With 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.
L’amministratore di s.r.l. che impedisce al socio non amministratore di accedere agli atti relativi all’amministrazione e alla gestione della società risponde del reato di “impedito controllo” previsto all’art. 2625 c.c.
È quanto stabilito recentemente dalla VI sez. penale della Cassazione con sentenza n. 47307 del 27 settembre 2016, con cui la Corte ha confermato la condanna dell’amministratore di una società a responsabilità limitata per aver ostacolato il controllo e la verifica delle informazioni relative alla gestione della società da parte di un socio che ne aveva fatto richiesta.
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.
The 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.
After 15 years, the Italian Supreme Court has brought the long-standing matter to an end: according to the decision of the Court, Italy’s Gabibbo is not a copy of America’s Big Red, and there is no finding of copyright infringement.
This is the result of drawn out proceedings which commenced in 2002, when several American companies, including the Western Kentucky University, summoned a number of Italian entities before the Court of Ravenna to contest the use and commercial exploitation of the puppet “Gabibbo”.
The Claimants alleged that Gabibbo – the red and rather clumsy character created by Italian television producer Antonio Ricci and appearing on Italian Television in October 1990 – infringed the copyright in their puppet Big Red, a red, furry and athletic mascot of Western Kentucky University, known in the US as the WKU icon and representing the Spirit of Western.
Dopo 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.
The South African group Aspen Pharma was fined Euro 5.2 million two weeks ago by the Italian Competition Authority (“ICA”) for having imposed excessive prices for its antitumor drugs “Cosmos” acquired from GlaksoSmithKline in 2009.
This is the third (controversial) case in which the ICA deals with allegations of anticompetitive behaviour in the pharmaceutical sector.
On 18 October 2016 the Higher House of the Italian Parliament approved the draft bill on ratification of the Unified Patent Court Agreement (UPCA), with 161 votes in favour, 30 against and 7 abstentions. The approval by the Higher House comes only a few weeks after the same bill was approved by the Italian Chamber of Deputies on September 15th, and a few days after the opinion of Commission on EU affairs of the House commented here.
The bill is now ready to move to the final stages of the ratification process and to be signed into law by the President of the Republic. This approval comes in a moment of great uncertainty on the future of the system, due to the turmoil caused by the UK referendum.
The Italian Ministry of Justice has identified the premises of the Milanese local division of the Unified Patent Court (see press release here). The division will be hosted in a new building, a few meters away from the main courthouse. The building already hosts other judicial offices and, as of today, is not entirely in use, ensuring the necessary flexibility if an expansion of the division will be needed in the future. See here for an aerial view of the San Barnaba building.
Interestingly, the Ministry’s press release does not refer to the possibility that Milan may in the future be the seat of the life sciences branch of the central division. This is probably an indication that a request of reallocation of the London branch is seen as premature in light of the current efforts to ensure continuing participation of the UK in the UPC project. This may reflect the view which is shared by many in Europe that a system without the UK would be less attractive.
This prudent approach seems to be shared by the Higher House of the Italian Parliament, where the draft bill enabling Italy to ratify the UPC Agreement is currently under examination, after having been approved by the lower House. With the opinion of 5 October, the Commission for EU affairs of the Higher House approved the wording of the draft bill, adding the following (inevitably convoluted) recommendation: “it is suggested that Italy shall host a local division of the Court of first instance and, if and the when the negotiations concerning the departure of the United Kingdom from the European Union so allow, may offer itself as the candidate country to replace the London branch of the central division” (the opinion is available here). This seems to suggest that at least for the time being Italy will keep a wait and see approach until the dust of Brexit settles.
Following the favorable opinion of the Commission, the draft bill will now have to go through a general vote in the House. Approval is expected soon, even if the voting day is not yet on the House’s schedule.