PUBLISHED IN THE OFFICIAL JOURNAL THE NEW LEGISLATIVE DECREE ON KNOW HOW

13/06/2018

On June 7, 2018 the Legislative Decree no. 63 of May 11, 2018, issued in implementation of EU Directive 2016/943 on the protection of confidential know-how and confidential business information against the unlawful acquisition, use and disclosure. The new legislation will come into effect starting from June 22, 2018.

 

The decree in question introduces amendments – even substantial ones – to several provisions of the Italian Code of Industrial Property (articles 1, 98, 99, 124, 126, 132) and of the Italian Criminal Code (articles 388 and 623) and introduces a new article (121ter) to the Italian Code of Industrial Property (hereinafter also “c.p.i.”). Here below the most relevant news:

 

– the extension of the protection of know-how, obtained through the substitution of the terms “confidential company information” with the more general expression “trade secrets”;

– the introduction of two new paragraphs (1bis and 1ter) to art. 99 of c.p.i.: the offence is now extended to those who, at the time of acquisition, use and disclosure of trade secrets, were aware (or should have been) of the fact that the trade secrets were obtained from a third party who used them or he revealed unlawfully;

– the introduction of art. 121ter of c.p.i., which enables the judge – upon request of the party – to prevent the subjects who have access to the documents of the case (parties, attorneys, technical consultants, witnesses, etc.) from using disclosing the trade secrets object of the proceedings;

– the introduction of three new paragraphs (6bis, 6ter and 6quater) to art. 124 of c.p.i. which, on the one hand, put in writing the criteria that the judge must follow when ordering the corrective remedies and the civil penalties provided for by art. 124 (inhibitory, withdrawal from the market, destruction, etc.); on the other hand, they introduce the possibility – when specific conditions occur – to implement alternative measures to the mentioned ones, such as the payment of an indemnity which is appropriate to the prejudice suffered by the owner of the know-how;

– the extension of the crime referred to in art. 388 of the Italian Criminal Code, with the provision that even those who elude the execution of an injunction order that protects trade secrets are liable for the crime of fraudulent non-execution of an order of the judge;

– the reformulation of art. 623 of the Italian Criminal Code and the introduction, among the punishable conduct, of the abusive acquisition, disclosure and use of trade secrets.


LGV AVVOCATI IN THE CHAMBER AND PARTNERS GUIDE FOR PATENT LITIGATION 2018

05/06/2018

The lawyers Goglia, Thiem and Villa assisted in the editing of the Chambers and Partners Guide 2018 for Patent Litigation Law and Practice with special reference to Italian experience in the field

 

Chambers and Partners identifies and ranks the most outstanding law firms and lawyers in over 180 jurisdictions throughout the world. This year LGV Avvocati, being one of the most prominent and exceptional experts in the area, was honored to assist in the preparation of 2018 Guide of Chamber for Patent Litigation and Practice with particular reference to Italy.

The whole version of the guide can be accessed following this link:

https://practiceguides.chambersandpartners.com/practice-guides/comparison/342/1366/2938-2939-2940-2941-2942-2943-2944-2945-2946-2947


LEADERS LEAGUE 2018: LGV CLASSIFIED AS “LEADING” LAW FIRM FOR INTELLECTUAL PROPERTY and TMT

22/05/2018

LGV confirms its position as a leading law firm in the field of copyright, and is ranked in the Technologies, internet & telecommunications category.

 

The Leaders League 2018 guide, the French firm that deals with rating professional firms in various national contexts, considers the high quality of service offered by the firm in relation to copyright and TMT, naming, for the second consecutive year, LGV as the leading law firm in the Intellectual Property category. LGV also achieved ranking, also as the leading firm, in the TMT category.

LGV, once again, has achieved a high position in a prestigious legal ranking, thus confirming the presence and influence of the firm in the international context and its role of relevance in an increasingly competitive global market.

For more details see: https://www.leadersleague.com/en/rankings/search?company=Lgv+Avocati


GDPR HARMONIZATION: ANOTHER WAY

18/05/2018

With the second draft of the legislative decree of harmonization to the GDPR, the legislator significantly altered the provisions of the previous version, abandoning the idea of a total repeal of the Privacy Code.

 

A few days before the entry into force of the GDPR, scheduled for 25 May 2018, the legislative decree of harmonization has not yet taken a definitive form, despite its approval must take place before 21 May. A second draft of the text of the decree has recently been received by the general accountant of the State. The content of the text considerably differs from that of the previous one, dating back to March. If the latter provided for a total repeal of the current Legislative Decree 196/2003, better known as the Privacy Code, the new version, which consists of 28 articles, opts instead for a more delicate work of only selective abrogation, enriched by some reformulations as well as by additions to the current text.

Among the most significant aspects that differentiate the second draft from the first, is, to begin with, that concerning art. 167 of the Privacy Code, which imposes criminal sanctions for the unlawful processing of personal data. The full decriminalization initially conceived by the legislator, which would have also led to the repeal of the provision under examination in order to replace the criminal sanctions with administrative sanctions, has failed in the new text. According to the new version, not only the art. 167 would remain untouched, but two additional cases would be added to it, namely the “Illegal disclosure and dissemination of personal data referable to a large number of people” (Article 167bis), as well as the “Fraudulent acquisition of personal data” (Article 167ter), punished respectively with imprisonment from one to six years and with imprisonment from one to four years.

The profiles related to the protection of the under-sixteen year old’s are also of interest, since the art. 2-quinquies of the new draft, according to the provisions of Article 8 of the GDPR, provides that the processing of personal data of the under-sixteen year old’s is lawful on condition that consent is given or authorized by the holder of parental responsibility.

This is the other way in which the new draft moves away from the previous one, where it was suggested to lower this limit to the age of fourteen.

It remains to be seen what measures will actually be adopted by the main social networks to verify the actual age of their users.

The messaging service Whatsapp, owned by Facebook, has for now required a sort of self-certification. In fact, following the last update of the application, before the access to your chats you must confirm you are sixteen years old or above. It is clearly useless measure, since it will be enough for the under sixteen years to lie about their age, without being subjected to any further control over the veracity of what was declared, in order to continue using the app exactly as before. Moreover, even crossing the data of Whatsapp with those of Facebook, the problem would not be solved, because the users could falsify their date of birth on the social network. It, therefore, appears complicated to predict which type of verification could possibly be introduced so that the adjustment to the GDPR can acquire a real meaning.

In the hypothesis in which the under sixteen years instead declare their real age, Facebook (as well as Instagram, always owned by him) has planned to request the insertion of the email address of a parent, so that the latter can give consent to the use of the social by the child.


EUIPO REFUSES TO REGISTER THE EUROPEAN TRADEMARK ‘SUPREME’

10/05/2018

The Office of the European Union for Intellectual Property has declared inadmissible the application for registration of a European trade mark filed by Chapter 4 for the mark “Supreme”, following review, considering the sign to be descriptive and devoid of distinctive character.

 

The European Union Intellectual Property Office (EUIPO) has decided to re-examine the application for registration of the European trademark proposed by Chapter 4 for the trademark “Supreme” for clothing, accessories, retail and online sale (classes 13, 25 and 35 of the Nice Classification). The Office’s decision was based on the observations of a third party.

Specifically, in the review procedure, the Supreme mark was assessed as descriptive, as the relevant consumers would perceive the sign as containing information that the goods and services for which Chapter 4 applied (handbags, clothing, retail services for clothing etc.) are of the highest quality. Consequently, according to EUIPO, consumers would be misled by that sign by giving it the ability to provide information on the very quality of the goods and services in question, which, in fact, bear the ‘Supreme’ mark.

Furthermore, the Office has argued that since the mark has a clear descriptive character, it is itself devoid of any distinctive character and thus unable to fulfil the essential function of the mark (i.e. to distinguish the goods or services of one undertaking from those of others) within the meaning of Article 7(1)(b) of the RMUE. In the opinion of the EUIPO, the sign in question is perceived by the relevant public merely as a laudatory promotional message capable of indicating the characteristics of the goods and services bearing it, highlighting its positive aspects, without any indication as to their commercial origin. EUIPO then goes so far as to state that although the sign for which Chapter 4 requested protection contains some elements which give it a certain degree of stylisation (consisting of fairly common and perfectly legible white characters, on a rectangular red background), the nature of those elements is so negligible that they do not give the mark as a whole any distinctive character.

By communication of 25 April 2018, EUIPO therefore refused the application for registration of the European trade mark filed by Chapter 4 of the Supreme trade mark, declaring it inadmissible and stating the reasons for its rejection on the basis of Article 7(1)(b) and (c) of Article 7(2) of the RMUE. Chapter 4, however, may present any observations on the objections raised by EUIPO within a period of two months from the notification of the communication of 25 April 2018; if any observations are not made within that period, the request will be rejected.