainable growth. The B&Z Academy, promoter of the initiative, is an internal training instrument that contributes to the continuous professional and personal growth […]

B&Z has obtained the Certification for Gender Equality

In the ESG (Environment, Social, Governance) context, B&Z has set the goal for 2023 to achieve Mission No. 5 introduced in relation to the measures provided by the Italian PNRR: Achieve gender equality and self-determination for all women and girls. The UNI/PdR 125:2022 Gender Equality Certification is the tool implemented by the Italian Government through […]

The EU Regulation on the Protection of Geographical Indications for Craft and Industrial Products has been published

Thanks to this legislation, it will be possible to register the locally renowned names of handicraft and industrial products (such as natural stones, woodwork, jewelry, textiles, lace, cutlery, glass, porcelain as well as leather) throughout the European Union, obtaining a protection similar to the one already in place for Geographical Indications in the agri-food sector. […]

TRADEMARKS – Common pitfalls and how to avoid them

What is a trademark and why is it important to register it? A trademark is a distinctive sign that allows economic operators to distinguish their goods or services from those of their competitors. Through the trademark, therefore, the consumer identifies the product or service of a given company, distinguishing it from the goods or services […]

THE JURISDICTION OF THE UNIFIED PATENT COURT

The Brussels Regulation and the Lugano Convention In court proceedings in which the two opposing parties have their domicile/residence (or registered office, in the case of legal persons) in different countries, the rules on international jurisdiction determine which courts of which state are competent to hear and determine such disputes. With regards to the UPC, […]

Can I register a slogan as a pharmaceutical trademark?

Why is it difficult to register a pay-off as a trademark? By their nature, slogans convey an advertising or laudatory message which, as such, may not be able to provide information about the origin of a product or service and therefore fulfill the function of the trademark. In fact, according to the European jurisprudence, the […]

The civil procedure Reform and the protection of IP. What changes?

2 The effects of the Cartabia Reform in intellectual property disputes 2.1 Amendments to the ordinary procedure As already anticipated, the Cartabia Reform affected several fronts and modified few procedural aspects. In this article, we will concentrate only on the rules that can have a direct impact on the cases involving intellectual property rights. As […]

PATENTS – COMMON PITFALLS AND HOW TO AVOID THEM – Chapter III

C1) Not considering infringement under the doctrine of equivalents The concept of equivalence will be further explained with the following example. Let’s imagine the independent claim of a patent is: “Pedal-powered device comprising a saddle (A), a handlebar (B), a wheel (C) for its movement on a surface”. It is quite clear that the device […]

PATENTS – COMMON PITFALLS AND HOW TO AVOID THEM – Chapter II

B1) Confusing patentability with freedom to operate Many people think that if they obtain a patent on a certain technical solution, they can freely use that technical solution. A patent gives the applicant an exclusive monopoly on a certain technical solution, therefore the right to prevent third parties from using it or profiting from it, […]

PATENTS – COMMON PITFALLS AND HOW TO AVOID THEM – Chapter I

A1) Underestimating your own invention Technicians, researchers, entrepreneurs in technological sectors are often so expert in their technology that potentially patentable innovations appear to them as mere banality. Many people do not know that the majority of patents do not concern revolutionary or shocking inventions, but rather small improvements of already known solutions which allow, […]

KEY CHANGES OF THE DRAFT AMENDMENTS TO THE TRADEMARK LAW OF THE PEOPLE’S REPUBLIC OF CHINA (DRAFT FOR COMMENTS)

Definition of trademarks (Article 4) The revised Draft expands the scope of trademark definition, including the wording “other elements” in addition to “words, graphics, letters, numbers, three-dimensional signs, colour combinations and sounds”. The amendment shall allow non-traditional trademarks (such as i.e. positon/colour marks which have been anyhow confirmed in judicial practice) to be granted within […]

BIG MAC vs. SUPERMAC’S: A burger battle

A little background… The Big Mac was conceived in 1967 by Jim Delligatti, franchise owner of one of the many restaurants of the well-known McDonald’s fast-food chain in Pennsylvania, but at the time that was not its name. Originally, in fact, it was called “Aristocrat”, and it used to be made only with those ingredients […]

B&Z has its own ACADEMY!

B&Z’s long-lasting history led us to face this new exciting challenge, which will allow us to focus even more on the training and update of all B&Z’s professionals, in order to create many opportunities both to exchange ideas with each other and to grow from a personal point of view. As a matter of fact, […]

Breaking News! Germany has ratified the Agreement on a Unified Patent Court

On the 1st of March, the so-called “sunrise” period will start. From such date the owners of European patent applications, granted European patents, and related SPCs, will be able to choose not to avail themselves of the Unified Court in litigation, by way of the so-called “opt-out” procedure. More information on the Unitary Patent and […]

“BARZANO’ & ZANARDO” OFFICIALLY IS AN HISTORIC TRADEMARK!

“Since 1878, a solid tradition in the protection of creativity, innovations and intellectual property”. This prestigious recognition is only given to the owners or the exclusive licensees of trademarks which have been registered for at least fifty years or for which it is possible to demonstrate the continuous use for at least fifty years, employed […]

The Silent Revolution goes on: A Focus on Norway

Until today, in Norway a black-and-white figurative trademark registration guaranteed to the owner protection for the sign in any colour it was adopted, in light of the consolidated ruling of the Supreme Court regarding the protection of figurative trademarks in black and white. Through the adaptation of the national legislation to the practice of the […]

New administrative invalidity and revocation procedure in Italy before Italian PTO

These administrative proceedings represent an additional tool for trademark owners who may choose to file an invalidity or revocation action through administrative proceedings or before the ordinary courts; court proceedings remain available as an alternative, even though more expensive, route. Invalidity and revocation proceedings may be initiated with the filing (both electronically and on paper) of an application in Italian before the IPTO. This application must be written, motivated, aimed at requesting the verification of invalidity and complete of the supporting documentation, as well as the instrument of appointment, if any. If the application is admissible, the […]

Are you ready for the Unitary Patent and the Unified Patent Court?

1. The Unitary Patent and the Unified Patent Court To date, it is not possible to obtain a single patent having effect simultaneously in all the States of the European Union. According to the current procedures, the European Patent provides for a single examination and granting procedure which does not end with the […]

B&Z is “GOLD AGENCY 2022” according to the World Trademark Review:

Here is what they said about us: Hailed as a “market leader for prosecution work” by peers and foreign associates, Barzanò & Zanardo has served as a staunch trademark protector since 1878. The 200-strong group tends to some 50,000 marks from seven bases around the country and keeps a hawkish eye out for threats by […]

ACROSS THE METAVERSE: THE IMPORTANCE TO PROTECT TRADEMARKS IN THE METAVERSE

“The metaverse is the next evolution of social connection”[1]. This is the quote you can find on the website of the newborn “Meta”, the company founded by Mark Zuckerberg which brought about the virtual world’s boom (the so-called “metaverse”) at the end of 2021. The metaverse is a true virtual reproduction of the reality (with […]

First use of the mark in the USA dates 1939, now the Court of Rome acknowledges the reputation.

The seized Court, after an ordinary proceeding initiated by our client Sheraton International IP, LLC, owner of the trademarks SHERATON, acknowledged the applicability of the so-called ultra-class protection, an institution dedicated to renowned trademarks, thus confirming the nullity of the subsequent registration for the trademark filed by a third subject to distinguish “leather and imitations of […]

WHAT DO YOU BET THAT…ADVERTISEMENT IS NOT THE ONLY EVIDENCE TO PROVE THE USE OF A TRADEMARK?

During the proceeding which ended in favour of the company IGT Germany Gaming GMBH, represented by Barzanò & Zanardo S.p.a., it was pointed out that it is necessary to conduct an evaluation comprising the possible restrictions on advertising, in order to collect the evidence according to art. 178, clause 4 of I.P.C. In the recent […]

Tell me your name and I will tell you your trademark

The fashion industry provides us with several examples of trademarks made up of patronymics. Just to name a few examples, we can cite the famous fashion designers and their maisons such as Alberta Ferretti, Ermenegildo Zegna, Loro Piana, Fabiana Filippi, Dolce & Gabbana, Zanellato. Many other references can be found on supermarkets’ shelves, for instance, […]

Filing a figurative trademark in colour version in the EU: “What you see, what you get”

The aim of the “what you see, what you get” rule is – among others – to allow third parties to establish with greater certainty the scope of protection of a trademark, also reasonably granting some freedom of initiative outside of it. Previously, it was accepted practice to file figurative trademarks in black and white […]

Local filings or designations in International registrations: Which one to choose?

The owners of national and EU trademarks, in particular when getting closer to the priority deadline, inevitably need to face the following dilemma: foreign national applications or international filings with designation of multiple countries? The answer to this recurring question is not standard and straightforward. Since there are many aspect to be considered, trademark owners […]

China has approved the 4th amendment to the patent law

The long awaited Amendments to Patent Law the People’s Republic of China have been (finally) approved, after several rounds of revisions, and the new Law will come into effect on 1st June 2021. It is the 4th revision of the Patent Law of the People’s republic of China, since it was fist issued in 1984. […]

PTMG@home: the latest news about pharmaceutical trademarks

Founded in 1970, the PTMG is a wide group of professionals and attorneys with specific skills in the pharmaceutical field. The main aim of the Group is to allow its members to meet on a regular basis to discuss about issues of mutual interest during two annual conferences about the most relevant topics. This year, […]

Trademark non-use cancellation in China

It is now undeniable: China is a market that (almost) no company can afford to lose. For years we have been repeating to our clients: “protect your brands in China as soon as possible, otherwise you can see your trademark registered in bad faith by third parties” (yes, we know we sounded boring, sometime). Fortunately, […]

Another success for the protection of Daimler’s IP portfolio

Why Daimler succeeded? Likelihood of confusion: a global assessment There is a likelihood of confusion, as per Art. 12, comma 1, letter d) of the C.P.I., if the public is subject to believe that the products and/or services distinguished by the trademarks originate from the same company, or that the companies have some kind of special […]

Revocation for non-use of EU trademarks

The regulation establishes the penalty of revocation for an EU trademark which is not effectively used within five years from its registration or whose use is suspended continuously for five years, except for those cases in which the lack of use is justified by a legitimate reason (Articles 18 and 58 of the EU Trademark […]

Baby Yoda, may the IP force be with you

  Value creation and the importance of monitoring merchandising channels During the series shooting, The Mandalorian’s producer Jon Favreau already estimated the value of the puppet used in the scenes and simply called “the Child” (Baby Yoda is the name given by the public) at least 5 million dollars. Such an estimate is actually realistic […]

“C’è chi può e chi non può: io può”

Article 176 of IPC establishes for opposition applications – under paragraph 5 – that “an opposition may be used to claim the impediments to registration of the trademark established by Article 12, paragraph 1, letters c), d), e) and f) and by Article 14, paragraph 1, letter c-bis), for all or a part of the […]

Design protection under criminal law

  Registered Design and Copyright Nowadays, the aesthetic aspect of an object plays a relevant role also due to the greater accessibility to online platforms, where users can check and compare a wide variety of products and sometimes a particularly attractive form can represent the decisive element for an item to be bought. A product […]

Trademark Opposition Proceedings in Italy

Indeed, the opposition proceedings before the IPTO (Italian Patents and Trademarks Office) is an autonomous procedure other than the judicial one, which is structured in a similar way as the parallel opposition proceedings before the EUIPO (European Intellectual Property Office). However, the latter is competent to settle disputes between TM owners in the EU at […]

Software… between Invention and Copyright

Indeed, a software can be protected with a patent application or copyright. These tools can be implied together or as alternatives to each other. Software protection with a patent application: With regards to software protection with a patent application, it allows to protect the software “logic” regardless of the specific programming language used. In fact, […]

IPTO: Suspension of time-limits for administrative proceedings extended to 15 May – COVID-19

As a result of this provision, for the period between 23 February 2020 and 15 May 2020, all time limits, including peremptory limits, relating to administrative proceedings on request of the parties or ex officio, pending on 23 February 2020 or started after that date, are suspended. It is confirmed that certificates, attestations, permits, concessions, […]

Special Interview with the World Trademark Review as Italy Trademark Attorney Firm of the Year 2020

Q: Can you tell us about your firm (eg, size, practice focuses and key individuals)? A: Since 1878, we have been a leader in the field of intellectual property. Among the wide range of highly customised services that we offer to our clients are trademark, patent, copyright and design protection, as well as strategic and […]

How to Protect an Artwork

Basics: what do we mean by artwork? From a regulatory standpoint, it is the law of copyright (n. 633/1941) that defines what a protected artwork is and that identifies its protection tools. According to copyright law, protected artworks are those having creative character and belonging to literature, music, figurative arts, architecture, theatre and cinema in […]

Covid-19 Emergency – We Remain Fully Operational

Although, following the latest national and regional measures we will have only limited access to our offices, be reassured that all our staff has been properly equipped in order to be able to work from home. Indeed, thanks to new smart working methods we are able to guarantee the provision of our continued services to […]

IPTO: Suspension of terms for administrative proceedings and extension of validity for expiring documents – COVID-19

For what concerns the IPTO (Italian Patent and Trademark Office) proceedings, the Decree-Law broadens the suspension already provided with the Directorial Decree of March 11, 2020. Indeed, the suspension period has been extended to the period comprised between February 23, 2020 and April 15, 2020. Moreover, this suspension period also applies to all peremptory terms […]

Suspension of activities of San Marino’s USBM – COVID-19

We inform that it is, in any case, possible to proceed with filings and renewals by email, without the obligation to send the original documents within one month. The Office has also announced that filings and payments will be processed upon resumption of activities.

EUIPO: Extension of time limits – COVID-19

This decision has been taken since the outbreak has significantly affected worldwide communications and constitutes an exceptional occurrence, which has disrupted proper communication between the parties and the EUIPO.

The Internet of Things (IoT): what is patentable

Within 2025, there will be about 26 to 30 billion devices connected with each other, according to the estimate of EU Patent Office report regarding the fourth industrial revolution. In the last few decades, a series of revolutions has influenced people’s lifestyles. Computer science has spread the use of PCs in almost every house, telecommunications […]

COVID-19 UPDATE – IPTO Terms Suspended Until 3 April 2020 –

Accordingly, all official terms before the IPTO expiring between March 9 and April 3, 2020 are suspended. At the end of this suspension period, the terms will run again for the remaining part.   Please note that this suspension period does not apply to time limits related to either deadlines for opposition proceedings to the […]

Covid-19 Emergency – We Remain Fully Operational

We have put in place contingency plans to guarantee the provision of our continued services to our clients and colleagues throughout this crisis while being prudent and safe. This includes ensuring our staff can work from home and that our clients can contact us as usual. We are confident that if we all follow the […]

The Protection of Shapes

The intellectual and industrial property world offers several answers to this question. It is possible to abstractly protect the whole shape of the product, their single components and also the external packaging features. Therefore, depending on the characteristics of shapes to be protected and the goal to be reached in terms of protection, the company […]

Brexit: Latest Updates

Over ten months have passed since March 29th 2019, the initial date scheduled for our British cousins to leave the European Union, before their effective “exit” which was officially completed last January 31st at 23.00 UK time. The advantage of this delay was the signature of an agreement resulting in UK’s exit with a “withdrawal […]

An Alternative Route to Overcome Trademark Refusal in China: Co-Existence Agreement or Letter of Consent

Although the recent revision of the China Trademark Law had the objective to curb bad-faith trademarks’ filings by providing new grounds of challenge at all stages of the prosecution process (and also imposing sanctions against trademark agencies facilitating bad faith filings), numerous applications- especially of trademarks that enjoy a certain reputation in foreign countries- are […]

Italian Trademark Attorney Firm of the Year 2020

This award represents a great acknowledgment for the great effort, professionalism and dedication of our team to deal every day with new challenges in managing, protecting and supporting the use of trademark rights and industrial property. With over 50.000 trademarks handled and a team of expert attorneys, we have been assisting for over 140 years companies, […]

Online Brand Protection, From A to Zero

Online infringements and Amazon’s challenge, from Brand Registry to Project Zero There is indeed still need for the right tools capable of defeating the ever-growing phenomenon of online counterfeiting: according to an old saying of the Internet, counterfeiters and hackers are always a step ahead with new solutions and ways to avoid controls, therefore it […]

Presentations Of Information (POI): What is Patentable?

In almost all areas of daily life, anybody can experience and use some particular types of presentations of data or information, such as those generated by electronic devices or systems, be they commonly used or not. These are cognitive data, that is to say interaction modes between human beings and machines in general, delivered through […]

“PCT – published the implementing decree for the Italian national phase”

In particular, the recently published Ministerial Decree dated 13 November 2019, and issued by the Italian Ministry of Economic Development, confirmed that the direct entry into the Italian national phase will come into force for International applications according to the Patent Cooperation Treaty, which explicitly designate or elect Italy, filed on or after the 1st […]

The Patent and Trademark Office of San Marino will no longer act as a Receiving Office and will close the National Route

Indeed, San Marino’s Office will delegate its duties as receiving Office under the PCT to the European Patent Office (EPO). Please note that for PCT applicants that are residents or nationals of San Marino, the EPO already acts as a competent receiving Office (in addition to the IB). In addition, on 1 January 2020, the Patent […]

Employees’ Inventions and Right to Fair Compensation

Art. 64 in a nutshell While Art. 65 of IPC regulates inventions of Universities and Public Research Institutes’ employees (as already analysed here), Art. 64 IPC refers to all other cases of employment relationships. Art. 64 IPC distinguishes several sorts of inventions based on two main criteria: the employee’s contract type and the invention’s type […]

Geographical Indications: Definition And Protection Tools

On one hand, Geographical Indications (GIs) represent a tool to give value to products, while on the other they are a guarantee for consumers about the origin, the characteristics and/or the reputation of the purchased products, which are manufactured in compliance with certain product specifications.   Sui generis protection systems for GIs in the EU […]

Fakes’ Purchasers Should Fear Fines and Crimes

The mentioned rules may appear much more meaningful if you only consider the enormous damages that counterfeiting generates: more than 140 Euros lost by every single Italian citizen each year (EUIPO 2018), 88.000 full-time employees lost in sectors damaged by fakes (OCSE 2019), just to give a couple of quick but incisive examples! In other […]

The New Italian Certification Mark

The main function of the certification mark – also called “hallmark” by the EU Directive 2015/2436 of December 16th 2015 about company trademarks, later implemented by the legislative decree n. 15/2019 – is to guarantee the conformity of certified products and services according to specific standards established by the trademark owner (for example with regards […]

Trademark Revocation for Non-use in Italy

In order to answer the above-mentioned questions, it is necessary to refer to art. 24 of the Industrial Property Code. This law establishes the penalty of revocation to those trademark failing to be effectively used within five years from registration or whose use was stopped continuously for five years, except for cases when this is […]

PCT System and Patent Protection abroad

With the economic globalization, the relevant markets for companies of all sizes stretched over covering a growing number of countries. Therefore, patent protection abroad became increasingly requested and necessary in order to obtain a competitive advantage upon competitors. It is well-known that national patents allow for a monopoly right exclusively limited to the territory of […]

Unregistered trademarks

Indeed, it is important to highlight that in a market crowded by the presence of several operators, trademarks act as distinctive signs capable of communicating to the consumer – or to the market in general – a specific message which could be evocative, emotional or related to certain features or qualities of the product or […]

Unregistered Community Designs

In particular, community designs give their owners the exclusive right to prevent third parties from producing, using, offering or commercializing products having features which are similar or identical to registered ones. This right lasts 5 years starting from the registration date and it can be postponed up to 25 years. Contrary to other legislations, the […]

What’s the difference among the symbols ®, ™ and ©?

The Industrial Property Code clearly prohibits to use these symbols if a trademark is not registered. In fact, article 127 (criminal and administrative fees) explicitly establishes that: Without prejudice to the application of articles 473, 474 and 517 of the Criminal Code, whoever manufactures, sells, exhibits, makes industrial use or introduces into the country items […]

Is It Possible To Protect An Idea?

First and foremost, it is fundamental to clarify that it is not possible to patent and idea itself, at least in its abstract and general definition, but only in its practical implementation. That being said, this piece of writing will analyze which tools are available for its protection and when it is advisable to use […]

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What are the main topics discussed at ECTA 2019 “New Horizons through the Highland haze”?

The topic of the conference New Horizons through the Highland haze, which was tailor-made for the chosen location, outlined all speeches given during these three days dedicated to trademarks designs, geographical indications, copyright and the Internet. Recent law cases have been discussed, together with EUIPO and WIPO’s regulation updates and the last legal and industrial […]

Can A Domain Name Be Recovered?

As often happens, one of the most effective defensive strategies against this phenomenon is prevention. Whoever wants to undertake an economic activity and identify it with a trademark should proceed with obtaining one or more domain names corresponding to his/her own distinctive sign, possibly with the most widespread extensions (such as “.com” or “.it” for […]

Porsche 911 crashed into the EU General Court

Porsche has always been imagined as the antagonist of the Italian Ferrari. It is one of the most famous motoring manufacturers in the world and one of its iconic models is the 911 sports car, first being produced in 1963. The 911 is one of the few vehicles to have been continually produced since the 1960s, […]

Trade secrets: Definition and Regulation

In particular, art. 98 IPC defines as trade secret all “company information and techno-industrial experiences, including commercial ones, being ‘secret’ (in the sense that they are not, in their entirety or in the precise configuration and combination of their different elements, generally known or easily accessible for experts and operators in the field), having an […]

The History of Trademark Models

The origin of trademarks is a very much debated matter. The first research to be made from the historical point of view aims at tracing back whether or not trademarks were acknowledged by the laws of the Roman Empire. There is no doubt about it, as we have found undeniable evidence on the objects of […]

Plant Varieties Protection

With the development of new technologies, both opportunities and interests in the creation of new plant varieties have increased, even though their selection and growth needs large investments. Plant varieties protection aims at boosting the creation of new varieties through the acknowledgement of an exclusive commercial right allowing the breeder to recover the investment costs […]

PCT – Italy Opens The “National Route”

In this regard, article 32, clause 16 and 17 of the Decree entails the amendment of articles 55 and 160 of the Industrial Property Code, in order to regulate the designation and election of Italy in international applications filed according to the Patent Cooperation Treaty, irrespective of the designation of the European Patent Organization to […]

Brand Infringement

Fashion, medicines, toys, food and digital devices are only some of the categories affected by this widespread disease, having consequences on several aspects of society. First of all, it is certainly a damage for consumers and, in some cases, a danger for their health; then, it comprises a threat for the economy as it changes […]

Vittorio Faraggiana

He guided and inspired us like nobody else has done throughout the years, thanks to his inherent brilliance, his broad knowledge and unparalleled elegance. His unique and ingenious capacity to solve the most complex situations and see beyond things made him an unquestioned reference point for intellectual property in Italy. With immense regret, profound esteem […]

Industrial Property Rights: Requirements and application scopes

Industrial property rights: the meaning? The phrase “industrial property right” indicates an exclusive right given to a subject upon a specific industrial asset or an intellectual creation. It basically means that with this right it is possible to oppose to any unauthorized use of the mark, the work, the drawing or the invention by third […]

Blockchain as a tool to fight against counterfeiting, in particular for wine products

MAIN FEATURES: the Blockchain and the Blockathon Today, counterfeit products represent 2.5% of the world trade, according to the Counterfeit and Piracy Watch List (7.12.2018) released by the European Commission. The counterfeiting phenomenon shifted from being widespread mainly in the physical market to a quite unmanageable scope, making it necessary for protection tools and laws […]

IP rights recordals

In our system, except for some specific cases, recordals have a declaratory effect rather than a constitutive one; this means that failure to record doesn’t affect the validity of the recordal’s object, but a successful recordal has the purpose to make such act enforceable against third parties, settling possible conflicts among many subjects interested in the […]

A further step Italy takes towards the complete realization of the EU Directive 2015/2436 about the adjustment of member countries’ trademarks regulations

The Legislative Decree n. 15/2019 will become effective on March 23rd and entails important amendments to the current Industrial Property Code. This represents another fundamental step forward towards an Italian legislation regarding trademarks, also harmonized with the other EU countries. After the Legislative Decree n. 30/2005, which reformed the whole matter of industrial property with […]

BREXIT: DEAL OR NO DEAL, THAT IS THE QUESTION

The potential alternative scenarios that such exit will unfold are numerous and vary from a potential postponement of such departure, to a reversal or a modification of the present deal, which has been already approved by the European Union. It is not yet known whether the United Kingdom will leave the European Union with “deal” […]

Contributory infringement: it is against the law to provide the necessary elements to implement an invention protected by a patent

The aforementioned Law amended article 66 of the Industrial Property Code (D.Lgs. No. 30 of February 10th 2005) by adding paragraphs 2 bis, 2 ter and 2-quarter. According to the new wording it is against the law not only to reproduce a whole invention protected by a patent, but also, under certain circumstances, to participate to […]

Also the Italian Patent and Trademark Office (UIBM) introduces the “Fast Track” Procedure

The aforementioned procedure is not new: the European Union Intellectual Property Office (EUIPO) already introduced an accelerated examination iter for trademark applications back in 2014. According to the data provided by the Office, such procedure enabled to effectively reduce mistakes present in claims and, thus, incremented the number of European Union trademarks registered without facing […]

Artificial intelligence and automatic learning machines: what can be protected and how

Artificial intelligence as a mathematical method Artificial intelligence and automatic learning machines become patentable when they are linked to a specific technological application. Without it, these computational models and algorithms cannot be protected by patents as they are mere abstract concepts with a mathematical nature. Is it enough to simply add an electronic device to […]

Trademark availability search

Indeed, Intellectual Property laws provide for the requirement of novelty, according to which any trademark to be registered shouldn’t be identical or similar to others already registered (and sometimes used) in the same territory, with regards to identical or similar products or services.   What is exactly an availability search? An availability search is the […]

A turning point for the producers of wheel rims’ copies. Daimler wins against Acacia.

According to Art. 110 “…protection as a Community design shall not exist for a design which constitutes a component part of a complex product…for the purpose of the repair of that complex product so as to restore its original appearance.”. The aforementioned clause aims to avoid a situation of monopolistic behaviour by stimulating the competition […]

Domain names, between freedom of expression and distinctive character of trademarks in domain name disputes

Disputes on generic domain names (gTLD, new gTLD) are handled, all together and without overlapping with judicial proceedings, by international arbitration authorities (WIPO, among others) which are called upon to apply a whole set of rules known as Uniform Domain Name Dispute Resolution Policy (UDRP). The Policy is a compromise among the various stakeholders on the line: […]

Barzanò & Zanardo celebrates its 140th anniversary and shares with all employees a memorable event.

These years witnessed the utmost expertise, reliability and leadership in the intellectual property field. Since 1878, Barzanò & Zanardo has been working as a technical and legal consultancy firm for trademarks and patents, in order to protect creativity, innovations and the inventions of the human mind. This is an amazing achievement and was obtained thanks […]

PATENTS IN UNIVERSITIES AND PUBLIC RESEARCH INSTITUTES: Article 65 of the Italian Industrial Property Code

In this context, the lack of promotion of the developed technologies gradually gave rise to an economic disadvantage for these institutions. And, even more dramatically, nowadays such attitude constitutes an obstacle for the growth and development of the whole country. In 2001, the Italian government launched a special regulation aiming at promoting the protection of […]

Thanks to Barzanò & Zanardo’s support, Postina® by Zanellato wins a lawsuit against The Bridge

The lawsuit was initiated in 2014 by Zanellato Group, represented by the lawyers Celluprica and Fischetti from Barzanò & Zanardo in order to claim that the renowned bags brand Postina® had been counterfeited by The Bridge, using an identical sign to mark some of its bags models. The Judge in the first instance proceeding accepted […]

GDPR and UDRP: a tricky relationship

This lack of information makes it way more difficult to conduct online brand protection activities, including domain name dispute proceedings. For example, not knowing who registered a domain name makes it very challenging for the complainant to prove registration and use in bad faith, which is a key element to obtain the domain name’s transfer […]

Marques 2018: Paris, the European capital of trademarks and Intellectual Property for a week

Topics of discussion In the first part of the Conference, the lectures of the numerous speakers following one another focused on the outline to identify a mark and a design, together with their relevant technical and legal protection. This is necessary not only to maintain their historical prestige, but also to develop their market appeal. […]

Barzanò & Zanardo celebrates its 140 Anniversary

Outstanding result obtained by Barzanò & Zanardo in tax breaks established by “Patent Box” legislation

These benefits have been made possible by the tax relief available with Patent Box, a special tax regime introduced in Italy in 2015 with the so-called Legge di Stabilità, fostering companies’ investments in research and development activities. The Patent Box regime consists in a reduced IRES and IRAP’s rate for revenues related to IP rights’ […]

Unconventional marks in sports – when celebration becomes a trademark.

Unconventional marks in sports – when celebration becomes a trademark People often think that a trademark is only a “brand” composed of a logo and a word, but that’s not even close to the truth. Take this jingle coming out loud from speakers at the cinema just before the movie starts: who wouldn’t recognize immediately […]

The New Frontiers of Anti-Counterfeiting Technology

This was the first European contest organized to inspire the creation of new anti-counterfeiting devices, based on blockchain technology. The contest gathered 11 programmers and among them the Italian company Cryptomice stood out, winning the award for the best solution with the prototype “virtual twin”, also based on blockchain technology, therefore impossible to forge or […]

Barzanò & Zanardo in Palo Alto for discussing about post grant proceeding

The event was sponsored by the Cardinal Intellectual Property firm. At the event Mr. Andrea Tiburzi was speaker for Barzanò & Zanardo, to discuss, in particular, the opposition and appeal procedures before the European Patent Office. During the seminar, where the attendants had a very active part, besides explaining the procedure and the main grounds […]

The Internet of Things: intellectual property finding itself between opportunity and new challenges

The internet of things is a neologism that has generated great interest with both business insiders and companies for much of this decade. Behind this term lies a paradigm that advocates the embedding of the internet into everyday objects. Supporters of this vision imagine a future where everything is interconnected: thanks to a wide array […]

Barzanò & Zanardo at 37th ECTA – Athens 2018

As every year, Barzanò & Zanardo joined the event with delegates, committee and Council’s members. The conference conveyed interesting and up-to-date topics, ranging from Brexit to the European copyright law reform, design and 3D trademark protection, pharmaceutical trademarks, online IP protection and much more. It was a great chance to meet colleagues coming from all […]

Barzanò & Zanardo will perform the Anti-Counterfeiting Services at Fiera Milano

The Anti-Counterfeiting Service offers assistance to exhibitors in the event of counterfeiting of their products at the fair, allowing them to quickly acquire proof of the alleged wrongdoing and obtain the removal from the exhibition spaces of the products recognized to be in violation. The Free Guidance Service provides information regarding methods of protection and […]

Vinitaly 2018. The international wine fair begins again

The 52nd edition of Vinitaly, the traditional trade fair dedicated to the excellence of world wine production, has been held in Verona starting from April 15th. The event opens under the best auspices. In fact, the previous edition recorded a significant increase in attendance, with over 30,000 top foreign accredited buyers (almost 10% more than […]

2018 Milano Design Week: design returns to the standard-bearer

On April 17th the inauguration of the 57th edition of the Design Week has been held in Milan. The prestigious event took place, as stated in a press conference on February 7th, “with Milan at the center of the renewal process, the Design Week opens, acting as a starting point towards a new way of […]

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