Recent GDPR Developments in Italy

Can we say that Italy took the new privacy rules set out in GDPR seriously?

Italian businesses have carried out many preparatory activities in view of 25 May 2018, the date of full applicability of the European Union’s General Data Protection Regulation No. 679/2016 (“GDPR”): a large number of privacy policies have been amended and updated, Data Protection Officers have been appointed and mailing lists have been reviewed and updated to comply with the new provisions

After the first few months with the GDPR in full force, this article takes a critical look at the current state of affairs

Although the GDPR has direct effect in Italian law and thus required no implementation, the Italian Council of Ministers approved a Legislative Decree (no. 101/2018) with the purpose of harmonizing the Italian Privacy Code (D. Lgs. n. 196/2003) with the new GDPR provisions. The Italian decree entered into force on 19 September 2018.

There are several new provisions regarding amongst others the consent of minors, which in relation to the direct offer of “information society services” must be given by those exercising parental responsibility where a child is under 14 years; the legal basis for data processing have been identified in laws and regulations as well as in “the performance of a task carried out in the public interest or in the exercise of official authority”; privacy policies on the management of CVs must be provided to the candidate at the time of the “first useful contact”, after the candidate spontaneously sends the CV to a company/organization; privacy requirements for small to medium sized enterprises have been simplified; new penalties have been introduced in relation to unlawful data processing; illegal communication and disclosure of data processed on a large scale; violations of the provisions on remote controls and surveys of workers’ opinions, etc.

Moreover, based on a recent public notice from the Italian Data Protection Authority (“IDPA”), it appears that the number of complaints filed with the IDPA are up 42% since 25 May this year: more than 2.500 complaints and reports have already been filed with the IDPA compared to 1,795 received in the same period last year.

In addition, the IDPA has received more than 40,000 communications of DPO data and more than 300 cases of data breaches have been notified.

In conclusion it seems the GDPR provisions have evidently been taken very seriously by Italy becoming more and more widely applied, thus enabling more effective protection of personal data.

With a judgement dated 26 April 2018, the General Court of the EU held that the famous Argentinian football player – and multiple Ballon d’Or winner,  Lionel Andrès Messi, could  register his mark ‘MESSI’ for sports and gymnastics clothing, footwear and equipment notwithstanding the opposition by the owner of a highly similar earlier sign “MASSI” registered  for similar goods. The trade mark applied for is represented below:

This matter commenced back in November 2011 when Mr Messi’s trademark was opposed by Mr. Jaime Masferrer Coma who had an earlier trade mark registration for clothing, shoes and bicycle helmets, protective clothing and gloves.  The Opposition Division upheld the opposition against Mr. Messi’s application on the basis of the similarity of the signs ‘MESSI’ and ‘MASSI’ and the similarity and identical nature of the goods.  Mr. Messi lodged an appeal to the Board of Appeal of the EUIPO against this initial decision but the appeal was dismissed in 2014.

According to the Board of Appeal, there would be a likelihood of confusion between the two trade marks in view of the high similarity of the signs and of the goods covered (in particular, sports equipment and clothing, though not limited to the field of football).  The Board of Appeal held that there was a likelihood of confusion because of the similarity between the dominant elements of the two marks which are almost identical visually and phonetically. Regarding the conceptual differences arising due to the fame of Mr. Messi, the Board of Appeal considered that this differentiation would only be perceived by the football and sport lovers ie: only by a part of the relevant public and not by the whole of the relevant public, and that this was not sufficient to result in a risk of confusion for the public.

The Sixth Chamber of the General Court, led by the Italian President, Judge Rapporteur Mr. Berardis, took a different view. The EU judges did not question the findings of the Board of Appeal concerning the visual and phonetic similarity of the signs, but they did challenge the assessment of the conceptual similarity and the resulting assessment of the likelihood of confusion between the two signs.

According to the General Court decision, Mr. Messi is a public personality well-known to the vast majority of the public. The average consumer “reasonably well informed and reasonably observant and circumspect” when purchasing sport-related (but not just football-related) clothing and accessories could only but associate the sign “MESSI” with the famous football player. Although it would be true that not all the public would know the details regarding his career and achievements, the General Court thought it highly unlikely that a part of the public would have never heard of him or know who he is.

The General Court considered that the fame of Mr. Messi did not need to be further demonstrated by the applicant with documentary evidence – which had not been done in a timely fashion during the administrative phase of proceedings before the EUIPO – as – according to the General Court – Messi’s name is so well known, that there is no need for further proof. Such fact could have been known and thus taken into account by the Board of Appeal when reaching its decision, thus it did not need to be invoked or supported by evidence by any of the parties even in the administrative phase.

The General Court concluded that the conceptual differences between the signs, linked to the fame of Mr. Messi, are so striking that they are able to neutralise the visual and phonetic similarities between the signs at issue. Thus, it affirmed that the Board of Appeal erred in considering that there was a likelihood of confusion and it annulled the decision of the EUIPO.

The Spanish company, JM-EV e hijos, current owner of the sign “MASSI” has two months to decide whether to bring an appeal against this judgement, limited to the points of law, before the Court of Justice.

This judgement recalls the “PICASSO” case (T-185/02 and appeal C-361/04 P) where the reference to the famous painter (whose heirs, who had licensed the use of the name to the car manufacturer Citroën, were the opponents), due to his fame, ruled out any conceptual similarity with respect to the contested DaimlerChrysler’s trade mark application “PICARO”, both covering similar goods which had nothing to do with art painting, namely motor vehicles.

Hence, according to the EU case law in question, famous persons’ names as trademarks seem to be double edged weapons when it comes to the likelihood of confusion test. On the one hand they can be very resistant to oppositions like in the recent “MESSI” case, but also, on the other hand, oppositions having famous persons’ names as their basis are not able to impede similar signs to be later registered, as in the “PICASSO” case.

It will be interesting to see how famous personalities will actually ride the wave of this EU case law – and whether an appeal is filed.

 

 

Benedetta Marsicola

The CJEU has just confirmed that the concerted provision of misleading information about product safety can constitute a restriction by object under Article 101(1) TFEU, when it is intended to reduce the competitive pressure resulting from an alternative medicinal product (Case C-179/16, F. Hoffmann-La Roche and Others v Autorità Garante della Concorrenza e del Mercato).

Continue Reading Breaking news: CJEU ruling in Hoffmann-La Roche published on 23 January

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On 29 November Italy’s Antitrust Authority launched non-compliance proceedings against Ryanair, the Irish air line for alleged unfair commercial practices and breach of the Italian Consumer Code.

Following the spate of flight cancellations, on 25 October the Rome Administrative Court (TAR), ordered Ryanair to provide information to its passengers  – either through easily accessible procedures on the home page of its website  or  by standard email or by sms  – on how they could receive reimbursement, change the flights to alternative flights and receive other compensation. The cancelled flights occurred between 10 September –2 October and Ryanair was given a 10 day deadline to rectify the positon and ordered to provide a full written report to the court setting out details of all cancelled flights, to make the necessary information updates to its website and to inform all customers of their respective compensation rights.  Ryanair filed a brief to suspend the order but this was rejected and Ryanair failed to comply with the court order.

The Antitrust Authority in initiating its investigations for non-compliance of a court order will look into the reasons for the cancellation of numerous flights which had been booked and paid for. It will examine whether these were indeed not due to unforeseen circumstances nor to technical operational matters nor due to other reasons outside the control of the airline as well as examining whether the information was conveyed to passengers in a professional manner:  Ryanair risks  monetary sanctions of up to  Euro 5 million for the said breaches.

The Irish airline has 30 days to file defence briefs and documentation in its defence. A decision of the Antitrust Authority will be issued within 120 days.

 

 

 

bandiera.jpgWith a one-year delay, the Italian government has implemented the EU Directive 2014/26/EU “on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market”, the so-called Barnier Directive.

On 11 April 2017, the Legislative Decree no. 35/2017, which implemented the Directive, entered into force.

This way, the ‘freedom of right holders to choose their collective management organizations’, as well as the principle of ‘equal treatment of categories of right holders and equitable distribution of royalties’ has finally been recognised in the Italian legal framework.

However, this new Italian provisions have probably not gone as far as many had hoped.

Continue Reading The Legislative Decree which implements the Barnier Directive has entered into force

The Italian IP Code (Legislative Decree no. 30 of 10 February 2005) provides that, where an action for invalidity or infringement is filed before a court with reference to a not yet granted/registered IP title (patent, trademark, designs etc.), judgment shall not be issued until the Italian Patent and Trademark Office (UIBM) decides on such grant/registration. For this reason, judges, taking into account the particular circumstances of the case, may stay proceedings one or more times waiting for the outcome of the administrative procedure (Article 120.1).

Although Art. 120.1 only refers to grant/registration procedures before the UIBM, a large part of the case law holds that this provision reflects a general principle that is also applicable to patent applications filed before the European Patent Office (Court of Turin, 3.12.2013; Court of Turin, 6.5.2013; Court of Turin, 16.10.2012; Court of Turin, 28.9.2012; Court of Milan, 23.9.2012; Court of Turin, 7.4.2010; Court of Turin, 3.10.2008).

What is more controversial is whether the above provision also applies where a European patent – after having been granted – has been subject to an opposition procedure before the EPO. 

Some decisions seem to imply that Art.120.1 should also be applied when the European patent is subjected to an opposition procedure and that, consequently, a decision can be issued only when there is certainty about the existence of the title and of its actual scope of protection (Court of Turin, 3.12.2013).

More recently, the Court of Milan also ruled on the above issue with judgment no. 803 of 23 January 2017, wherein it held that there is no general obligation for the judges to wait for the conclusion of the opposition/appeal procedure, but it is up to the Court to discretionarily assess the circumstances of the case, in order to determine whether to stay the proceedings or not.

In the case decided by the Court of Milan, the plaintiff’s patent, being the subject matter of the proceedings, had been granted by the EPO and was subsequently limited by the Opposition Division. The plaintiff appealed the decision before the Board of Appeal of the EPO and the defendant sought a stay of the Milan proceedings on the basis of Art. 120.1.

The Court stated that whilst it is an established principle that Art. 120.1 is applicable to patent applications filed with the EPO, it is up to the discretionary evaluation of the Judge whether to stay the proceedings when the opposition is pending.

In this regard, judges shall carry out a summary evaluation of the grounds of opposition and consider the possibility that the related decision may be relevant for the purpose of the national proceedings.

The Court noted that, according to the case law of the EPO, if a decision is only appealed by the patentee, the Board of Appeal cannot conclude in a sense less favourable to the patentee than that resulting from the appealed decision (prohibition of “reformatio in peius”).

In light of this, the Court observed that the scope of the plaintiff’s patent was maintained in an amended form by the Opposition Division; the Court advisor appointed in the Italian proceedings had already provided his technical opinion on the amended version of the patent; and the Board of Appeal could not further limit this scope of protection or revoke the patent.

Therefore, the Court held that no stay would have been appropriate, as there was no uncertainty with regard to the existence and scope of protection of the patent.

The decision at issue states that there is no general obligation to stay the proceedings once a patent is granted and opposition thereto is pending and identifies a number of factors/circumstances to be assessed in order to determine the appropriateness of a stay of the national proceedings. 

pillos.PNGThe Italian Competition Authority (AGCM) and the Italian Medicines Agency (AIFA) recently signed a Memorandum of Understanding with a view to strengthening their cooperation. The Memorandum underlines that the two agencies share common interests, which relate in particular to keeping high levels of competition, granting access to medicines and preserving the economical balance of the pharmaceutical system. The Memorandum thus intends to help its signatories perform their mission in a more coordinated and efficient manner.

The main issues tackled in the Memorandum are, on the one hand, the potential violations of competition rules in the setting of drug prices, which are agreed upon in negotiations between AIFA and the pharmaceutical companies, and, on the other hand, unlawful counterfeits/online marketing of medicines.

The Memorandum provides that each agency shall report to the other in case it comes across, within the framework of its activities, a risk of violation of the provisions for which the other agency is responsible.

The two agencies also undertake to cooperate in developing reports to the Italian Parliament and Government and in carrying out enquiries on shared interest matters.

In order to ensure such cooperation works, they agree to exchange documents, data and information, establish regular communication channels and carry out any other appropriate activities, including informal activities.

Being aware that this is a sensitive aspect, the Memorandum specifically indicates that divulgation to third parties of documents, information and data acquired as a result of its implementation will have to comply with the secrecy and privacy provisions the receiving agency is subject to.

AGCM President, Mr Pitruzzella, reportedly declared that the Memorandum will intensify the already existing cooperation between the two agencies. He pointed out that the end users in the pharmaceutical sector –  the consumers  – are particularly vulnerable, and that, on the other hand, the companies operating in the sector make substantial investments. In this framework, he considers AIFA’s contribution and expertise to be particularly valuable.

The Pharmacies’ association, Federfarma, welcomed the Memorandum pointing out its underlying importance in the fight against illegal online marketing and infringement of pharmaceutical products and affirmed its willingness to cooperate in fighting online infringers.

Although the Memorandum is not particularly detailed and did not have wide media coverage, it is likely to have a rather positive impact, for instance in helping prevent situations such what occurred in the Aspen case (see our lexology post of  3 November 2016), where AGCM fined a pharmaceutical company for an abusive price increase which actually resulted from an agreement negotiated between such company and AIFA.

Bannerdepositotelematico.jpgDopo alcuni anni di ricerche, discussioni, controlli e aggiustamenti, all’inizio dell’anno scorso (febbraio 2015) l’Ufficio Italiano Brevetti e Marchi (UIBM) ha finalmente introdotto una procedura telematica per il deposito online di domande tramite una piattaforma digitale. Inizialmente, le domande online erano state limitate ai marchi, brevetti e modelli ornamentali e relative istanze, tuttavia in un secondo tempo, nel novembre 2015, la procedura telematica era stata estesa anche alle varietà vegetali, al deposito di opposizioni, ricorsi e relative istanze.

Continue Reading Il sistema italiano di deposito online: revisione e aggiornamento

marmo.pngLast spring our blog examined trademarks and Geographic Indications (GIs) see Daniela Ampollini below, “Se è un marchio è un marchio, se è un’indicazione geografica, non può essere un marchio” and in December 2014 the overlap between GIs and trademarks was a conference topic for partner, Julia Holden at the INTA December meeting in Munich. Last week in Brussels a one day conference also discussed whether Geographical Indications (GI) should be extended to non agricultural products. While the conference findings and responses to the consultation Green Paper are yet to be published, this article looks at whether it could be useful to extend the stretch of GIs beyond its current limits of foodstuffs wines and spirits to additional non-agricultural products.

Continue Reading Florence’s Leather & Botticono Marble: The EU Green Paper