Out-of-court actions include oppositions, invalidity actions, or actions carried out prior to legal actions, such as sending cease-and-desist letters actions conducted to resolve any disputes through the stipulation of agreements (e.g. licensing and coexistence agreements). This also includes negotiations for obtaining “letters of consent” (LoCs) for the use and/or registration of a right, in particular in the trademark area.
Our activities do not involve direct representation of clients before the courts, which we entrust to well-known and experienced intellectual property lawyers. In the event of violation of an industrial property right in a particular jurisdiction followed by a legal action before the competent court, our attorneys work in close collaboration with the aforementioned lawyers as technical experts. Many of our patent attorneys, in addition to having a technical specialization and qualifications to represent clients before the Italian Patent and Trademark Office, the EPO, the EUIPO, the UPOV and the WIPO, are also qualified to represent clients before the forthcoming Unified Patent Court.
Many of our attorneys have gained an extensive experience as court-experts and/or ex-parte experts, respectively supporting judges and lawyers in patent litigation. The court expert and the ex-parte experts are the technical experts whose work ends with a non-binding report on the infringement and/or validity of the patent. The outcome of the work of the court expert is endorsed by the judge in the vast majority of cases.
The court expert is an assistant to the judge who is entrusted with the task of providing answers to an expert question prepared by the judge and aimed at resolving issues of a technical-patent nature. Many of our attorneys receive these assignments from judges and have gained extensive experience in various technical fields. The outcome of the work of the court expert is endorsed by the judge in the vast majority of cases.
Many of our attorneys are called upon to act as ex-parte experts, a key figure in patent infringement and validity actions in Italy. Indeed, their technical expertise is fundamental in defending the rights of one of the parties involved in the litigation. The ex-parte expert has the function of proposing, to the court expert, convincing answers to the expert question.
Customs surveillance and actions are effective means against counterfeiting. We assist our clients at every stage of the procedure, from the filing with the Customs, as well as the management of each notification issued by the Customs all over the world. Being instantly intelligible, designs and trademarks are particularly suitable for blocking counterfeit goods at customs. Our experience in using the various platforms for filing applications for customs actions (e.g. the Enforcement Database) allows us to promptly notify counterfeiting and piracy officers at national and EU level.
Through web monitoring we can identify counterfeit products, improper uses of our clients’ trademarks, social profiles that violate our clients’ brands or company names, web traffic diversion through infringing domain names or keywords that contain our clients’ brands or any violations of copyright. These illegal contents can seriously compromise the image of a brand or company. It is therefore important to take prompt action to block illegal activities identified on the web and obtain the removal of abusive content.
Having a registered trademark, design or other intellectual property rights is an indispensable prerequisite for taking any action against online counterfeiting, and gaining access to the protection tools made available by E-commerce platforms, Registrars, Hosting providers, social media and search engines, and to achieve an effective result.
Our attorneys and experienced partners can assist you in quickly requesting the removal of illegal content by sending complaints to internet service providers based on your registered intellectual property rights or copyrights, or in activating a domain name reassignment procedure.
An optimal domain name protection strategy includes a continuous surveillance of domain name registers. With such surveillance, it is possible to identify violations by third parties through the adoption of identical or similar distinctive signs (e.g. trademark, company name) and to intervene promptly to prevent illegal use.
When a domain name registered and used illegally by third parties is identified (a practice commonly known as “cybersquatting”), it is possible to intervene through various out-of-court or legal actions.
There is also a procedure, alternative to the legal action, called “re-assignment of domain names” regulated by the UDRP – Uniform Domain-Name Dispute-Resolution Policy” codified by ICANN. The reassignment of domain names, managed by accredited Providers (e.g. WIPO), is a fast and cost-effective procedure, whose outcome could be the transfer of the contested domain name registered in bad faith to the legitimate owner or its cancellation. This procedure does not allow the parties to request any compensation for damages or other measures other than reassignment (e.g. injunctions, penalties).
Our team of experienced attorneys can represent and assist our clients in the domain name reassignment procedure before the bodies accredited by ICANN.
