The Firm advises its clients in extrajudicial and judicial matters for the protection of industrial and intellectual property rights against abuse, infringement, misappropriation and counterfeiting.
The Firm’s area of specialization covers every area of intellectual property law (trademarks and other distinctive signs, patents, designs, models, and trade secrets) and extends to all related unfair competition cases, as well as copyright protection.
The firm has particular expertise in the preparation and negotiation of licensing and technology transfer agreements, as well as in the protection of confidential information.
Treated subjects
The trademark is one of the main vehicles of corporate image and serves as a guarantee of quality for the consumer. For this reason, the trademark requires adequate legal protection.
A proper protection strategy cannot be separated from a comprehensive view of brand exploitation. Brand defense must go hand in hand with the marketing plan that guides business decisions.
The firm’s professionals work alongside their clients to accompany them in a process of careful preventive analysis and subsequent defense of the trademark from any infringement, synergistically integrating legal protection with the commercial and communication needs of the company.
Particular attention is paid to the management of litigation concerning trademarks and other distinctive signs, at the administrative and jurisdictional levels. The firm’s professionals directly handle administrative disputes pending before the Italian Patent and Trademark Office (UIBM), the European Union Intellectual Property Office (EUIPO) and the United States Patent and Trademark Office (USPTO). In addition, they represent and assist clients in cases brought before the specialized business sections, as well as at the appellate level and before the Court of Cassation.
The firm also regularly represents clients in cases challenging EUIPO decisions before the General Court of the European Union and the Court of Justice.
Particularly relevant is the experience gained in protection against infringements related to the registration of domain names identical or similar to registered trademarks. In this area, the Firm assists clients in monitoring registers and in arbitration proceedings before the competent national and international authorities, aimed at the reassignment of illegally registered domain names.
In extrajudicial matters, the Firm offers legal opinions for the best management and protection of distinctive signs, as well as in relation to possible risk situations. In addition, the Firm specializes in drafting assignment, license, distribution and franchise agreements.
From prior analysis of possible conflict scenarios, to subsequent drafting of warnings and initiation of legal action against third parties, the firm offers assistance in defending exclusive rights to inventions and utility models.
Patent counseling involves not only legal, but also technical expertise. For this reason, the Firm guarantees the client complete assistance in all respects, flanking the lawyer with a technical patent attorney, both in drafting legal opinions and in assisting in court.
The patent attorneys retained by the Firm have extensive judicial experience, including as court-appointed technical advisors, and are able to assist clients in any branch of technology, including electronics, mechanics, physics, chemistry, pharmaceuticals, telecommunications, Information & Communication Technology (ICT), nanotechnology, and others.
In patent matters, the Firm also specializes in drafting contracts, particularly exploitation and licensing agreements, technology assignment and transfer, confidentiality agreements for the protection of unpatented know-how, and contracts for the joint development of new technical solutions.
In addition, the firm offers assistance to companies in managing relationships with employees and contractors who contribute to the inventive process.
Italian design is synonymous with excellence, luxury and elegance. Its strength is its ability to combine quality craftsmanship with innovation, thanks to the genius of entrepreneurs and designers.
The Firm offers assistance in the defense of exclusive design rights, providing opinions for the best protection strategy and assisting the client, when necessary, in disputes.
In design matters, the Firm also employs the assistance of intellectual property consultants, as frequently the forms for which protection is sought also have technical and functional aspects.
In addition, the Firm offers assistance at all stages of negotiation and conclusion of contracts governing the creation and development of design, as well as the subsequent economic exploitation of the creative result.
The Firm’s experience in design protection spans a variety of sectors, including packaging, fashion, furniture, electronics, home appliances and vehicles.
In addition, the firm offers assistance to companies in managing relationships with employees and contractors who contribute to the inventive process.
The firm actively follows the protection in Italy and abroad of Italian and foreign geographical indications of wines, spirits, cheeses, sausages and other foods.
Thus, it offers support to Consortia and other protection bodies in disputes brought in judicial and administrative proceedings aimed at protecting geographical indications against exploitation of reputation and against evocation for comparable products.
Experience gained also in foreign jurisdictions enables the Firm to provide valuable assistance in those markets where the protection of designations of origin and geographical indications is particularly complex, since in many countries such legal institutions are not part of the local cultural tradition.
Where there are prerequisites, the Firm offers advice and assistance in defending designations of origin and geographical indications as registered trademarks.
Today, confidential information is one of the strategic keys through which companies pursue their goals and produce value. Sometimes this information can become the subject of specific protection through traditional industrial property titles. However, even when there are no prerequisites for a registered title, information can still benefit from a form of protection, provided that it has value to the company and, as such, is kept secret.
Thus, business information, internal research, technical-industrial and commercial experience are protectable if they are secret, if they have economic value as secret, and if they are subject to appropriate protection measures.
The Firm accompanies companies in the process of safeguarding confidential information and trade secrets, through the definition and implementation of a targeted protection strategy, both inside and outside the company, from the technical-informational and legal perspectives.
In particular, the Firm, in order to achieve maximum protection, is supported by cybersecurity and information technology experts in order to define policies and other security measures to protect corporate information and in the economic enhancement of the same, as well as in the definition of procedures for the recovery, preservation and analysis of possible sources of evidence related to an occurrence of misappropriation of confidential information. In the event of unlawful misappropriation of confidential information by competitors or employees, the Firm provides the necessary assistance in court.
The Firm represents and assists its clients with Customs Authorities in connection with customs monitoring and control activities. In particular, it assists its clients in the preparation of applications for customs action at the Italian and EU levels.
Periodic meetings with customs officers ensure that there is a useful and mutual exchange of information, which allows for faster detection of counterfeit goods and the consequent suspension of the release of the goods.
In order to promote the fight against counterfeiting, the Customs and Monopolies Agency has developed the F.A.L.S.T.A.F.F. project aimed at promoting the movement of original goods and, at the same time, protecting free market competition, thanks to databases containing information available and consultable by customs officers in real time and a service for the online compilation and transmission of protection applications.
However, it is not only traditional channels that need to be manned. The firm makes available to its clients special online counterfeit monitoring systems, carried out through specific software, correlated with consultancy services.
Imitation and exploitation of a competitor’s activity may constitute unfair and unlawful conduct in several respects, even in cases where the injured party does not own industrial property rights in the strict sense.
Unfair competition may concern, in particular, the reproduction of a distinctive form or sign, but also the misappropriation of resources and confidential know-how, the imitation of advertising communication, as well as any activity of undue attachment to the success of a competing product.
Very often unfair competition also occurs on the Internet, as in the case of online defamation campaigns and the creation of clone pages within social networks.
The firm actively follows all aspects of unfair competition, particularly those related to slavish confusory imitation and the “look alike” phenomenon, assisting clients in defending against any unfair and parasitic conduct, even independent of the violation of industrial and intellectual property rights.
Protection activities in the area of unfair competition include disputes on misleading and comparative advertising in judicial and administrative proceedings and before the jury of the Institute of Advertising Self-Discipline.
The Firm advises businesses on unfair business practices (“SCP”), a booming area of law given the increasing focus on consumer protection.
The Firm’s professionals work alongside its clients to accompany them in a careful preventive analysis, leading them to achieve their business objectives, while fully respecting consumer rights.
In order to neutralize the risk of unfair business practices, the Firm follows the entire contractual process in advertising and commercial matters, including the drafting of specific regulations such as, for example, those relating to prize events.
In the event of litigation, the Firm handles any disputes by consumers and/or their associations and assists in unfair commercial practices proceedings before the AGCM, possibly challenging its measures before the Regional Administrative Court and the Council of State.
Copyright aims to grant protection to creativity, allowing the author to have exclusive disposal of his or her works, to claim authorship, to decide on their eventual publication, to authorize any kind of use, and to receive the corresponding remuneration for the underlying effort and work.
The Firm supports authors throughout their creative process, suggesting the best strategies for protecting works.
The Firm also assists companies that are users of intellectual works, particularly in drafting exploitation and licensing, publishing, assignment and distribution agreements, based on its experience in various fields: music, music publishing, discography; literary works, print publishing, digital publishing; photography, figurative and plastic arts; design objects; software and databases; and image protection.
The firm also offers assistance in copyright litigation, from contractual violations to unlawful uses, including those on the Web.
The Firm can also offer advice in relations with collective management societies for authors, artists and performers (e.g. S.I.A.E. , S.C.F., A.F.I., Nuovo IMAIE, Itsright e SoundReef).
Special attention is paid to the protection of software, which can be protected using the special registry managed by S.I.A.E.: the specialized consultant offers his technical and legal expertise for the required evaluations.
In the era of big data analysis, organized databases are a major economic asset. Therefore, it is necessary to protect the huge investments made by their creators and not to allow third parties to fully copy and disseminate uncontrolled digital information.
The issues pertaining to the creation and use of databases partially intersect with copyright protection. The amount of digital data owned by the firm constitutes intangible capital, and the easy dissemination of such data poses the problem of its proper protection.
The firm supports its clients in the proper management of the digital information possessed, suggesting the best data safeguard strategies and acting promptly in case of rights infringement by third parties.
