Botti & Ferrari

In a recent judgment, the European Court of Justice ruled that Adidas may bar the registration as a Community trade mark, of parallel strips on the sides of sports shoes. The facts: in 2009 the Belgian Company Shoe Branding Europe has filed an application for a Community trade mark for footwear consisting of two parallel bands. Adidas has then filed opposition on the grounds that one of its earlier marks consists of three parallel bands. OHIM, in the first instance, has rejected the opposition. However, following an appeal, the EU General Court has ruled in favor of Adidas. The Belgian Company has filed an appeal to the European Court of Justice, which, however, has confirmed the previous judgment.

On 12/24/2015 it has been published in the Official Journal of the European Union the EU Regulation No. 2015/2424 dated 16.12.2015 laying down the amendment of Regulation EC No. 207/2009 concerning the Community trademark. The new rules will come into force on March 23 2016. Among the main changes: the Office will be renamed EUIPO (European Union Intellectual Property Office) and the CTM will be renamed “European Union trade mark”. Moreover, there are also important changes with reference to the taxation system and the requirements for registration of the new European Union trade mark.

The Ministry of Economic Development, in collaboration with Unioncamere, has organized two new measures, called Marchi + 2 and Disegni + 3 (whose official communication have both been published in the Official Gazette December 3, 2015) to develop SMEs IP rights. In particular, as per Marchi + 2, 2.800.00 Euro have been allocated, and the measure has two distinct lines of action to facilitate the registration of Community Trademarks (OHIM) and International Tademarks (WIPO). The benefit covers up to 80% of eligible expenses (90% in case of international trademark designating China and / or the US). As per Disegni + 3 the funds allocated amount to 4,700,000 euro and it is intended for the purchase of specialized outsourced services to develop, on the one hand, the start of production of new products related to a registered design, and, on the other hand, its commercialization. The benefits shall be up to 80% of eligible expenditure. For Marchi + 2, applications may be submitted starting from 9:00 am on February 1, 2016, while for Disegni +3 applications may be submitted starting from from 9 am on 2 March 2016, in both cases until funds are exhausted.

Due to the large number of applications submitted by Companies to gain access to the economic benefits provided by the the funding programme “Disegni +2” (a funding program aimed to micro, small and medium-sized Italian Companies for the economic exploitation of designs, which has been set up by the Italian Ministry of Economic Development and activated on Nov. 6, 2014), it has been noticed a rapid depletion of the resources allocated by the Ministry, which consequently, on 13 January 2015, has declared the suspension of the Funding Programme at issue. However, on November 11, 2015, it has been published in the Official Journal a notice relating to the decision of the Ministry to refinance the Funding Porgramme “Disegni +2″. In this regard, an additional 20 million euro will be allocated, which will be destined solely to the applications which were pending on January 13, 2015, date of the suspension of the Funding Porgramme.

Last month the European Patent Office (EPO) and the China’s State Intellectual Property Office (Sipo) have celebrated their 30th anniversary of bilateral collaboration. Such a cooperation is supported not only by the technical and informational interchange between the two organizations, but also in terms of patent and patent application registration. Where total filings of Chinese enterprises at EPO have been increased in the period 2010-2014 with an annual rate of growth estimated at about 20% (taking into consideration that the total filings of all countries at EPO have been increased in the same period of about 3.7%), the number of filing per year on behalf of Italian enterprises at Sipo has been increased in the same period of about 4.8%. These considerations demonstrate a constantly-rising economical collaboration between the two countries.

On october 30, Mr. Rinaldo Ferreccio, partner of Botti & Ferrari, will participate as a speaker at the conference entitled “Europe and innovative Companies: European developments in the Law of technological innovation” which will take place at the University of Parma. The conference will focus mainly on issues relating to the unitary patent, the European case law on the SPC, EPC 2000 limitation proceedings, national rights and the possible reforms of the regulations on know-how. In his speech, Mr. Ferreccio will outline the recent developments in Europe and in the US on dosages, sub-ranges and methods of administration.

The German Federal Supreme Court, Court of last instance in the ordinary justice system in Germany, has established, upholding the judgment of appeal, that the chocolate bears-shaped product marketed by Lindt do not constitute infringements of gummy candies, also bear-shaped, produced by Haribo. The subject of the dispute, which began in 2012 is the chocolate bear-shaped “Lindt Teddy” marketed by Lindt, which according to Haribo, was too similar to the famous gummy bears produced by the latter, and therefore able to determine confusion among consumers. The first judjement was in favor of Haribo, while on appeal the Court has found that the similarities between the two products were not likely able to confuse consumers. This assessment has been confirmed by the German Federal Court, which has dismissed the appeal of Haribo.

Italy has joined the Unitary Patent and has become the 26th state of the European Union that has joined the enhanced cooperation for the creation of a Unitary Patent. With Italy’s entry, the EU Patent will become “even more attractive” for companies and inventors, as it has been reported in an Official statement of the European Commission. However, at present, the participating EU member states that have ratified the agreement are only 8 (Austria, France, Belgium, Sweden, Denmark, Malta, Luxembourg and Portugal). The sole EU countries that currently do not participate to the Unitary Patent are Spain and Croatia.

It is well-known that the Italian University system is permanently looking for funds and, consequently, the R&S expenditure of Italian public sector is dramatically low. Nevertheless, from 2005 to 2012 Italian Universities have filed a constantly growing number of patents, which amounts to about 3000 filings per year (2013).