Legal Advice

Welcome to the Legal section

To defend your idea against infringement you need to choose the most effective protection with the help of an expert.

Below you will find a guide to the main topics to help you shed light on the matter.

1. How to avoid being copied
2. How to protect patents, trademarks and designs
3. How to protect copyright
4. How to protect trade secrets and know-how
5. How to prevent and stop unfair competition
6. Copyright infringement
7. Trademark infringement
8. Patent infringement
9. Design infringement
10. Cease and Desist Letter
11. How to defend yourself if you are accused of infringing a patent
12. How to defend yourself if you are accused of infringing a trademark
13. Responding to a patent warning letter
14. Responding to a trademark warning letter
15. How to obtain compensation for damages

Unfortunately, those who have a good idea often underestimate the importance of protecting it, thinking they can assert their rights merely because they are the creator. The reality is that this is not enough.

When a new product is invented, no right is obtained unless a patent is registered. And there’s more.

The protection obtained is not linked to the invention but only to the written description in the patent. Let me explain.

In the event of infringement, a Judge will not compare the original invention with the copy, he/she will only take into consideration the text, description and drawings of the patent and will evaluate whether the copied object corresponds to the written description in the patent.

This procedure highlights how important it is to make sure the patent is prepared thoroughly.

Having a rubber stamp or a number is of no use without adequate and well-written documentation capable of guaranteeing real protection.

This also applies, although in a different way, to design and trademark protection, so rule number one to avoid being copied is to consult an expert for advice and assistance.

Please note that only registered Patent Attorneys and Lawyers can file patent applications in Italy.

Engineer and Italian and European patent attorney, Mario Emmi, is the best person for making sure your rights are protected.

Scopri come tutelare la tua idea

To protect a patent it is necessary to file a specific application to which complete documentation, comprising description, technical drawings and the claims that are the heart of the protection of the invention, must be attached.

The documentation must be prepared according to very specific writing logic and layout of the drawings aimed not so much at conveying how the invention works in detail but highlighting the inventive principle.

Only a patent expert – rather than a general technician, however good at his job – will have sufficient skill and expertise to prepare appropriate documentation.

To protect a design it is necessary to proceed with its registration. Although this is simpler than a patent, the registration of a design is very delicate as defence relies a great deal on the way the product is presented to the Office.

Registering the wrong view or an overall design rather than a detail completely changes the type of protection that is obtained and consequently the type of defence that can be obtained.

If, for example, I want to protect a particular type of buckle for bags but instead of just registering the design of the buckle, I register a photo of the entire bag, I may have great difficulty preventing others from using that buckle on completely different bags.

A trademark must also be registered in order for it to be protected.

There are many options to be assessed before registering a trademark. In fact, it is important to assess whether it is appropriate to register the graphic or verbal trademark, whether it is sufficient to register one or more than one and, above all, it is important to identify classes of products and services correctly.

Not everyone knows that a trademark is protected only for the products and services that are indicated in the registration application.

Making mistakes when identifying products can mean having no protection.

For trademarks, just as with patents and designs, having a rubber stamp and a registration number are of no use if the dossier has not been adequately prepared or if errors have been made when registered.

To obtain the protection of works covered by copyright no registration is required, in theory, but it is essential to be able to prove with certainty that you are the author and that you were the first to have created the work.

This is why it is a good idea to register the work through official channels.

The only registers required by law are

• registry with the Società Italiana degli Autori ed Editori – SIAE (Italian Authors and Publishers’ Society) of the unpublished work, to be carried out to protect the work before public disclosure;
• registry of the published work with the Presidency of the Council of Ministers (Italy).

Any other type of registry, with a Notary or, worse, on websites, has no official value and constitutes only an empirical means of demonstrating paternity, and are also more easily subject to challenge.

Ufficio Brevetti has an in-house lawyer, Chiara Morbidi, who is an expert in copyright protection and will advise you on the best solutions to protect your creations.

In an ultra-connected globalised economy of free competition, the protection and defence of trade secrets, vital for competitiveness, development and innovative capacity, play increasingly strategic roles for companies.

It is therefore very important for a company to protect its trade secrets, which consist of all the company information (including commercial and administrative information), know-how and technical-industrial information and experience, subject to the company’s control.

However, in order for this information to be protected it is necessary that, as envisaged by Article 98 of the Italian Industrial Property Code, it is secret, has economic value because it is secret and is subjected to reasonably adequate measures to keep it secret.

In order to protect information and experience adequately as trade secrets it is therefore necessary to proceed with a series of preliminary steps such as the identification of company information and resources, the description and classification of information and documents and the structuring of security tools and measures.

These protective measures are also very important in order to protect trade secrets in court: in fact, only adequately protected information will be able to be recognised and therefore be applied against the person who violated or stole it.

Our firm will be able to provide you with all the assistance you need both in the consultancy phase for the provision of all the necessary measures for the protection of your trade secrets and in that of a possible defence in court.

Unfair competition is an insidious phenomenon that is not always easy to block.

Whoever engages in acts of unfair competition often uses subtle means and tricks of every kind to imitate and try to get in the wake of a competitor without, however, copying him in a clear and obvious way, just to try to avoid being dragged into court.

The unfair competitor therefore does not copy outright but, through a series of modifications that make it more difficult to tackle him, imitates the products or services or brands of others.

Preventing this phenomenon is not at all easy, but it is certainly important to protect all company innovations, production processes, methods, products, trademarks and, above all, design as much as possible.

In addition to registering everything possible in order to have a right to be able to assert in court, it is important to protect all trade secrets and know-how by drawing on the appropriate procedures governing secrecy.

Lastly, it is important to keep all press reviews, advertising, photos, trade fair catalogues and anything and everything else that the company uses to promote its brands, products and services.

Of particular interest are also online publications, both on websites and social networks, which should be periodically stored digitally and dated.

Collecting this material can be of fundamental importance in the event of unfair competition.

An unfair competitor usually does not simply imitate one aspect of another’s business but copies several, so being able to demonstrate coupling in more ways than one helps substantiate a claim.

If you are facing unfair competition, it is essential to make a preliminary analysis of the case to establish the right strategy. A hasty move can compromise the outcome of any action.

Often we ask for protection for copyright infringement when, in reality, we have suffered violation of our rights as the author.

The two terms are not synonymous. Copyright refers to an Anglo-Saxon law, whereas European legislation is regulated by a series of rules protecting the rights of the author, not only the so-called “copy right” but also a whole range of additional rights, including the moral right to be recognised as the author of a given work.

Copyright infringement can therefore be of multiple types.

Infringement can occur if our web site text is copied, even when the text has not been copied “as is” but has been modified and altered, the basic text is nevertheless perfectly recognisable.

The same applies to photos. Using other people’s photography and modifying it not only does not prevent plagiarism, it worsens it, because, in addition to the copy, there is also alteration, which is not permitted without the author’s consent. 

Paintings, songs, music, databases and software are all works protected by Italian Law No 633 of 22 April 1941, as amended several times over the years.

You can be subjected to copyright infringement much more often than you think; with the expansion of the Internet, a belief has arisen that whatever is online can be used freely, which is absolutely not the case.

If you have suffered infringement and wish to defend yourself, many instruments, both judicial and extrajudicial, are available.

The important thing is to frame the case well and choose the appropriate means.

Copyright law enables you to intervene very quickly, effectively blocking the offence, but you should contact an expert lawyer who can apply the law well and quickly.

Our lawyers will be able to advise the best solution so that you can get justice in the most effective way.

It often happens that a company copies the trademark of a competitor.

This can be done fraudulently, in order to follow in the wake of the competitor and take advantage of the publicity and fame of the brand, or it can happen quite innocently and merely out of ignorance that the trademark had already been registered by others.

The first case is obviously more serious because trademark infringement is often accompanied by other activities, such as advertising or promotional messages of various kinds, aimed at winning over customers from the owner of the trademark.

In this case strong, defensive action must be taken as soon as possible to block the use of the similar trademark in order to curtail loss of customers and reputation and, as regards the Internet, positioning online and consequently on the market.

From the legal point of view,  “unintentional” trademark infringement is just as unlawful and is neither less harmful nor treated in a softer way.

All registered trademarks are listed in databases that are accessible to the public, so an entrepreneur must check that the trademark he wishes to use has not already been registered by others.

If he does not check and then says, “I didn’t know”, he commits an offence because he failed in his duty to ascertain that the trademark was not already registered.

Therefore, even those who adopt an identical or similar trademark to others in good faith, will be accused of infringement, summonsed to cease use of the trademark and sued for damages.

So, if someone is using an identical or similar trademark to your registered trademark, you can and must act as soon as possible to stem the negative effects of this situation.

Many means are available to us ranging from an injunction to immediately block use and seizure of products bearing the counterfeit trademark to action for damages.

It is a matter of establishing a legal case and making use of special urgent procedures that are extremely rapid and can bring about a solution in just a few weeks whereas claims for damages take longer.

These are specific and complex procedures that only lawyers with great experience and expertise in the field can use in a truly effective manner.

Our lawyers are well versed in these procedures and are able to intervene quickly, thereby halting the infringement of the trademark.

If you find yourself in the opposite situation, having unintentionally copied the trademark of a competitor, all is not lost and defensive arguments in your favour can be assessed.

The important thing is to contact an experienced lawyerwho knows how to find any exceptions, a justification, a previous case that might help you defend yourself and avoid paying copious compensation for damages.

Among the many solutions there may also be that of attempting an amicable agreement  (settlement) with the trademark owner, to reduce damages and avoid negative consequences for those who have copied.

It can happen that a company finds itself in serious difficulty because it copies or makes a product or implements a method in good faith, without knowing that it has been patented by somebody else.

In fact, whether it is intentional or not, infringement is always illegal and the company that has suffered must defend itself quickly to avoid negative effects.

No infringer can defend himself by saying he did not know of the existence of the patent.

All patents are listed in publicly accessible databases, so an entrepreneur should make sure that he does not infringe on another’s patent before creating a new product.

Unfortunately, in practice this happens very rarely.

Companies only go to the trouble of checking the free reproducibility of an object when they have some suspicion that there may be a patent, but not in every case.

Therefore, even those who copy a third party’s patent unintentionally will be accused of infringement and can be sued by the patentee to obtain not only the cessation of production and sale of the counterfeit product but also compensation for damages.

Therefore, if someone is copying your patent you can and must act as soon as possible to stem the negative effects of this situation.

Many means are available to us ranging from an injunction to immediately block the production and marketing of the object in question or the implementation of the method and the seizure of counterfeit products to action for damages.

A legal case will have to be established making use of special urgent procedures that are extremely rapid and can bring about a solution in just a few weeks whereas claims for damages take longer.

These are specific and complex procedures that only lawyers with great experience and expertise in the field can use in a truly effective manner.

Our lawyers are well versed in these procedures and are able to intervene quickly, thereby halting the production and sale of the copied products.

If you find yourself in the opposite situation, having unintentionally copied the product of a competitor, all is not lost and defensive arguments in your favour can be assessed.

The important thing is to contact an experienced lawyer who knows how to find any exceptions, a justification, a previous case that might help you defend yourself and avoid paying copious compensation for damages.

The first assessment to be made in this case will be on the validity of the patent, which can be verified by carrying out in-depth “prior art” research and which can sometimes hold surprises.

Among the many solutions there may also be that of attempting an amicable agreement (settlement) with the patent owner, to reduce damages and avoid negative consequences for those who have copied.

It may happen that a company imitates the form of another’s product without knowing that it has been registered by others or in the belief that a few changes are sufficient to avoid problems.

In fact, whether it is intentional or not, design infringement is always illegal and the company that has suffered must defend itself quickly to avoid negative effects.

No infringer can defend himself by saying he did not know of the existence of a registered design or model.

All registered designs are listed in databases that are accessible to the public, so an entrepreneur must check that the design he wishes to use to make a particular product has not already been registered by others.

Unfortunately, in practice this happens very rarely.

Companies only go to the trouble of checking the free reproducibility of an object when they have some suspicion that there may be a registered design or model, but not in every case.

Those who copy a third party’s model or design will be accused of infringement and can be sued by the owner to obtain not only the cessation of production and sale of the counterfeit product but also compensation for damages.

Therefore, if someone is copying your registered design, you can and must act as soon as possible to stem the negative effects of this situation.

Many means are available to us ranging from an injunction to immediately block the production and marketing of the object and the seizure of counterfeit products to action for damages.

A legal case must be established making use of special urgent procedures that are extremely rapid and can bring about a solution in just a few weeks whereas claims for damages take longer.

These are specific and complex procedures that only lawyers with great experience and expertise in the field can use in a truly effective manner.

If you find yourself in the opposite situation, having unintentionally copied the product of a competitor, all is not lost and defensive arguments in your favour can be assessed.

The important thing is to contact an experienced lawyer who knows how to find any exceptions, a justification, a previous case that might help you defend yourself and avoid paying copious compensation for damages.

The first assessment to be made will be on the validity of the registered design, for example, which can be verified by carrying out in-depth “prior art” research and which can sometimes hold surprises.

Among the many solutions there may also be that of attempting an amicable agreement (settlement) with the owner of the design or model, to reduce damages and avoid negative consequences for those who have copied.

When you realise you are being copied or someone infringes your rights or is in unfair competition, you should intervene immediately and the first thing you could do is to send them formal warning requesting they cease their behaviour.

This warning is a useful tool, however, although it is apparently easy to write two lines explaining the grounds and asking the other party to stop doing what he is doing, the letter of formal notice is extremely delicate and must be well thought out.

Sending such a letter means “declaring war” on the opponent and the first rule of any dispute is to arm yourself well before undertaking any action.

The Cease and Desist Letter must therefore always be preceded by a case study, by a concrete examination of the rights and wrongs and possibly also by the implementation of preliminary actions that may prove to be fundamental weapons in the event that the opposing party does not yield immediately.

Before writing, you must be prepared for a legal battle. Even if we hope that this does not happen, without this preparation we risk finding ourselves caught off guard in the event that, as often happens, the other party does not have the slightest intention of giving up.

Preliminary preparation also helps in compiling the letter.

Unfortunately, people often turn to us for legal advice because they have hastily sent or had sent by professional third parties a warning that not only did not have the desired effect but which worsened the situation because statements are made that prove to be nothing short of inappropriate in the light of a broader strategy or following more in-depth examination.

Other times, a warning results in greater damage because, once warned, the competitor begins to undertake action that makes it more difficult to attack him, for example, in the case of infringement via the Internet, changing domain name details or management, or, in more ordinary cases, by making the suspicious goods disappear.

Our advice, therefore, is not to be impulsive.

When you notice or suspect you are being copied you must approach an expert lawyer as soon as possible.

This is the right thing to do.

Don’t do as many people do when they come to us after one or even two letters have already been written; consult our professionals BEFORE taking any steps.

If you have marketed a product and someone has written or contacted you or, worse still, sued you, claiming that you are copying a patent, you should immediately look for a patent attorney and one who can also count on the expert advice of an engineer patent attorney.

It is in fact necessary to intervene promptly to evaluate, on a technical level with the instruments that only the patent attorney has, whether the patent of the other party is valid and whether your product does or does not constitute an infringement.

In order to be able to do this analysis, reasoning provided by patent law must be used and it is not enough just to look for any exterior differences.

Patents are governed by “claims” which indicate the content of the invention and which are often written in a way that is not only extensive but also difficult to read for those who are not qualified in this field.

A patent attorney knows how to interpret the contents of the claims and on this basis can carry out a search for anteriority to verify if those characteristics in the patent are really innovative or if, by chance, they were not already known before othersregistered a patent application.

The fact that the patent has been granted may in fact not be sufficient to establish the validity of the patent as the examiner might have missed a previous invalidating document, which could therefore be your salvation.

In the event that the patent is confirmed as valid, infringement assessment is nevertheless carried out by comparing the technical characteristics of the object that is assumed to be copied with the characteristics described in the claims.

This part of the work is also quite complex and very technical, but sometimes you can manage to find the right solution to get out of the constraint of the patent.

If you find that you have copied someone else’s trademark or if someone has written or contacted you or, worse still, sued you, claiming that you are copying a trademark, you must immediately look for a lawyer expert in trademarks and industrial law.

It is in fact necessary to act promptly to assess, on a technical level, if the conditions for infringement exist.

Initially, the work will concern the validity of the trademark even if, in the case in which the trademark is a fantasy name, it is rather difficult to be able to sustain its nullity.

This analysis is, however, very useful and can sometimes offer good defensive arguments in the case of generic, descriptive trademarks or when some defect in the registration procedure can be found.

The most important part of the work, in the case of trademark infringement is, however, that of the technical-legal analysis that must be done to show that the two trademarks are not actually similar.

In this case, again, it is not enough to say in simple words that the two trademarks are different; it is necessary to use all the technical tools that only the trademark expert is able to use to demonstrate on the basis of EUIPO Directives, as well as Italian jurisprudence, that the trademarks differ on a phonetic, graphic and semantic level and in their overall impression.

In order to be able to do this analysis, reasoning provided by trademark law must be used and it is not enough just to look for any exterior differences.

This part of the work is quite complex and very technical but you may be able to find the right solution to get out of the patent constraint.

The response to a letter of formal notice, just like sending a warning, is an apparently simple action but in reality it is difficult and risky and should not be underestimated.

If you have received such a letter, that means that someone has “declared war on you” and, unless he is a fool, means that he has taken the time to examine the situation and is ready for any eventuality.

The letter of formal notice, unless it is reckless, is always be preceded by a case study, by a concrete examination of the rights and wrongs and possibly also by the implementation of preliminary actions that may prove to be fundamental weapons in the event that the opposing party does not yield immediately.

For this reason, all necessary analyses must be carried out before responding.

Unfortunately, people often turn to us for legal advice because they have hastily sent or had sent by professional third parties a reply that only worsened the situation or even compromised their defence.

Our advice, therefore, is not to be impulsive.

When you notice or suspect you are being copied you must approach an expert lawyer as soon as possible.

In order to be able to intervene effectively, the reasoning provided by patent law must be used and it is not enough just to look for any exterior differences.

Patents are governed by “claims” which indicate the content of the invention and which are often written in a way that is not only extensive but also difficult to read for those who are not qualified in this field.

The fact that the patent has been granted may in fact not be sufficient to establish the validity of the patent as the examiner might have missed a previous invalidating document, which could therefore be your salvation.

In the event that the patent is confirmed as valid, Engineer Patent Attorney Emmi will nevertheless carry out an infringement assessment by comparing the technical characteristics of the object that is assumed to be copied with the characteristics described in the claims.

This part of the work is also quite complex and very technical, but sometimes you can manage to find the right solution to get out of the constraint of the patent.

The response to a letter of formal notice, just like sending a warning, is an apparently simple action but in reality it is difficult and risky and should not be underestimated.

If you have received such a letter, that means that someone has “declared war on you” and, unless he is a fool, means that he has taken the time to examine the situation and is ready for any eventuality.

The letter of formal notice, unless it is reckless, is always be preceded by a case study, by a concrete examination of the rights and wrongs and possibly also by the implementation of preliminary actions that may prove to be fundamental weapons in the event that the opposing party does not yield immediately.

For this reason, all necessary analyses must be carried out before responding.

Unfortunately, people often turn to us for legal advice because they have hastily sent or had sent by professional third parties a reply that only worsened the situation or even compromised their defence.

Our advice, therefore, is not to be impulsive.

When you notice or suspect you are being copied you must approach an expert lawyer as soon as possible.

It is in fact necessary to act promptly to assess, on a technical level, if the conditions for infringement exist.

Initially the work will concern the validity of the trademark even if, in the case in which the trademark is a fantasy name, it is rather difficult to be able to sustain its nullity.

This analysis is, however, very useful and can sometimes offer good defensive arguments in the case of generic, descriptive trademarks or when some defect in the registration procedure can be found.

The most important part of the work, in the case of trademark infringement, is however that of the technical-legal analysis that must be done to show that the two trademarks are not actually similar.

In this case, again, it is not enough to say in simple words that the two trademarks are different; it is necessary to use all the technical tools that only the trademark expert is able to use to demonstrate on the basis of EUIPO Directives, as well as Italian jurisprudence, that the trademarks differ on a phonetic, graphic and semantic level and in their overall impression.

In order to be able to do this analysis, reasoning provided by trademark law must be used and it is not enough just to look for any exterior differences.

This part of the work is quite complex and very technical but you may be able to find the right solution to get out of the patent constraint.

Anyone who has suffered infringement of their patent, trademark, design, or plagiarism of a copyright or unfair competition has the main objective of stopping the infringer but also has the full right to obtain compensation for damages.

In order to claim damages, proceedings on the merits of the case must be brought as no compensation is foreseen in the urgent phase in which action is taken to block the marketing of counterfeit products and which can last a number of weeks only.

It therefore takes longer, but the law offers valid tools that effectively allow those who have suffered infringement to be able to obtain compensation for damages.

In fact, it is possible to ask the infringer to pay “emerging damages” to reimburse all the expenses incurred as a result of the infringement and the “loss of profit” due to the unlawful act.

Whilst the first type of damages are easy to prove, the second are more difficult as it is not always possible to determine exactly the total loss in profit deriving from the infringement.

For this reason, Italian legislation provides for, in alternative or in addition to the loss of profits, the request for “retroversion of profits”, i.e. the payment in favour of the subject who has suffered the damage of all profits made by the infringer.

If these criteria are not sufficient, the infringer can also be asked to pay compensation for damages calculated on the basis of “proper royalty”. In practice, this is a matter of calculating how much the infringer would have had to pay to the person who suffered the plagiarism if he had paid a market royalty  (pretending that the patent, trademark, design was licensed) and to this royalty an additional percentage is added on a “punitive” basis.

In addition to economic damages, “moral damages”, which are usually calculated as an additional percentage of the economic damage, can also be requested.

These are very effective and innovative tools that require expertise to be effective.

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