All posts by luminous

SIMONA LAVAGNINI AT THE SEMINAR ON VALORIZING, MANAGING AND DEFENDING INTELLECTUAL PROPERTY

19/09/2016

Next 27 September 2016 Ms. Simona Lavagnini will participate at the round table discussion “Valorizing, managing and defending Intellectual Property” organized by “The ruling companies association”. The event will be held at the Lombardy Industrial Association Congress in Milan.


 

The meeting is intended to provide small and medium sized Italian companies, known to be highly creative and innovative, with the necessary information and instruments to valorize and protect their ideas. Ms. Lavagnini will engage with the other participants and will speak of her own extensive professional experience in assisting technology companies, providing support in the development phase of ideas as well as in the stage involving registration and protection of IP assets.

Information and registrations at http://rulingcompanies.org/incontro/valorizzare-gestire-difendere-la-proprieta-intellettuale/


CRITERION OF INTERPRETATION OF CORPORATE BYLAWS

13/09/2016

The clause of a public limited company’s bylaws requiring a wide majority for the resolution having as object the issues concerning certain matters is aimed at protecting minorities in order to allow the latter to have the opposition power to preserve the balance existing inside the company. Therefore, an interpretation of this clause which allows its amendment through a most limited majority seems contradictory, in the light of the good faith criterion and on the basis of the common intention of the parties, with the consequent annulment of the relevant resolution. The clause of the bylaws protecting the minorities imposing a wide majority for the resolution concerning certain issues cannot be modified through a limited majority.


 

The First Civil Section of the Supreme Court, with decision no. 4967 of March 14, 2016, returned to the controversial matter of interpretation of the bylaws.

The lawsuit concerned the challenge by certain shareholders of a Public Limited Company (hereinafter the “Company”) of a resolution of the extraordinary shareholders meeting adopted in September 2001, which modified article 17 of the relevant bylaws. Article 17 of the bylaws required a wide majority — equal to 60% of the share capital — in case of a shareholders meeting that, in the first and second call, resolves upon certain items on the agenda, expressly listed, among which the amendment of article 17 of the bylaws did not appear.

The extra-ordinary shareholders meeting of the Company proceeded therefore with the amendment of article 17 of the bylaws according to the majority provided by art. 2369 of Italian Civil Code (in its former provision before the relevant amendment occurred by Legislative Decree 6/2003) and, therefore, through a majority equal to over one third, lower than that provided in the same article 17.

The shareholders challenged the resolution before the Court and the Court of Appeal in order to obtain the relevant annulment for the lack of observance of the majorities provided herein.

The Court of Appeal rejected the appeal submitted by the minority shareholders of the Company, while the Supreme Court recalled the laws regarding the interpretation of a contract (art. 1362 and following of Italian Civil Code) in order to annul both the challenged decision and, resolving on the merit, the part of the resolution of the Company which amended article 17 of the bylaws without observing the majority provided hereto.

The Supreme Court deemed that the interpretation of the bylaws pursuant to  good faith, in accordance with the provisions of articles 1369 and 1366 of Italian Civil Code determines that, in presence of a clause of the bylaws which protects the minority of the shareholders providing for a wide majority of votes in case of resolution of the shareholders regarding certain matters, even the resolutions aiming at amending the clauses in which the wider majorities are provided must be subject to the same wide majorities. As a consequence, a non-qualified majority of the shareholders cannot on its own, even in case of lack of provision of the bylaws, modify the clause governing such wide majorities.

This decision of the Supreme Court has crucial value since it refers to the debate regarding the applicability to the bylaws of the “subjective” interpretative criterion provided by the general discipline of contract law (articles 1362-1366 of Italian Civil Code), aimed at giving more value to the purpose followed by the parties and to the behaviors of the latter after the execution of the contract, instead of the objective criterion provided for the interpretation of the law in general (article 12 preliminary disposition of Italian Civil Code), based, above all, on the literal meaning of the single provisions.


PRIVACY – ON OCTOBER 1, 2016, THE NEW CODE OF CONDUCT FOR THE PROCESSING OF PERSONAL DATA CARRIED OUT FOR COMMERCIAL INFORMATION PURPOSES WILL ENTER INTO FORCE

06/09/2016

From October 1, 2016, the measures called for by the “Code of conduct for the use of personal data carried out for commercial information purposes” will be applicable. The Code of Conduct (available in full at the following link: http://www.garanteprivacy.it/web/guest/home/docweb/-/docweb-display/docweb/4298343) has been promoted by the Italian Data Protection Authority and prepared in cooperation with various associations concerned to the field. 

The new Code is directed to companies that provide information on the commercial reliability of entrepreneurs and managers, and aims at regulating the activities of those entities through a balance between their freedom of economic initiative, on one hand, and the security, individual freedom and dignity of the people whose data are processed, on the other hand. In fact, the data collected and processed by those companies are particularly sensitive, as they refer to the economic and financial position of entrepreneurs. It follows that the incorrect use of databases and invasive analysis tools can cause serious damages to the dignity and privacy of all the people involved.


 

Here are the most significant rules introduced by the Data Protection Authority in the Code of Conduct:

  • Scope: the new Code of Conduct will only apply to commercial information relating to individuals. The Code, in fact, takes over the definition of “personal data” provided for by Article. 4 of the Legislative Decree 196/2003 (“Privacy Code”), which refers to “any information concerning a natural person, identified or identifiable“. It follows that all the commercial information that do not make reference to individuals are freely usable (point 3 of Preamble);
  • Data traceability: in order to create a business information dossier on a manager or an entrepreneur, only the personal data referring to that person – or to people or entities that have or have had legal and/or economical connections with it – can be used (the mentioned connection exists, for instance, when the data subject owns a company through a direct or indirect control of shares) ( 2, par. 3 and 4);
  • Usable data and consent: only the following data can be used: i) data coming from public sources, cognizable by anyone (and thus the information contained in the companies’ register and within balance sheets, real estate deeds, detrimental acts); ii) data extracted from publicly available sources and generally accessible by anyone (such as newspapers, telephone directories, government or control and surveillance agencies’ websites); iii) personal data that the data subject freely decided to communicate to the commercial information provider ( 3, par. 1 and 2). In the cases refered to in points i) and ii) the data may be processed without the consent of the data subject (art. 5);
  • Data processing arrangements: when they collect and keep personal data, the commercial information providers are required to: i) ensure that the acquired information are correct and pertaining to the pursued purpose; ii) take note of the source of the data; iii) keep the data up-to-date ( 3, par. 4);
  • Information to data subjects: for the processing of the above mentioned data the commercial information providers give to the data subject a non-individual information which is released in accordance with simplified modalities compared to than the ordinary ones provided for by art. 13 of Privacy Code. In particular, the information must be released within a portal specifically created by the commercial information providers, in case they have an annual turnover of more than € 300,000.00; within the website of the single commercial information provider, in case its annual turnover is lower than the above mentioned amount ( 4);
  • Time-limits for use and keeping of data: the personal data collected for commercial information purposes may only be kept until they remain knowable and/or published in the public sources where they come from ( 8). As far as concerns detrimental information (such as bankruptcies, insolvency proceedings, mortgages, etc.), Art. 7, par. 4, introduces stricter deadlines (for instance, the information relating to insolvency proceedings normally cannot be used for more than 10 years from the date of opening of the insolvency proceedings itself);
  • Security: all commercial information providers are required to implement appropriate measures in order to ensure the security, integrity and confidentiality of the collected and processed information ( 10);

Entry into force: the new Code of Conduct shall enter into force on October 1, 2016. Therefore, from said date, any processing of personal data with commercial information purposes shall be considered as illicit if it is not compliant to the Code.


THE “BETTY BOOP” JUDGEMENT OBTAINED BY LGV IS SUPPORTED BY LEGAL COMMENTS

30/08/2016

On the third volume of the Italian legal periodical “Rivista di diritto industriale”, the first comment on the historic judgement held by the Court of Bari on February 22, 2016 (whereof it has already given notice on LGV’s website – https://www.lgvavvocati.it/en/news/page/3/) appeared. The comment supports the position taken by LGV in the proceedings, and essentially embraced by the Court, according to which the attempt to perpetuate the monopoly on the character of Betty Boop through the trademark protection must be rejected when the copyright on that character has expired (Court of Bari, February 22, 2016, in “Rivista di diritto industriale”, p. 293, with comment of Bixio, “Long live Betty Boop, the extra-protection of the fictional character”).
 

 
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In a previous news of our website we talked about the historic decision of the Court of Bari in the “Betty Boop” case, where LGV defended the US company Avela, active in the field of posters and merchandising of fictional characters, supporting the thesis according to which – once a fictional character enters the public domain – a trademark covering the same character could not prevent the use of the character in other graphic representations, not having trademark function. The Journal of Industrial Law recently published a case note to the decision of the Court of Bari, which supports the correctness of the judgement in question, expressly affirming that “the line held by the Court of Bari it is more than appreciated where it wants to ward off the attempt to create upon the famous character of Betty Boop a revival of broader and longer-lasting rights than copyright’s ones”. The comment also points out – correctly – that an attempt of this kind is increasingly common, even in terms of prolongation of the duration of the protection and/or extension of the right’s object. Instead, it clearly arises from the comment on the decision of the Court of Bari, as well as from the previous case-law regarding the fictional character, the need to avoid any deceptive use of industrial and intellectual property tools (in this case the trademark), in a pro-competition perspective which is typical of the field of industrial and intellectual property. In fact, it should not be forgotten that such monopolies are born and live in accordance with their pro-competition effects, and more generally for the creation of values for a company as a whole: as a consequence, any use of the tools of industrial and intellectual property aiming – “extra legem” – at an undue extension of the protection shall be avoided (and considered out of the system), in order to prevent such an use from turning into an ultra-monopolistic defense in favor of people – already holders of an economically dominant position – who can perpetuate this position only by virtue of the economic investments that they are able to make, without having to actually perform any creative or innovative activity. The system of intellectual and industrial property, instead, never protects the investment “per se”, but only if it is aimed at creating a value (differently qualified by law as creative, original, distinctive, etc.). This is the strength and the function of the institutes analyzed herein, which must be defended by the operators, in order to avoid a drift of the institutes that could lead to their delegitimization and therefore – ultimately – to a boomerang effect for all the owners of rights of this kind.


ONE FAMOUS PERFUMED TREE. THE COURT OF MILAN IS CALLED TO DECIDE ON THE PROTECTION OF REGISTERED TRADEMARKS AND COMPETITION.

28/07/2016

The Court of Milan, with judgment published on May 11, 2016, found in favour of the action for invalidity of the trademark “Forest Fresh” as well as that of unfair competition advanced by Julius Samann Ltd and Tavola S.p.A., two companies each of which owns intellectual property rights and is exclusive licensee in Italy of the marks “JSL” which are represented by the particular stylized form of the conifer tree “Arbre Magique”. The actions were taken against the Polish company Siscar Spolka z o.o. Spolka Komandytowa which marketed products bearing the mark “Forest Fresh” thus infringing the above mentioned “JSL” marks.


 

The claimants sought to protect national, European and international marks constituted by the stylized form of the conifer tree, subsequently used for tree-shaped deodorants. In particular, the claimants argued that the international mark “Forest Fresh” owned by the Polish company Siscar Spólka z o.o. Spólka Komandytowa – a sign consisting of a stylized tree, at the centre of which the denominative element “Forest Fresh” appears so as to distinguish a line of products that are identical to those on which the claimants use their mark (car deodorants) – would be invalid and indeed constitute infringement of the mark owned by the claimants. It would also amount to conduct of unfair competition due to slavish imitation (of the retail packaging and of the colours used in association with identical fragrances) as well as misappropriation.

The Court of Milan held that the marks in question would cause confusion, in light of the highly distinctive character of the JSL marks and of the intrinsic characteristics of the signs (considering that the shape of the stylized tree far outweighs the denominative component of the mark and is also entirely fanciful, as it does not describe in any way the fragrance of deodorants presently under scrutiny) as well as of the reputation enjoyed among the consuming public.

The Judges in Milan thus found an infringement of the JSL marks on part of the “Forest Fresh” mark, which they held invalid. The Court also decided that the conduct of the defendant company amounted to unfair competition due to slavish imitation, as resulting from the risk of confusion between the signs, and misappropriation, seeing as the defendant presented products in the same way and made use of identical distribution channels (exhibiting them in motorway recreational shops, gas stations, shops selling housing items and supermarkets) via packaging that was also completely identical, for the sole purpose of “riding on the coattails” of the competitor. Finally, the Court also held that art. 2598, n.3, of the Civil Code, was applicable to the case at hand.