The owner of a trademark is primarily responsible for ensuring its respect and discovering any violations and deciding the measures to be adopted to enforce its rights deriving from the trademark. Therefore, the owner must implement a "surveillance" service over filed/registered trademarks over time, in order to immediately intervene to protect its exclusivity rights.

The first form of protection is to use the objection procedure towards the registration of an identical or similar trademark by other parties. Otherwise, in view of the violation of a trademark, there are many solutions: from sending a letter of formal notice to the alleged forger, to initiating a legal action. The latter approach will, however, entail very long periods of time: one must often wait three/four years before obtaining a first request decision. This is the reason why attempting to solve the conflict out of court is often advisable.

The extra-judicial procedures
The extra-judicial procedures for settling disputes are essentially arbitration or mediation.

Arbitration consists of a less formal and more rapid procedure than judicial. Also, an arbitration decision is easier to enforce internationally.

In mediation the parties can maintain control over the dispute resolution process, which could be useful in order to maintain good relations with a company that could, in the future, become a business partner.

Further information on arbitration and mediation can be found on the WIPO website, Arbitration and Mediation Centre:

The precautionary measures
As already said, civil counterfeiting action normally takes longer, unless there are the conditions for promoting a precautionary action based on the urgency of the situation: if so, it will be possible to obtain the description, the seizure of counterfeit product, the injunction, as well as the publication of the supervision order on national and/or local newspapers.

  • The description is normally required in order to have a clear idea of the counterfeiting phenomenon in place or when wanting to avoid a situation in which the counterfeiter makes the evidence of its illicit activities disappear. It is ordered by the Judge without prior call of the other. Through the description, the owner of a trademark requests that the court to intervene, having the description of the objects violating its own trademark as well as the description of the means used for their production and proof concerning the reported activity.
  • With the seizure, the owner of a trademark can request the confiscation of assets infringing its trademark, as well as of the means used for their production and proof concerning the alleged violation. The seizure is generally ordered by the Judge without prior call of the other party (the counterfeiter).
  • With the injunction, the Judge (who can always provide without first convening the counter-party), enjoins the author of the offence to stop any illegal activity, such as the manufacture, the sale or the import of products bearing the counterfeit trademarks. On this occasion, for any violation or non-compliance of the order of injunction or for delays in the execution of the same, the Judge may establish a sum of money (a penalty) to be borne by the counterfeiter as compensation for damages to the trademark owner.

The legal proceeding
The ordinary measures are obtained following a real and proper legal proceeding during which the Judge will have heard the witnesses, interrogated the parties, prepared technical consultations and acquired documentation useful to the decision.

Under this proceeding, the owner of the patent can first obtain a ban from the court to manufacture or market those products constituting a violation of the trademark. To force the counterfeiter to respect the verdict, the court can set a sum due for any subsequently ascertained violation or non-compliance and for any delay in executing the measure.

With the verdict ascertaining that there has been a counterfeiting of a trademark, the court may also order the destruction of all that is the subject of the violation. Or order that the objects produced, imported or sold in violation of the right, as well as the specific means uniquely used to produce them, are assigned to the property of the owner of the violated patent.

The ordinary proceeding is normally introduced to obtain a compensation for the damages incurred by the owner of the trademark for the counterfeiting activity. To this end, the Industrial Property Code expressly established that the Judge, in determining the sum due as compensation for damages, can consider all relevant aspects, such as the negative economic consequences suffered by the owner of the infringed right (including lost profits), the benefits obtained by the counterfeiter and, in appropriate cases, elements other than economic ones such as the moral damage caused to the owner of the trademark.

Protection at customs
Other trademark protection is the protection at customs: in Italy, the owner of a trademark can prevent the importation of goods suspected of being counterfeit on the basis of EC Regulation no. 1383/2003; this legislative provision allows blocking suspected goods at every Italian border.

To start the control procedure of own goods bearing a trademark (valid for one year and renewable for successive one year periods), it is necessary to file an application at the Agenzia delle Dogane (Customs Office) in Rome, via Carucci 71, indicating which trademarks the owner wants to supervise (attaching a copy of the relative certificates of registration) and providing as much information as useful to customs officials to recognise the genuine product from that counterfeited.

Should a customs office suspect some goods to be counterfeit, it will contact the owner of the monitored trademark and the latter will have ten working days to indicate to customs whether the stopped goods are original or counterfeit. Should the goods be counterfeit, customs will provide for its seizure and criminal proceedings will be automatically initiated. The trademark owner has the right to be informed of the origin and destination of the counterfeit goods to be able to act accordingly, even initiating a civil action, for example, towards the final recipient, if deemed appropriate.


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