CMS Expert Guide on Preliminary Injunctions in IP in Italy

The IP rights’ owner is entitled to ask, as PIs, that the competent Court:

• Orders the infringer to refrain from carrying on with acts which infringe or would infringe the claimant’s IP rights and retire the items infringing the claimant’s IP rights from the market;
• Orders the infringer to pay penalties for every further infringement;
• Orders the seizure of all the items which represent infringement and of what has been used to make them;
• Orders the publication of the decision (for example, in newspapers and/or magazines and/or on the infringer’s website and social media pages) at the infringer’s cost.

As an interim measure, the IP rights’ owner is also entitled to request the description of the items which represent infringement and of what has been used to make them.

No. However, sending a warning letter before commencing a legal proceeding is common practice.

Under Italian law, Courts may grant a PI if the following two requirements are met: (i) the probable existence of the right enforced (so-called fumus boni iuris); and (ii) a pending or imminent infringement (so-called periculum in mora).

There is no specific deadline. However, it is recommended that an application for a PI is filed soon after the IP rights’ owner becomes aware of the infringement.

Under Italian law, Courts may grant a PI if the following two requirements are met: (i) the probable existence of the right enforced (so-called fumus boni iuris); and (ii) a pending or imminent infringement (so-called periculum in mora).

Yes, upon request of all parties, the Judge may order (for one time only) that the proceeding be suspended for a period not exceeding three months.

The parties can make recourse to the following kinds of evidence: documentary evidence, witness evidence, ex parte technical reports, technical investigations conducted by a Court-appointed expert (mainly in the case of patent proceedings), parties’ examination and requests of disclosure of information and documents.

Yes, although they are only issued in exceptional cases. Furthermore, within the same decree through which an ex parte PI is granted, the Judge shall schedule the hearing for the appearance of all the parties within fifteen days and shall assign to the claimant a term no longer than eight days for the notification of the claim and the decree to the adverse party.

If the notification must take place abroad, the terms referred to above are trebled.

Yes, although they are only issued in exceptional cases. Furthermore, within the same decree through which an ex parte PI is granted, the Judge shall schedule the hearing for the appearance of all the parties within fifteen days and shall assign to the claimant a term no longer than eight days for the notification of the claim and the decree to the adverse party.

If the notification must take place abroad, the terms referred to above are trebled.

No.

However, if a PI is granted, the Court may order the successful applicant to provide security.

Yes, it is possible to present an appeal against a PI.

An appeal against a PI must be filed within 15 days from the date the PI was granted at the hearing or from the date the PI was served or communicated.

The appeal does not suspend the effect of the PI. However, the suspension of the PI may be ordered by the Court, where the PI enforcement would cause serious harm

Yes, it is possible to present an appeal against a PI.

An appeal against a PI must be filed within 15 days from the date the PI was granted at the hearing or from the date the PI was served or communicated.

A PI becomes effective as soon as it is issued. However, the Court may set specific deadlines for the losing party to comply with the granted measures.

In the event the losing party does not comply with a PI, the winning party must start enforcement procedures.

Non-compliance with a PI can also lead to economic penalties for each infringement or for each day of non-compliance.

In addition, not complying with a a PI, is a criminal offence and is punishable by imprisonment of up to three years or a fine ranging between Euro 103 and Euro 1,032.

Yes.

To prevent PIs from losing their effect, merit proceedings must be commenced within the term established by the Judge in issuing the interim measures. If no term is established by the Judge, merit proceedings must commence within twenty working days or thirty-one calendar days if these represent a longer period. The term runs from the pronouncement of the order if it is made at the hearing or, otherwise, from its communication. However, if the PIs enable anticipation of the effects of the judgement on the merits, further proceedings on the merits are not compulsory.