Botti & Ferrari

Patent box is a favorable tax regime provided for income from patent, trademark, design and know-how. The facility is the exclusion from taxation of 30% of the income from these intangibles in 2015, 40% in 2016 and 50% from 2017 forward. Such a favorable tax regime was initially introduced with a duration of five years, but the text of the “Investment Compact” Decree Law approved yesterday by the House of Representatives suggests the possibility of a renewal beyond the current limit of five years. The text of the Decree passed by the House of Representative now goes to the Senate, to be converted into official law within the final deadline of 25 March 2015. Continue waiting for the implementing rules that establish in detail the criteria to calculate the amount of income from IP that is possible to exclude from taxation, according to the patent box.

On March 10, 2015, OHIM has published a pilot study on the economic damages due to violations of IP Rights in the field of cosmetics and products for personal care products. The study has analyzed the direct and indirect loss of revenues in the business field at issue due to the presence in the market of counterfeited goods such as perfumes, cosmetics, makeup and personal care products, also examining the impact on public finances. The data are impressive: the counterfeit of items of perfumery, make-up and personal care products (such as shampoo and sunscreen products) generates an annual loss of revenue in the region of EUR 4.7 billion, which corresponds to 7.8% of total sales in these business field, thus determining a loss of approximately 50,000 jobs.

In view of the large number of applications filed, the funds allocated to the program called MARCHI +, promoted by the Ministry of Economic Development in favor of micro, small and medium sized Companies, have been run out. Therefore, it is no longer possible to submit the relating online applications.

The company has been ordered by a Texan court to pay $ 532.9 million to Smartflash, a Texas-based firm that owns and licenses tech-related patents. The court found certain iTunes features to be infringing upon the above company’s patents related to digital rights management, data storage and managing access through payment systems. The intellectual property filings (US 8,336,772; US 8,118,221; US 7,334,720) describe techniques to manage the storage of audio and video files, apps and games, including methods to ensure that data are purchased properly before being allowed to run on a portable device. Smartflash also prosecutes patent lawsuits against Samsung, the first rival of Apple in the smartphone market and against Amazon and Google too.

With opposition No. 442/2012, the Company Jaguar Land Rover (formerly known as Land Rover) has contested the registration of a figurative mark consisting of two Chinese characters “路虎”, of which application was filed on November 31, 2011 by the Company Depend China Limited . According to the opponent, the real meaning of such contested two Chinese characters is “Land Rover”: in fact, the same Chinese characters are used by Land Rover to identify themselves in China. Nevertheless, the Italian PTO (UIBM), with Decision No. 123/2014, has rejected the opposition in its entirety, as it has found no likelihood of confusion between the marks “Land Rover” and “路虎”. In taking the decision at issue, the Examiner, pointing out that the relevant public is composed by Italian consumers, that, normally, do not know the Chinese language, has considered the mark “路虎” not as a word mark, but rather as a figurative mark. Although the decision at hand seems to be well-argued, the practical result coming from it gives rise to more than one concern.

On February 5, 2015, the decision of the Italian PTO (UIBM) ruling on Italian opposition proceeding n. 32/2012 (PepsiCo Inc. v. Perfetti Van Meille Spa) has been published. This decision is very important as it provides, in absence of previous decisions on the matter, indications on the delicate issue concerning the territorial scope of the proof of use of a Community Trademark used as an earlier right in an opposition proceeding against an Italian Trademark Application. In this regard, the decision at issue has faced the particular case in which the proof of use of the Community trademark has no reference to the Italian market, but only to other EU Countries. The complexity of the matter at issue is confirmed by the fact that a reference for a preliminary ruling is pending before the Court of Justice. Anyway, while waiting the judgment of the ECJ on the matter at hand, the actual position of UIBM is as follows: in opposition proceedings against Italian trademark applications, when proof of use is required against an earlier right consisting of a Community Trademark, it is sufficient to prove that the use of said CTM has occurred in a relevant part of the EU territory, which may also consist of a single member State other than Italy.

The United States Patent and Trademark Office (USPTO) announced that the United States has filed its instrument of ratification of the Hague Agreement concerning the International Registration of Industrial Designs to the World Intellectual Property Organization (WIPO). The treaty will go into effect for the United States on May 13, 2015. From this date, it will be possible for U.S. applicants to file a single international design application either to WIPO or to the USPTO in order to obtain protection potentially in all of the Countries member of the of the Hague system relating to the industrial designs, as if the design had been registered directly with each national office.

Due to the ratification of the Exchange of notes between Italy and the Republic of San Marino concerning the Convention, on friendship and good neighborly regarding patents and trademarks dated 1939, starting December 23, 2014, the new interpretation of Article 43 of the Convention agreed between the two Countries has become fully enforceable. Through the adoption of the new interpretation of Article 43 of the Convention, applicants who are citizens of Italy or San Marino, will continue to automatically obtain the recognition of their IP rights in both Countries by filing a single application in Italy or San Marino. However, the reciprocity of recognition will be excluded for those IP rights resulting from international system (WIPO and EPO). In these cases, holders of European Patents, international trademarks and designs registrations who intend to claim exclusive rights in both countries, must validate / designate both Italy and San Marino.

At present, extension agreements only exist with Bosnia/Herzegovina and Montenegro. Such an agreement was not possible for Morocco as a non-European state. In the future, the validation agreement works in the same way as the known extension agreements, making it possible for applicants and owners of European patents to have their patents recognized in Morocco. The President of the EPO and the Moroccan Minister of Industry announced that the agreement will enter into force on March 1, 2015.

From January 2015, Botti & Ferrari joined AIB (Industrial Association of Brescia), the association representing industrial Companies in the province of Brescia. AIB is a member of Confindustria and is one of the major Italian associations in terms of associated enterprises (with more than 1,200 associated companies).