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Intellectual Property

“The team has excellent industry knowledge and represents good value for money.”
Legal 500

Carnelutti’s intellectual property department comprises a highly specialized group of lawyers who assist major clients in all sectors of intellectual and industrial property law.
The firm provides specialist advice and assistance in regard to the protection and registration of the appropriate rights, consultancy and litigation services where those rights need to be defended or competitors’ claims need to be challenged. All matters concerning the registration and the management of intellectual property assets, the transfer and licensing of trademarks, trade names and logos, as well as advertising, protection and management of personal data and trade secrets, software, databases, and copyright are within the scope of Carnelutti’s expertise.
The members of Carnelutti’s IP team have developed strong international skills and can provide comprehensive assistance and representation in both litigation and out of court handling of disputes concerning infringement and/or counterfeiting. In addition, the department has a strong practice in the field of information technology and provides a wide range of services in electronic commerce and software, handling contracts and agreements relating to licensing and transfers.
The firm’s IP lawyers work closely with their transactional and tax colleagues on the intersection of intellectual property and corporate law issues, and are frequently involved in negotiating and drafting franchising and merchandising agreements.

Patents

The group’s lawyers advise and assist technology and industrial companies in evaluating, securing and exploiting intellectual property assets, with a particular emphasis on patents. Over the years Carnelutti’s IP department has gone from strength to strength to become the extensive practice area which is today both in consultancy and litigation for clients wishing to protect their patents from infringement, as well as in connection with the development of an international patent portfolio.

Trade Secrets

Group lawyers also provide legal assistance to companies needing to develop internal policies and procedures aimed at safeguarding the acquisition of "know-how" or other secret intangible assets and helping to protect such rights.

Industrial Designs

Carnelutti’s intellectual property group assists clients in developing and deploying a portfolio of strategic intellectual property assets, exploiting those assets by negotiating, drafting and implementing technology licenses and consultancy and development agreements. In addition, the group offers legal advice on the various options for protection of design rights and "made in Italy" products available under both European (EU) and Italian law.

Trademarks and Domain Names

Carnelutti's IP lawyers handle a wide variety of matters that relate to trademark infringement and to domain name disputes, especially when unfair competition behaviours are involved. With specific regard to trademarks, the IP department has acknowledged expertise on filing procedures for trademark recognition, auditing and the development of international portfolios. The firm's professionals are also skilled in handling all types of litigation before the special courts and tribunals with reference to national, community and international trademarks.

Copyright

Carnelutti’s intellectual property group provides copyright advice to a wide range of clients in the online, entertainment and communications industries, including e-commerce companies, Internet technology companies, website operators, broadcast and satellite television networks and television producers.

Advertising

The firm's IP lawyers review and pre-clear advertising copy and represent parties in advertising disputes before the Authority supervising on the fairness of advertising messages in the Italian market. Additionally, Carnelutti represents its clients on issues arising from the unfair use of advertising by their trade competitors.

Anti-Counterfeiting

The firm's intellectual property lawyers work proactively on behalf of clients to monitor and maintain a watching brief on the Italian market, preventing counterfeiters from damaging the legitimate interests of Carnelutti's clients by coordinated action across the whole internal European market.

IP Litigation

The firm's specialists have focused on judicial processes for the protection of IP rights before the Italian courts, with special regard to using the framework of criminal jurisdiction and administrative regulations on the subject.

IP Auditing and Transactions

The analysis of IP assets, conducting negotiation rounds regarding IP rights, and assisting clients to find better business solutions has become a major practice areas for the firm's IP lawyers.

Data Protection

The firm's clients are also able to call upon Carnelutti's lawyers for advice on key aspects of data protection with regard to their business operations and compliance with data protection laws.

  • Successfully assisted a reputed multinational group and undisputed world leader in the manufacture of engines and vehicles, including for the motorcycle industry: the firm obtained an attachment order in respect of Chinese motorcycles on display at the 71st International Motorcycle Exhibition (EICMA), the top world event dedicated to motorcycles being held in Milan, because they slavishly imitated the appearance of a well-known scooter manufactured by our client.
  • Successfully assisted a leading Japanese based automotive group before the Milan Court (Industrial & Intellectual Property Chamber), against an Italian company acting as a domestic distributor of Chinese mopeds, some of which proved to be counterfeit copies of the Japanese client's models. The Court held that our client's models had been copied and that the Defendant's conduct was unlawful, ordering the defendant to immediately desist further sales and the promotion of the counterfeit machines. The relief granted included an order for damages and costs against the Defendant.
  • Representing an Arabian government agency in a dispute with a leading Italian contemporary furniture company regarding a restructuring work agreement, both in the interim measure proceedings on the execution of a performance bond and in the subsequent substantive proceedings on the merits for return of the advance payment.
  • Representing a major fashion company in various proceedings against the manufacturers of counterfeited perfumes reproducing famous trademarks under the brand “AUTHOR’S FAKE”.
  • Assisting a world leading mobile phone supplier in resisting claims by the Italian Company of Authors and Editors (SIAE) that the client was liable to pay royalties under Italian copyright law as applied to mobile phones with music-storing features, irrespective of whether phone users actually down-loaded and/or stored music protected by copyright.
  • Representing a leading Japanese based automotive group in litigation against unfair competitors and traders of copied products bearing an unregistered, distinctive shape.
  • Assisting a major US clothing-manufacturing company in a patent infringement case.
  • Representing a major UK based company in the field of manufacturing special paper and security threads in a complex litigation on patent infringement.
  • Representing the Italian branch of a major US group in the field of powder coating manufacturing in both civil and criminal proceedings concerning the misappropriation of trade secrets and inducing employees to breach their contracts.
  • Assisting a major Korean manufacturer of technological products on proceedings before the Italian Authority concerning misleading advertising.
  • Assisting various Italian companies in unfair competition proceedings.
  • Representing an Italian manufacturer of food ingredients in litigation started by a major multinational company operating in the same field for misappropriation of industrial secrets.
  • Assisting an Italian jewelry company in various intellectual property issues: drafting of trademark licensing agreements, distribution agreements, transfer of business units and opinions on potential litigation for trademark and design right infringement.
  • Assisting a leading manufacturer of roof windows and skylights in the management of the notification of potentially dangerous products in the European Union. This case involved the coordination of professionals in 23 different jurisdictions.
  • Assisting two leading manufacturers of ball valves, actuators and accessories for water and heating distribution in managing their IP rights portfolio and in protecting several of their key products from slavishly imitated copies made by Chinese entities and distributed all over the world.
  • Advising an Italian producer of stationery and special papers, member of an international group, on complaints arising from a possible infringement, under unfair competition laws, of its rights in relation to several trademarks unlawfully used by a competitor. Providing assistance in connection with trade secret management and protection inside the Italian company and among the international companies of the group.
  • Advising a large number of major US and UK based companies in the fashion and design industries on the management and protection of design rights and trademark portfolios.
  • Assisting a leading Italian wine manufacturer in a dispute originating from the joint use of the same trade name by a competitor.
  • Assisting international communication and media clients in connection with copyright issues.
  • Advising an Italian manufacturer of iron and steel products on a nullification procedure brought against a German company which claimed a violation of title.
  • Assisting a famous international liquor and spirits company in the protection of their trademark against a possible infringement arising from the application for two similar trademarks in Italy.
  • Advising an Italian manufacturer on the possibility of patenting a new product, procedure or trade secret, the implementation of company internal procedures aimed at safeguarding confidential information, and training the company's in-house legal team on the management of its trademark portfolio.
  • Representing two major English furniture manufacturing companies in litigation initiated against them by an agent, concerning the validity of design rights and the recovery of the damages flowing from the interruption of export business.
  • Representing a major Italian brewer and its flagship restaurant in litigation brought against it by another Italian restaurant.
  • Advising a Spanish manufacturer of sanitary equipment, on a potential design right infringement case against several Chinese companies which were promoting products potentially infringing the Spanish company’s intellectual property rights.
  • Advising Italy’s second largest brewer on the termination of a franchising agreement, payment of royalties and compensation in the form of damages.
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