International Intellectual Property - Italy

International Intellectual Property - Italy

Published August 2019

Author

Massimo Maggiore

Firm: Maschietto Maggiore Besseghini
Country: Italy

Practice Area: Intellectual Property

  • Via Vivaio, 6
    Milano
    20122

Guide Content

The law offers a relatively wide array of different legal tools depending on the IP asset at stake. Each IP asset has its very own specific rules and rationale, and most importantly, the way an IP right is acquired and maintained may vary. Think, for example, about the dramatic difference between registered and unregistered IP rights (e.g. patents vs. trade secrets or copyright against design rights). Hence, the main challenge businesses face with respect to IP assets is to be able to effectively identify the value they have in house and how to protect it. Most often, companies do not have a clear picture of their assets, which may lead to overvaluation of unworthy assets or conversely of underestimation of valuable assets. Of course, this changes a lot from business to business, depending on the specific object of the business activity. Other challenges are linked to the protection of IP assets in the online world. The relevant issues materialise in that online businesses are often times faced with a fine dust of micro-violations, which are difficult to prosecute, particularly due to the anonymity prevailing online. Hence, the need to device cost-effective strategies to tackle online violations, also through the aid of ad hoc software.

Our first objective is to be able to understand as much as possible how new technologies may affect IP rights online and offline, or how they can best serve the purpose of enhancing such rights and their enforcement. In this vein, we as a firm contribute to the development of a platform, which uses blockchain to obtain legally valid proof of IP protectable works. This platform is creativitysafe.com. Blockchain has a lot of potential, which has of late been recognised by EU institutions, in that it provides cost-effective means to register IP assets and to manage the transfer IP rights through smart contracting. Another area is that of Artificial Intelligence. We intend to use legal tech tools more and more – in order to gather knowledge from the analysis of data and more insights into the inner workings of the use of protectable works online.

We have gained lots of expertise in the domain name area, in particular with respect to the application of UDR procedures. Going to court does prove difficult and costly at times, because the registrants of delinquent domains that are confusingly similar with trademarks usually hide in anonymity. On the other hand, often times, the goal pursued by the IP right holder is not to obtain damages, but rather to have control of the domain name. Of late, we have assisted a large multinational American sports shoe manufacturer clear the Italian domain names registry off of a number of abusive domain names, which were of particular concern, because they pointed consumers to fraudulent websites, where shoes offered for sale did not even exist. This task was facilitated by the very positive cooperation we obtained from the Italian Registry.

Our firm has been ranked by TopLegal among the leading IP firms in Italy. The 2019 Leaders League directory has ranked the firm in the “excellent” band for IT law and as “highly recommended” for IP and Patent litigation. Media Law International ranks us in Tier 3 out of 5 for Italy.

I am member of INTA and AIPPI and will be sitting on INTA’s committee from 1 January 2020 to discuss emerging issues in trademark law.

I am closely related to the academic world, as I teach trademark and licensing law at the Marketing Management department of Bocconi University in Milan. Writing and speaking at conferences gives me the opportunity to go deeper into the law and develop my own critical views beyond the constraints and limitations of my field work. Hence, I consider this to be a very important part of the profession. I also very much enjoy discussing topics with colleagues and friends.

We consider this very important, because we truly believe in the concept of generalised well-being. We wish to contribute as much as possible to the success of the not-for-profit organisations we help on a pro-bono basis, in the fields of: the use of liberal arts as a means of emancipation for the have-nots, fighting against racism and discrimination, and in the area of social housing.

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