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Industrial property law and intellectual property in Germany and Italy

Our firm offers a wide range of advice and representation in the field of industrial property and intellectual property in the German-Italian area. Intellectual property does not end at national borders per se. It must be protected and defended in order to give it a decisive value. With our services, we can provide you with concrete support from the very beginning of your idea.

If you invest in intellectual property, you can significantly develop the asset value of your company, thereby enabling it to stand out from the competition and promote your business beyond national borders.

Our lawyers specialise in advising and representing companies and individuals in cross-border matters and disputes in the fields of

  • trademark law
  • licensing law
  • the protection of domain names,
  • the registration and/or protection of designs,
  • the protection of DOC (controlled designation of origin),
  • DOP (Protected Designation of Origin)
  • or IGP (Protected Geographical Indication - PGI) designations
  • as well as Made in Italy, copyright and unfair competition.

Our specialised lawyers are at your disposal in Italian, German and English and support you in questions of national IP law (in Germany and Italy) as well as in questions of international and/or EU law.

Our services in industrial property law in detail

Have you been using a trade mark for goods and/or services for your business for years, but feel unsure whether registration is necessary? Do you want to know whether it is a highly distinctive mark that can distinguish you from other companies on the international market and whether similar signs exist that could lead to confusion in the market where you want to achieve a significant position?

Contact our experts for a case-by-case legal assessment: We will check for you

  • whether earlier rights and signs have already been registered by potential competitors,
  • whether the sign you have chosen has the necessary distinctive character,
  • which classes of goods and services (Nice Classification) are eligible for registration in order to ensure appropriate protection for your business.

You would like to register a trade mark, but the costs seem too high?

The European Union Intellectual Property Office (EUIPO), the Italian Patent and Trademark Office (UIBM) and the German Patent and Trademark Office (DPMA) often provide grants or other assistance to help businesses register their IP rights.

You want to turn your brand into a real source of revenue and are thinking about entering into a merchandising agreement to license your brand?

You already have a well-run business and are now thinking of selling your IP rights to live off returns in the future?

For these and many other questions concerning trademark law, our firm has bilingual IP attorneys who can provide you with comprehensive advice on the registration of national trademarks and European trademarks in both Italy and Germany. Starting with the research on the status of earlier / identical and/or similar trademarks, we will guide you step by step through the application procedure and all subsequent measures for a targeted enhancement and optimal protection of your IP rights.

A registered trade mark enjoys stronger protection than an unregistered trade mark. From the date of application, the protection period is 10 years; this period can be extended again and again by paying renewal fees, so that the registered IP rights can theoretically be maintained indefinitely.

Design is not an art. In fact, it could be described as a link between technology, art, invention, style and production.

Design is about the appearance of a product produced by a creative inventor who manages to transform something ordinary or mediocre into something distinctive by giving the product an individual character.

Any industrial or handicraft item may be registered as a design, including:

  • Individual parts intended to be assembled into a complex product,
  • packaging
  • furnishings
  • graphic symbols and typographic characters with the exception of computer programs.

However, a prerequisite for registration as a design is always that the object must fulfil the characteristics of novelty and individual character.

Our experts will check for you, on the basis of appropriate prior art searches, whether your product meets the requirements for registration as a design and advise you on the most suitable protection for your intellectual property.

A registered design enjoys greater protection than an unregistered design and, in addition to an exclusive right of use, allows you to grant licences and thereby determine the scope of use by third parties.

Italy is one of the countries with the highest number of DOP-, DOC- and IGP-registered food products. A product qualified as DOC (controlled designation of origin), PDO (protected designation of origin) or IGP (protected geographical indication - PGI) must have certain characteristics, comply with production rules and enjoys special protection against counterfeiting.

Products "Made in Italy" are highly appreciated all over the world, whether it is culinary products, high fashion or handmade leather goods. For this very reason, Italian products are increasingly becoming the object of counterfeiting.

The phenomenon of so-called Italian Sounding, i.e. the production of products that "look" and/or sound Italian but are in fact anything but Italian, has become a real business and a threat to the Italian export business because consumers are often not sufficiently informed and are misled by the packaging.

Although the current legal basis in all member states has a common origin in European directives and regulations, the application and implementation is not uniform. What would not be allowed on the packaging of a product in circulation in Italy is often considered permissible in Germany.

Furthermore, it should be noted that in Germany in cases of "Italian Sounding" the competitor must take action himself, it is not sufficient to report a harmful infringing act to the police or other authorities. In order to prevent unfair competition through Italian Sounding, the Italian entrepreneur who exports goods of genuine Italian origin to Germany must initiate the appropriate procedures to protect his commercial interests in order to prevent the production and/or sale of the false "Italian" product on the German market.

If a competitor advertises its products by saying or implying that they are of Italian origin, even if their origin is doubtful, do not hesitate and contact us. Our law firm is experienced in combating counterfeiting and will be happy to assist you at trade fairs/exhibitions where immediate action against the counterfeiter requires immediate legal intervention; using the appropriate summary proceedings, we will immediately enforce your rights on your behalf.

Our law firm has participated in the founding of the association "Italian Sounding e.V.". (Founding members include the Italian Chambers of Commerce in Germany and the Confagricoltura), an association which several German courts have recognised as having the active legitimacy to enforce collective interests against the counterfeiting of Italian food products (www.italian-sounding.de).

The copyright often goes beyond the will of the author. Anyone who shoots a photo, writes an article for a magazine, composes a song, directs a play, makes a short film or paints a graffiti/street art image or even a simple canvas painting becomes the author of that work.

But are we really aware of the rights that come with this work? Do you know how to protect your work from unauthorised use by third parties? Have you heard of watermarking, SIAE and GEMA registrations or even blockchain technology registrations?

A consultation with one of our specialised lawyers can help you answer these questions and find the appropriate way to protect your work.

Have you ever posted a photo on Facebook and someone used it without your permission, or are you the one who carelessly produced a video featuring a song by a famous singer and then received a warning letter from a lawyer?

Although many aspects of copyright are protected by European directives and regulations, much is still closely linked to national law. What seems self-evident in Germany may not be so in Italy, and vice versa.

Thanks to the bi-national training of the lawyers working at Dolce Lauda, we can provide you with one-stop support at all levels and also explain the differences between the two legal systems.

Any activity aimed at unlawfully depriving a competitor of customers or harming a competitor may constitute unfair competition.

Unfair competition occurs both when a competitor's activity is intended to create confusion between products and when competing products are intended to be discredited by providing untrue information about their quality or when the dissemination of such information is intended to mislead customers with the aim of gaining additional market share for one's own product.

If your trademark or design has been misused, your name or trademark has been registered as a domain name by someone else, your image, a photo taken by you or a creation of yours is used on social networks without your consent, you have probably become a victim of unfair competition and/or a violation of your personal rights.

Our law firm has experience in this field and will provide you with expert advice and representation both in Italy and in Germany, from the warning letter to the attempt to reach an out-of-court settlement to the court proceedings for interim relief and the subsequent main action and enforcement proceedings.

Special features of industrial property law in Italy

Protection tools: the evidence procedure

One of the most widespread and well-functioning protection measures in Italy is the evidence procedure, which is very effective for obtaining reliable evidence of counterfeiting.

The IP right holder who believes to be a victim of infringement or counterfeiting can file a judicial request for the preservation of evidence, aimed at ordering a description of all the items infringing his IP right and the means used to produce them, and the collection of evidence of the alleged infringement and its extent. This procedure can be used in Italy to obtain important evidence of the existence of the infringement, such as photographs, a description of the means of production of the infringing product, technical and illustrative documents and accounting records.

The procedure for obtaining evidence is not as far-reaching and effective in Germany, as the procedure only serves to secure the current state of the evidence and - unlike in Italy - the creditor cannot inspect the infringer's accounting documents. Thus, in Germany it is not possible to obtain access to VAT registers, loading and unloading logs, customer and supplier invoices and other documents that could help to determine the extent of the counterfeiting activity.

The involvement of lawyers experienced in both legal systems can be crucial to successful action.

Special features of industrial property law in Germany

Warning notice for copyright infringement and submission of cease-and-desist declaration

When the owner of a copyright in Germany discovers a copyright infringement, he usually turns to his lawyer, who prepares a warning notice and requests the infringer to stop the infringing act.

Unlike in Italy, the warning letter in Germany is accompanied by a draft of a so-called cease-and-desist declaration, i.e. a declaration assuring that the infringing conduct will cease and desist. In addition to the obligation not to commit the same infringement again, the submission of the so-called cease-and-desist declaration also contains the submission to a fine in the event of a repetition of the infringement. Failure to make such a declaration may lead to litigation. Such a declaration is not provided for in Italian law.

The submission of a cease-and-desist declaration is not only required in cases of copyright infringement, but also in other cases of infringement of industrial and intellectual property where there is an infringing act.

Consultation?

Let us talk about your specific concerns.