1996年3月19日第198号法令，关于确保国家工业产权立法与与贸易有关的知识产权协议（TRIPS）的强制性规定相一致-乌拉圭回合协议， 意大利

Provisions for making national legislation in respect of industrial property conform to the mandatory provisions of the agreement on traderelated aspects of intellectual property rights – Uruguay Round

THE PRESIDENT OF THE REPUBLIC

Having regard to articles 76 and 87 of the Constitution;

Having regard to Law no. 747 of 29 December 1994, concerning the ratification and enforcement of the acts relating to the results of the Uruguay Round negotiations, as adopted in Marrakech on 15 April 1994, and especially to article 3 thereof, enabling the Government to issue provisions for making national legislation in respect of industrial property conform to the mandatory provisions of the agreement on traderelated aspects of intellectual property rights;

Having regard to Law no. 295 of 13 July 1995 and to Law no. 73 of 22 February 1996;

Having regard to the resolution of the Council of Ministers, adopted during the meeting of 18 March 1996;

On proposal by the Minister for Industry, Commerce and Trade, in agreement with the Minister for Foreign Affairs;

PROMULGATES

the following legislative decree:

Chapter I

AMENDMENTS TO ROYAL DECREE No. 929 OF 21 JUNE 1942 RELATING
TO TRADEMARKS, AS LAST AMENDED BY LEGISLATIVE DECREE
No. 480 OF 4 DECEMBER 1992.

Article 1

1. For Article 1 of Royal Decree no. 929 of 21 June 1942, as subsequently amended, there shall be substituted the following:

'Article 1. –

1. The rights of the owner of a registered trademark shall consist in the faculty to make exclusive use of the trademark. The owner shall have the right to prevent all third parties not having his consent from using:

a) signs identical with the trademark for products or services which are identical with those in respect of which the trademark was registered;

b) signs identical or similar to the registered trademark for products or services which are identical or similar where, on account of the identity or similarity of the signs and of the identity or similarity of the products or services, this would result in a likelihood of confusion for the public, such confusion also including the likelihood of association between the two signs;

c) signs identical or similar to the registered trademark for products or services which are not similar, where the registered trademark is wellknown in the State and the use of the sign on no legitimate ground would result in taking undue advantage of the distinctiveness or the knowledge of the trademark or would be detrimental to the latter.

2. In the cases as per paragraph 1 the owner of a trademark may, in particular, prevent third parties from placing the sign on products or packaging; from offering such products, putting them on the market or holding them for such purposes, or from offering or providing the services distinguished by the said sign; from importing or exporting products distinguished by the said sign; from using the sign in commercial letters and advertisements.'

Article 2

1. For paragraph 3 of article 4 of Royal Decree no. 929 of 21 June 1942, as subsequently amended,

there shall be substituted the following:
'3. Registration shall be effective as regards the products or services mentioned therein as well as similar
products or services, without prejudice to the provisions of paragraph 1, subheading c), of article 1.'

Article 3

1. For article 17 of Royal Decree no. 929 of 21 June 1942, as subsequently amended, there shall be substituted the following:

'Article 17. –

1. A sign shall not be new, pursuant to article 16 above, if, on the date of the filing of the relevant application, a) it consists exclusively in a sign which became of common use in everyday language or in the course of trade;

b) it is identical or similar to a sign which is already known as a trademark or a sign distinguishing products or services manufactured, put on the market or lent by others, for identical or similar products or services, where on account of the identity or similarity between the signs and of the identity or similarity between the products or services this would result in a likelihood of confusion for the public, which may also consist in a likelihood of association between the two signs. Further, a trademark shall be considered to be wellknown if, pursuant to article 6bis of the Paris Convention (Stockholm text, July 1967), it is wellknown to the relevant sector of the public, including on account of the knowledge obtained in the State through the promotion of the trademark. Previous use of the sign shall not rule out its novelty, provided it does not entail knowledge of such sign or entails knowledge of an exclusively local character. Previous use of the sign by the applicant or the previous right holder shall not be an obstacle to registration;

c) it is identical or similar to a sign which is already known as a firm, business or corporate name and emblem adopted by others, where on account of the identity or similarity between the signs and of the identity or similarity between the activity carried out by the undertaking and the products or services in respect of which the trademark was registered this would result in a likelihood of confusion for the public, which may also consist in a likelihood of association between the two signs. Previous use of the sign shall not rule out its novelty, provided it does not entail knowledge of such sign or entails knowledge of an exclusively local character. Previous use of the sign by the applicant or the previous right holder shall not be an obstacle to registration;

d) it is identical with a trademark which has already been registered in the State by others, or which is effective in the State following an application which was filed on a previous date or is effective from a previous date on account of a priority right or, in the case of a community trademark, of a valid claim to priority, for identical products or services;

e) it is identical or similar to a trademark which has already been registered in the State by others, or which is effective in the State following an application which was filed on a previous date or is effective from a previous date on account of a priority right or, in the case of a community trademark, of a valid claim to priority, for identical or similar products or services, where on account of the identity or similarity between the signs and of the identity or similarity between the products or services this would result in a likelihood of confusion for the public, which may also consist in a likelihood of association between the two signs;

f) in the cases as per subheadings d) and e), novelty of a trademark shall not be precluded by the existence of a prior trademark whose registration has not been renewed for over two years, or for three years in the case of a collective trademark, or which may be considered to be cancelled on account of nonuse, pursuant to article 42 below, at the time of the claim or counterclaim for nullity;

g) it is identical or similar to a trademark which has already been registered in the State by others, or which is effective in the State following an application which was filed on a previous date or is effective from a previous date on account of a priority right or, in the case of a community trademark, of a valid claim to priority, for products or services which are not similar, where the prior trademark is wellknown in the European Economic Community, in the case of a community trademark, or in the State and the use of the subsequent trademark on no legitimate ground would result in taking undue advantage of the distinctiveness or the knowledge of the prior sign or would be detrimental to the latter;

h) it is identical or similar to a trademark which is already wellknown as per article 6bis of the Paris Convention (Stockholm text, 14 July 1967), for products or services which are not similar, where the conditions obtain which are laid down under subheading g).

2. For the purposes as per paragraph 1, subheadings d), e) and g), prior applications shall be considered equivalent to prior registered trademarks, subject to subsequent registration.'

Article 4

1. For article 23 of Royal Decree no. 929 of 21 June 1942, as subsequently amended, there shall be substituted the following:

'Article 23. –

1. Registration of a trademark in favour of aliens who do not have, in the State's territory, the undertakings from which the products or services originate that are distinguished by the said trademark may be granted on a reciprocal basis, i.e. if the applicants' States grant the same treatment to Italian nationals.
2. Nationals of the States which ratified and enforced the Agreement on traderelated aspects of intellectual property rights, adopted in Marrakech on 15 April 1994, shall be granted the treatment provided for in respect of Italian nationals.
3. Any benefits which international conventions confer, conferred or will confer on aliens in the State's territory, as regards trademarks, shall be presumed to be extended to Italian nationals.'

Article 5

For paragraph 1 of article 48 of Royal Decree no. 929 of 21 June 1942, as subsequently amended,

there shall be substituted the following: '1. The owner of a prior trademark as per paragraph 1, subheadings d), e), g) and h), of article 17, and the holder of a right of prior use entailing knowledge of a character not purely local who permitted, for five consecutive years, use of a subsequently registered trademark, identical or similar to the former, being aware thereof, may not file an application to have nullity of the subsequent trademark declared nor oppose themselves to its use for the products or services in respect of which it was used, on account of their owning the prior trademark or being holders of the right of prior use, except when the application for the subsequent trademark was filed in bad faith. The owner of a subsequent trademark may not oppose himself to use of the prior one or to continuation of its prior use.'

Article 6

1. After article 58 of Royal Decree no. 929 of 21 June 1942 there shall be inserted the following:

'Article 58bis.–

1. Where a party has provided substantial evidence that his claims are grounded and has identified documents, data or information which support such evidence and are in the possession of the opposing party, that party may obtain a judicial order that the said evidence be produced or the information acquired by questioning the opposing party. He may further obtain a judicial order that any data be provided as are necessary to identify the subjects involved in the production and distribution of the counterfeit products or services.
2. When adopting the above measures, the judicial authorities shall take such measures as are appropriate to ensure the protection of confidential information, after having heard the opposing party.'

Article 7

1. For article 61 of Royal Decree no. 929 of 21 June 1942, as subsequently amended, there shall be substituted the following:

'Article 61. –

1. The right holder of a registered trademark, or of a trademark whose registration is pending, may request that description or seizure be ordered of all or some of the goods infringing such right, as well as of any implements used in producing the said goods and of the evidence concerning the reported infringement. In the latter cases such measures shall be adopted as are appropriate to ensure the protection of confidential information.'

Article 8

1. For article 62 of Royal Decree no. 929 of 21 June 1942, as subsequently amended, there shall be substituted the following:

'Article 62. –

1. Except where otherwise provided by the following paragraphs, the proceedings as per article 61 shall be governed by the provisions of the Code of Civil Procedure regarding precautionary remedies— namely, preparation of a case and seizure.
2. Description and seizure shall be performed by a bailiff, who may be assisted by one or more experts, where necessary, and may use technical, including photographic, equipment.
3. The parties concerned may be authorised to attend the above operations, including through their representatives, and to be assisted by technicians of their own choice.
4. Paragraphs 2 and 3 of article 693 of the Code of Civil Procedure shall not apply to description. For the purposes of article 697 of the Code of Civil Procedure, the condition of exceptional urgency must be considered equivalent to the need not to jeopardize enforcement of the remedy. The provisions of articles 669octies, 669novies, 669undecies and 675 of the Code of Civil Procedure shall apply to description as well.
5. After the term as per article 675 of the Code of Civil Procedure has elapsed, description and seizure may be completed where already begun, but no such operations may be started on the basis of the same order; this is without prejudice to the possibility for the parties to apply to judicial authorities for further measures of description or seizure during the proceeding on the merits.
6. Description and seizure may concern goods belonging to subjects who were not specified in the complaint, provided that such goods were produced, offered, imported, exported or put on the market by the party in respect of whom the said measures were ordered and that such goods are not intended for personal use. The record of the seizure and description performed, along with the complaint and the judicial order, must be served on the third party to whom the goods undergoing seizure or description belong, within fifteen days of the completion of the said operations, under penalty of nullity.'

Article 9

1. For article 63 of Royal Decree no. 929 of 21 June 1942 there shall be substituted the following:

'Article 63. –

1. The right holder of a registered trademark, or of a trademark whose registration is pending, may request judicial authorities to issue an injunction prohibiting the manufacture, trade and use of the counterfeit trademark goods in accordance with the provisions of the Code of Civil Procedure regarding precautionary measures.
2. In issuing the prohibition injunction the judicial authority may determine a sum to be paid in case of infringement or noncompliance as well as of a delay in implementing the provision.'

Chapter II

AMENDMENTS TO LAW No. 164 OF 10 FEBRUARY 1992 CONCERNING
PROVISIONS ON GEOGRAPHICAL INDICATIONS FOR WINES

Article 10

1. The following paragraph shall be added to article 24 of Law no. 164 of 10 February 1992: '4bis. Without prejudice to the provisions of paragraph 2 of article 2, recognition may be granted to all homonymous warranties of origin or geographical indications. The Ministry for agriculture, nutrition and

forests shall determine the practical conditions under which, by means of suitable differentiating elements, the producers concerned may be ensured an equitable treatment and consumers are not misled.'

Chapter III

AMENDMENTS TO ROYAL DECREE No. 1411
OF 25 AUGUST 1940 CONCERNING UTILITY
AND ORNAMENTAL DESIGNS, AS LAST AMENDED
BY LAW No. 60/87

Article 11

1. The following paragraph shall be added to the first paragraph of article 12 of Royal Decree

no. 1411 of 25 August 1940, as subsequently amended: 'The licensing fee for textile designs may be paid in yearly instalments.'

2. For item 2 of article 10 of Title IV of the tariffs annexed to ministerial decree of 28 December 1995 there shall be substituted the following: '2. Patent for utility and ornamental designs: a) for the application, Lit 50,000; b) for the granting of the patent, if the whole sum is paid at one time, Lit. 1,000,000; c) for the granting of the patent, if the whole sum is paid by three instalments,: a) Lit. 500,000, for the first fiveyear period; b) Lit. 600,000, for the second fiveyear period; c) Lit. 1,000,000 for the third fiveyear period; d) for the granting of the patent for textile designs, in respect of which the tax must be paid each year, Lit. 100,000 yearly;

e) for the granting of the patent relating to a whole group or a series of layouts or designs, pursuant to article 6 of Royal Decree no. 1411 of 25 August 1940, Lit. 2,000,000 if the whole sum is paid at one time;

f) for the granting of the patent relating to a whole group or a series of layouts or designs, pursuant to article 6 of Royal Decree no. 1411 of 25 August 1940, if the whole sum is paid by three instalments:

1) Lit 600,000 for the first fiveyear period;
2) Lit 1,000,000 for the second fiveyear period;
3) Lit 1,500,000 for the third fiveyear period;

g) for the granting of the patent for a whole group or a series of textile designs, pursuant to article 6 of Royal Decree no. 1411 of 25 August 1940, in respect of which the tax must be paid each year, Lit. 150,000 yearly.'

3. The following note shall be added to the notes to article 10, Title IV, item 2, of the tariffs annexed to ministerial decree of 28 December 1995: '6bis.When an application is filed for a patent relating to a textile design, the licensing fee must be paid, being equivalent to the first yearly instalment; the subsequent yearly payments must be made within the last month of the preceding year. After the expiry of the latter term payment of the fee—including the additional charge as per paragraph 3, subheading b)—may be made within the next six months.'

Chapter IV

AMENDMENTS TO ROYAL DECREE No. 1127
OF 29 JUNE 1939 CONCERNING PATENTS
FOR INDUSTRIAL INVENTIONS AS LAST MODIFIED
BY LAW No. 338 OF 22 JUNE 1979

Article 12

1. The following article shall be inserted after article 1 of Royal Decree no. 1127 of 29 June 1939, as subsequently amended:

'Article 1bis.–

1. In particular, a patent shall confer the following exclusive rights on its owner: a) where the subject matter of a patent is a product, to prevent third parties not having his consent from making, using, putting on the market, selling or importing for these purposes that product; b) where the subject matter of a patent is a process, to prevent third parties not having his

consent from using that process, and from using, putting on the market, selling or importing for these purposes the product obtained directly by that process.'

Article 13

1. Paragraph 2 of article 2586 of the Civil Code shall be repealed.

2. For article 2 of Royal Decree no. 1127 of 29 June 1939, as subsequently amended, there shall be substituted the following:

'Article 2. –

1. In respect of process patents, any product identical with that produced by the patented process shall be deemed, in the absence of proof to the contrary, to have been obtained by the patented process: a) if the product obtained by the process is new;
2. b) if there is a substantial likelihood that the identical product was produced by the process and the owner of the patent was unable, through reasonable efforts, to determine the process actually used.
1. In the adduction of proof to the contrary, the legitimate interest of the defendant in the protection of his manufacturing and business secrets shall be taken into account.'

Article 14

1. The following article shall be inserted after article 6 of Royal Decree no. 1127 of 29 June 1939, as subsequently amended:

'Article 6bis. –

1. Without prejudice to the provisions of article 2598, no. 3, of the Civil Code, the disclosure of business information to third parties, including commercial information lawfully within a competitor's control, or the acquisition or use of such information by third parties in a manner contrary to fair professional practices shall constitute an act of unfair competition, where the said information:

a) is secret in the sense that it is not, as a body or in the precise configuration and assembly

of its components, generally known among or readily accessible to experts and operators in that sector;

b) has commercial value because it is secret;

c) is subject to reasonable steps under the circumstances, by the persons lawfully in control

of such information, to keep it secret.

2. Disclosure to third parties of test data or other secret data, the processing of which involves a considerable effort, or the acquisition or use of such data by third parties in a manner contrary to fair professional practices, where the submission of such data is a condition of approving the marketing of chemical, pharmaceutical or agricultural products utilising new chemical entities, shall be also considered an act of unfair competition.'

Article 15

1. The words 'whose publication or' shall be deleted in paragraph 1 of article 13 of Royal Decree no. 1127 of 29 June 1939, as subsequently amended.

Article 16

1. For article 53 of Royal Decree no. 1127 of 29 June 1939, as subsequently amended, there shall be substituted the following:

'Article 53. –

1. Introducing or selling, in the State's territory, goods produced in States other than the member States of the European Union and/or of the World Trade Organisation shall not constitute implementation of an invention.'

Article 17

1. For article 54 of Royal Decree no. 1127 of 29 June 1939, as subsequently amended, there shall be substituted the following:

'Article 54. –

1. If, after three years have elapsed from the date of granting of a patent, or four years from the date of the filing of an application in case the latter term expires after the former one, the owner of the patent or the previous right holder did not implement the patented invention, either directly or through one or more licensees, thereby producing in the State's territory or importing goods produced in a member State of the European Union and/or of the World Trade Organisation, or else implemented such invention to a disproportionate extent as compared with the State's needs, a mandatory licence may be granted for the nonexclusive use of that invention in favour of any person applying therefor.

2. The mandatory licence as per paragraph 1 may also be granted: a) where the implementation of the invention was suspended or reduced for over three years to such an extent as to be seriously out of proportion to the State's needs; b) where the patented invention cannot be exploited without affecting the rights relating to a patent granted following a previous application. In this case a licence may be granted to the owner of the subsequent patent to the extent that is necessary for the exploitation of that invention, provided the latter involves an important technical advance of considerable economic significance in relation to the invention claimed in the previous patent. Without prejudice to the provisions of paragraph 5 of article 54bis, such licence shall be nonassignable unless with the assignment of the patent relating to