Trademark infringement is a very high risk in a globalized world where companies are in fierce competition with one another. Successful brands, in particular, run the risk of being copied in the market. A distinctive sign is a high-value piece of industrial property that must be protected.
To prevent trademark infringement and thus safeguard the value of one's brand, it is advisable to have a clear and precise strategy to avoid any attempt at counterfeiting or usurpation.
This strategy is none other than registration, which in our view always remains the best way to protect oneself against attempts by third parties, alongside the searching of similar trademarks and patents subsequently introduced into the market.
It is therefore always advisable to consult professionals and lawyers specializing in intellectual property law who have the skill and experience to manage each situation, keeping in mind that no two cases are identical.
Trademark Infringement
Article 473 of the Italian Penal Code states: "Anyone who counterfeits or alters domestic or foreign trademarks or distinctive signs of intellectual works or industrial products, or, without having participated in the counterfeiting or alteration, makes use of such counterfeited or altered trademarks or signs, shall be punished by imprisonment for up to three years and a fine of up to four million lire.
The same penalty applies to anyone who counterfeits or alters domestic or foreign patents, industrial designs or models, or, without having participated in the counterfeiting or alteration, makes use of such counterfeited or altered patents, designs or models."
Starting from the wording of Art. 473 c.p. (Codice Penale / Penal Code), it is easy to understand how Italian law aims to punish anyone who unlawfully uses another's trademark or an identical or similar sign by an unauthorized party, resulting in the creation of (even potential) confusion for the consumer.
It is important to emphasize that infringement is not necessarily linked to the intention to copy another's distinctive sign; on the contrary, in most cases, a similarity between two trademarks is created entirely by chance, or even a perfect coincidence between two signs occurs without one being aware of the existence of the other. Often, in fact, a company notices the existence of a competitor that has a distinctive sign resembling or recalling its own without the companies ever having been in contact.
Counterfeiting in Italy
In Italy, the phenomenon of trademark infringement and counterfeit goods is, unfortunately, highly topical.
In fact, after the United States, Italy is the country with the highest rate of counterfeiting in the world. This is a worrying figure that certainly causes concern for entrepreneurs who work hard and invest daily in enhancing their brand.
Research by the Ministry of Economic Development and Censis (Centro Studi Investimenti Sociali / Social Investment Studies Center) states that without counterfeiting, there would be 110,000 more jobs in Italy and 1.7 billion in tax revenue. If fake products were sold on the legal market, the study continues, production would rise by 13.7 billion Euros and taxes (including indirect revenue) by 4.6 billion Euros. The Italian market for fakes is estimated at approximately 6.9 billion (2010 data), a figure that is unfortunately stable compared to Censis estimates from a year earlier (7.1 billion), although at that time the employment figure resulting from defeating counterfeiting was calculated at 130,000 additional units.
Counterfeiting as a Global Phenomenon
An error that many entrepreneurs make is to underestimate the phenomenon of counterfeiting, thinking that their registered brand or product cannot be copied and sold.
Counterfeiting is one of the most widespread phenomena globally, affecting all product sectors indiscriminately: from fashion to food, from medicines to digital media (DVD / CD), to name just a few, fueled by genuine criminal organizations often rooted in multiple nations.
How to Act in the Face of Trademark Infringement?
In most cases, acting promptly out of court is sufficient.
In this instance, the first action for those who believe their rights have been infringed is to contact the alleged infringer directly, informing them of the existence of an exclusive right to use the trademark and simultaneously inviting them to immediately cease the unlawful activity.
Often, a formal cease and desist letter sent by a law firm is necessary to stop unlawful behavior or, where appropriate, to reach an agreement between the parties that allows for the coexistence of two trademarks while avoiding market confusion, perhaps following some modification of the later trademark.
Legal Action
When out-of-court action does not yield the desired results, the only advisable remedy is to turn to the Court.
Those who believe their rights have been infringed can initiate judicial litigation before the Court by filing an infringement lawsuit, thereby asking the Judge to prohibit the infringer from continuing to use a specific distinctive sign.
Claim for a Finding of Infringement
With a claim for a finding of infringement, one can request:
- The immediate cessation of the unlawful act;
- An order for compensation for damages suffered, primarily calculated based on the infringer's profits;
- Reimbursement of legal costs;
- The definition of a penalty for any future infringements, should the infringer dare to continue their conduct;
- The seizure and/or destruction of the infringing products;
- An order for withdrawal from the market and the publication of the ruling in newspapers and trade magazines.
Depending on the case and the specific situation, the claim can be brought through ordinary proceedings, via the service of a writ of summons, or through urgent precautionary proceedings by filing an appeal.
Urgent Measures
The greatest fear for an entrepreneur is, undoubtedly, having to wait too long for the law to take its course. In a commercial world where rhythms are frantic, this risks creating significant damage. To address risky delays, in cases where one is faced with an infringement that has recently begun (or been discovered), it is possible to activate an urgent measure.
Essentially, the Court is asked to take action within a very short timeframe to decide rapidly on the matter.
A Judge can thus decide within a few weeks on the seizure of infringing goods or provide for a ban on the use of the contested trademark. In cases of extreme urgency, they could even send their own Officer within a few days to ascertain the actual unlawful activity being carried out by an entrepreneur within their company.
Alternatively, if there is no urgent character or if it cannot be proven, the judicial process follows the ordinary route. The Court sets itself in motion and a judgment will still be reached, but within significantly longer timeframes.
Preventing Trademark Infringement
Always with a view to protecting one's registered trademark, it is of fundamental importance to set up a monitoring service.
This activity has a very low annual cost and allows for being promptly informed of any attempt by third parties to register an identical or similar trademark.
In this way, it is possible to file a timely opposition to the registration, thereby asking the trademark office directly—such as the UIBM (Ufficio Italiano Brevetti e Marchi / Italian Patent and Trademark Office)—not to grant the unlawfully requested trademark as it is too similar to an earlier trademark. This is a way to preemptively block all attempts, intentional or otherwise, to infringe the previously registered trademark.
What Happens to Those Who Do Not Monitor Their Trademark?
At this point, having understood the importance of monitoring activity, it is worth focusing on the consequences for those—and unfortunately, there are still many—who do not pay due attention to this type of activity.
First of all, it should be noted that those who decide not to monitor their trademark and stop attempts to register a similar or identical trademark at the source expose themselves to the risk of having to face, as mentioned, a long and expensive legal action.
Furthermore, another concrete risk is that, once too much time has passed since the registration of the trademark deemed unlawful, the trademark becomes effectively unassailable due to the "acquiescence" or inertia of the owner of the earlier trademark.
Indeed, it should be remembered that after 5 years from the registration of a trademark, it becomes incontestable, except in rare cases.
The law thus grants protection due, essentially, to the inactivity of others and prevents oppositions or challenges by the owners of earlier trademarks. In this case, which is much more frequent than one might think, nothing can be done and the existence of a similar trademark must be accepted, with an evident risk of confusion in the market, thereby creating twofold damage: economic and reputational.