Intellectual property in Italy
The sizeable team at Bird & Bird provides comprehensive advice on contentious and non-contentious matters in commercial IP, antitrust-related IP matters and portfolio management, and is thereby particularly strong in assisting with patents, trade marks, designs, trade secrets, copyright and database rights. Practice head Giovanni Galimberti acted for the Consorzio del Prosecco in obtaining a preliminary injunction order against a competitor regarding their use of the protected designation of origin for Prosecco, and represented Dailymotion in a dispute concerning the liability of the Internet Service Provider related to contents delivered by users. Massimiliano Mostardini is also strongly recommended.
Hogan Lovells International LLP covers the whole range of IP-related matters in the media, life sciences, telecoms, technology, automotive and consumer goods sectors. The practice, jointly headed by the renowned Giovanni Ghirardi and Luigi Mansani, represented Eli Lilly in a case against Fresenius Oncology and Fresenius Kabi Italia regarding the potential infringement of best-selling product Alimta’s patent. Other notable clients include Edenred, Google and Recordati.
Commended for its ‘great knowledge of international dynamics and of the risks that the client could have in transnational projects’, Trevisan & Cuonzo is ‘reliable, consistent and displays excellent commercial awareness’. Jointly headed by the highly regarded Gabriel Cuonzo and Luca Trevisan, who is ‘an excellent litigator with a very strategic mind’, the team is often involved in high-profile international IP litigation. Notable highlights include representing Heraeus Medical in a multi-jurisdictional dispute concerning a violation of trade secrets belonging to the client and assisting 3M with the protection of its brands in Italy. Julia Holden, Daniela Ampollini and Vittorio Cerulli Irelli are also recommended.
DLA Piper has 'an unmatched combination of know-how and responsiveness’ and is noted for its patent, trade mark, copyright and designs enforcement and protection work. The ‘extremely competent’ Gualtiero Dragotti, who is able to ‘find the best strategy for the client’, successfully acted for Mondelēz International in relation to an articulated patent infringement and validity proceeding in the field of lactic bacteria, and is acting for pet food company Morando in several trade mark disputes with major global competitors. Roberto Valenti also attracts praise for ‘giving clear and pragmatic advice’. Marina Rubini left to take up an in-house role in April 2018, and Giangiacomo Olivi and associate Sara Balice joined Dentons and Herbert Smith Freehills respectively. Alessandro Ferrari recently made partner.
Nctm Studio Legale
Appreciated for its ‘out-of-the-box, innovative approaches and solutions’, Nctm Studio Legale’s team is prominent in trade mark and copyright enforcement, protection and exploitation. ‘Very experienced copyright lawyer’ Lorenzo Attolico is representing fashion company Charlotte Olympia in an infringement action for damages brought against an Italian competitor found selling shoes and accessories infringing the client’s registered and unregistered design rights, trade mark rights and copyrights. Belmond UK engaged Paolo Lazzarino to advise on the protection of the trade mark Cipriani Hotel in Venice.
Orsingher Ortu – Avvocati Associati provides the full spectrum of intellectual property work under the leadership of media and technology expert Matteo Orsingher. Fabrizio Sanna, who often advises on design and copyright issues, is representing the OTB Group in several contentious matters for infringement of 3D trade marks and designs on well-known bag models. Amazon also appointed the team to handle the protection and management of its IP portfolio and longstanding client Ferrari received strategic advice on brand protection, anti-piracy and anti-counterfeiting issues.
Trade mark and patent-related work are the mainstays of Jacobacci’s practice, which has both contentious and advisory capabilities in the high-tech, luxury, energy, automotive, biotech, aeronautics, pharmaceutical and e-commerce sectors. Turin-based Fabrizio Jacobacci is the name to note. Massimo Sterpi joined Gianni, Origoni, Grippo, Cappelli & Partners in January 2018.
At Mondini Rusconi Studio Legale, the team has ‘very solid experience in IP and copyright law’ and has ‘good litigation and negotiation instincts’. Founding partner Giorgio Mondini, Anna Carabelli, Fabio Ghiretti and associate Omar Cesana are recommended. The team’s recent workload includes representing Gio Ponti’s heirs and Molteni & C. in a dispute with Cassina regarding the right to reproduce an iconic Gio Ponti armchair, and acting for Paris-based music publisher Premiere Music with its plagiarism claim involving a very popular song written by the French musician Gilbert Montagné.
Pavia e Ansaldo has ‘good expertise’ in the life sciences and pharmaceutical sectors, handling patent-related and trade secrets protection matters. Often involved in contentious matters, the team led by Gian Paolo Di Santo defended Genentech before the Italian courts in the cross-border action brought by Eli Lilly seeking a declaration of non-infringement in relation to a drug patent owned by the client, and is representing Synchronoss Technologies in an action brought against Open-Xchange for trade secrets misappropriation, copyright infringement and unfair competition.
Studio Professionale Associato a Baker & McKenzie’s expertise spans transactional IP matters, trade secrets management and protection, as well as non-contentious and contentious trade mark, design and patent issues. The ‘well-structured’ team, which is led by Lorenzo De Martinis and of counsel Carlo Demichelis, frequently advises clients from the fashion sector, as evidenced by its representation of longstanding client Desigual in civil and criminal disputes involving trade mark, copyright and fashion design infringement in Italy, and its acting for Christian Dior Couture in anti-counterfeiting matters. Bialetti, Cassina and Moncler are other notable clients. Counsel Paolo Galli is also recommended.
Carnelutti Studio Legale Associato
Led by Margherita Barié, Carnelutti Studio Legale Associato’s recent workload includes representing Mariotti in a design infringement case filed by Valentino before the Criminal Court of Milan, assisting Faram 1957 with the management of its trade mark portfolio and defending Webidoo in the dispute brought by Axélero for infringement of its trade mark and violation of trade secrets and know-how.
The majority of Clifford Chance’s work revolves around the IT and technology sectors, but the team also has the capabilities to handle the full gamut of intellectual property matters. In a contentious matter, the group represented the Arvedi Group in the dispute brought by Danieli & C. Officine Meccaniche regarding Arvedi’s patents for ISP and ESP technologies. Other clients include Mazars, Hearst Magazine and Liquigas. Monica Riva joined Legance - Avvocati Associati as senior counsel in 2019.
De Berti Jacchia Franchini Forlani assists clients with judicial and extrajudicial matters related to patents and life sciences, trade marks, designs and copyrights. Practice head Roberto Jacchia and the ‘accurate’ Matteo Biondetti are recommended. The group has been advising longstanding client Merck on the enforcement and protection of its patents and recently represented Ali, a design and manufacturing of dishwashing equipment and customised solutions company, in proceedings aiming at the invalidation of a European patent filed by a German competitor.
Dentons regularly acts for clients from the fashion sector such as Diesel, Morellato and Fiam. In the food sector, Giovanni Francesco Casucci represented wine producer Umberto Cesari in preliminary search order injunction proceedings before the Court of Genoa in relation to a supposed infringement of an EU trade mark. The practice is also increasingly active in the TMT sector and was strengthened by the arrival of TMT expert Giangiacomo Olivi from DLA Piper in April 2018.
Franzosi Dal Negro Setti
Gianni, Origoni, Grippo, Cappelli & Partners
Jointly headed by Nino Di Bella and Massimo Sterpi, who joined from Jacobacci in January 2018, Gianni, Origoni, Grippo, Cappelli & Partners advises clients including Adidas, Philip Morris Interational and Hasbro on contentious and transactional matters. The group represented Daikin Air Conditioning Italy in a dispute filed by Termal concerning the alleged nullity and the infringement of a patent for an air conditioning system, and advises De Agostini Editore on matters related to the ownership of economic exploitation rights and trade mark rights over the famous children’s fiction character Heidi.
Santa Maria – Studio Legale Associato’s areas of strength are transactional IP matters, distribution agreements and trade mark disputes. In recent highlights, the group advised French electronical business Sonepar on IP-related aspects of its acquisition of the Italian company Sacchi. Luigi Fontanesi is the key member of the practice.
Boutique firm IP Law Galli is renowned for its patent, trade mark, design and copyright licensing and litigation work. With specific experience in the pharmaceutical, life sciences, IT and TMT sectors, the team defended Biomet against a preliminary injunction and seizure petition filed by Heraeus for assumed misappropriation of trade secrets and know-how related to bone cements and biomaterials used in dental care. Other highlights include representing Mazars in a dispute against BDO Italia regarding the alleged unlawful use of the client’s trade mark and proprietary software. Cesare Galli and Mariangela Bogni are the key members of the practice.
Litigation sits at the core of LCA Studio Legale’s practice but the Milan-based team covers the full gamut of intellectual property work. Practice head Gianluca De Cristofaro represented the Italian fashion company Forest in a dispute filed against a competitor for infringement of the trade mark Save the duck. The client base also includes Technogym, Esprinet and Editoriale Domus. Monia Baccarelli left in July 2018 to join Quorum.
Appreciated for its ‘very high professional skills’, the team at LGV Avvocati Studio Legale specialises in copyright applied to new technologies, trade marks, patents and unfair competition-related matters. Luigi Goglia assisted Value+, a company active in the IT sector, with the nationwide protection and enforcement of its IP assets; Simona Lavagnini successfully represented Aspoeck System in disputes regarding its designs and trade marks in the automotive sector.
Martini Manna Avvocati
The ‘very helpful and practical’ team at Martini Manna Avvocati is ‘highly competent in handling complicated law issues or conflicts’. Luigi Manna successfully defended Gian Luca Montanini in a dispute with a pharmaceutical company regarding the assignment of two .it domains and the alleged registration in bad faith of two trade marks and a company name; Elena Martini acted for Perform Investment on its participation in the licence tender concerning the online broadcast of Serie A football league and Serie A basketball league matches. Rocco Lanzavecchia joined from Simmons & Simmons in November 2017.
Osborne Clarke regularly acts for clients in contentious IP matters as well as in brand management, copyright and trade marks, patents and licensing. Practice head Federico Ferrara represented a music label in a dispute concerning the cover of a music album, which allegedly infringed the copyright of another artist's work. Other highlights include acting for Cogeme in the negotiation with Arte & Calore and Fiorini to obtain the transfer of IP rights regarding heating and hydronic systems developed jointly by the three parties.