GALLI LAW FIRM
About us
Galli Law
Firm is based
in Italy and is
specialized in
IP, handling:
IP civil
actions
IP
Customs
actions
IP
criminal
actions
We deal mainly
with
international
clients in all
fields of IPRs
and
Technology
We cover all kind
of technologies,
including mostly
Patent protection
and have a
considerable
technical
background in
many field.
We handle
regularly criminal
action
to protect IP
The team of
our Boutique
Firm is
composed by
6 specialized
Lawyers
Criminal Enforcement of IPRs
- An Italian Specialty-
-History of Success –
very
fast
under control
of IP owner
predictable
costs
controlled
effective-
efficient
Key Features of Criminal Protection of IPRs in Italy
Effective
-
Efficient
(seizures acquire
evidences and
block
infringement)
Predictable
(outcome is
normally
entirely
predictable)
Criminal proceeding
is very fast
(seizure is granted by
Prosecutors in few
days, weeks or
months, depending
on cases)
Key Features of Criminal Protection of IPRs in Italy
The Criminal
Judge cannot
deliver a decision
about validity of
the IP title and
cannot revoke or
annull it
Criminal action is
not discretionary
but compulsory
in Italy, so that the
Public Prosecutor
will prosecute the
action anyway
Key Features of Criminal Protection of IPRs in Italy
Any infringement
of any IP right
(trademarks,
patents, utility
models, Design,
copyrights) can
be prosecuted
Costs
controlled
(activity is
concentrated
in few steps)
Under control
of IP owner
(IP owner has a
direct dialogue
with
Prosecutor)
List of some particularly interesting criminal cases
where, as a sample, we obtained:
- Criminal Seizure 2013 – 1.000.000 products seized;
(Seizure to protect a Patent on devices for vineyards)
- Criminal Seizure 2009 – 250.000 products seized;
(Seizure to protect Trademarks on clothing)
- Criminal Seizure 2012 –250.000 products seized;
(Seizure to protect Trademarks on wine bottles)
- Criminal Seizure 2009 – 100.000 products seized;
(Seizure to protect a Patent on devices for vineyards)
History
of
Success
- Criminal Seizure 2016 – 50.000 products seized;
(Seizure to protect Trademarks on wine bottles)
- Criminal Seizure 2015 – 50.000 products seized;
(Seizure to protect Trademarks on wine bottles)
- Criminal Seizure 2014 – 50.000 products seized;
(Seizure to protect Trademarks on wine bottles)
- Criminal Seizure 2010 – 40.000 products seized;
(Seizure to protect a Patent on devices for vineyards)
- Criminal Seizure 2009 – 15.000 products seized;
(Seizure to protect a Design on kitchen grill)
- Criminal Seizure 2013 – 15.000 products seized;
(Seizure to protect Trademarks on wine bottles)
- Criminal Seizure 2012 – 12.000 products seized;
(Seizure to protect a Patent on shutters stops)
- Criminal Seizure 2008 – 5.000 products seized;
(Seizure to protect Designs on buckles)
- Criminal Seizure 2008 – 4.000 products seized;
(Seizure to protect a Patent on thermometers)
- Criminal Seizure 2017 – 3.000 cell. phone seized
(Seizure to protect a Patent on cell phone device)
- Criminal Seizure 2010 – considerable N° of cell
phones seized
(Seizure to protect a Patent on cell phone device)
- Criminal Seizure 2004 – considerable N° of cell
phones seized
(Seizure to protect a Patent on cell phone device)
- Criminal Seizure 2005 – considerable N° of cell
phones seized
(Seizure to protect a Patent on cell phone device)
- Criminal Seizure 2006 – considerable N° of cell
phones seized
(Seizure to protect a Patent on cell phone device)
- Criminal Seizures 2008 – 800 products seized;
(Seizure to protect Trademarks on shoes)
- Criminal Seizure 2015 – 200 products seized;
(Seizure to protect Trademarks on wine bottles)
- Criminal Seizure 2017 –Steel making line seized
- Criminal Seizure 2008 –Paper making line seized
- Criminal Seizure 2000 –Glass making line seized
Prosecution begins with the request
of search and criminal seizure, in
order to obtain the seizure of
infringed goods, the means of
production, the accounting books,
copies of invoices of sales, the
internal correspondence of the
company with customers and
suppliers.
This means that the civil trial, since
its start, could acquire all the
evidences of the infringement, the
turnover of purchases and sales and
also the evidence of the
intentionality of the conduct,
including the correspondence with
accomplices, which often also shows
the path that led to the infringement
and its reasons.
The Prosecutor and the Judge decide
very quickly, without convening the
counterpart (the accused/person
under investigation), in a few days or
in a few weeks, usually. This is an ex
parte proceeding (the accused
person is not heard).
One can normally file a criminal
complaint on the basis of a mere IP
application, without waiting for the
IP right to be granted.
Criminal Protection of IPRs
- FAQs -
- How to
begin a
criminal
proceeding?
- How long does the
criminal proceeding
in precautionary
stage last for?
- To file a complaint,
is it enough to have
filed an IP
application?
The criminal infringement is
generally very similar to civil
infringement. It is not necessary an
act of piracy or something else. It is
considered to be a criminal offence
the violation either of the IP right or
of the IP application. The criminal
infringement can be literal or by
equivalents, as in civil law. Criminal
Law in IP is therefore a kind of
“administrative/state” action.
Basically, it is possible to proceed
with criminal and civil actions at the
same time, since the same violation
of an IP right is or can normally be
both a civil and a criminal offence.
A special feature of the criminal
protection is that, in general, the
current and substantial validity of
the title is not required. In fact, the
criminal protection is independent
from the actual substantial validity of
the IP title . In case of annulment of
a title, the criminal protection
remains for the facts of
infringements which have already
occurred during validity: the nullity
is not retroactive in criminal law,
except for some aspects. If the title is
cancelled in a civil trial, generally one
can proceed for the infringements
already occurred, depending on
some circumstances.
- What is a
criminal
infringement ?
- Validity of the
IP right and
criminal action
Normally there is a good dialogue
with the Public Prosecutor, so it is
well possible to discuss the course of
action with the Public Prosecutor
and various remedies.
In case of a settlement, the criminal
case may be dismissed and
abandoned, with certain procedures.
Even if the crime is prosecutable ex
officio, one can ask for the case to be
shelved in the event of a settlement.
Criminal jurisdiction exists in many
cases, as long as the accused person
is Italian, or as long as the victim is
Italian. Therefore, if for example the
counterfeiting takes place in the US
or China, one can proceed with
criminal action in Italy, without the
need file the action in China or the
US.
Even in case of foreign IP title
violated abroad, one can proceed
with prosecution in Italy.
Therefore jurisdiction under
Criminal law is much broader that in
civil Law.
- Does the criminal
procedure also
proceeds ex
officio?
- If a settlement is
reached, is it
possibile to dismiss,
or abandon the case?
- If the infringement
occurs abroad, can
one file his
complaint in Italy?
If the criminal seizure is not granted,
an opposable decision normally is
not delivered and normally the
accused person does not come to
know it. One can usually resubmit
the action, under some procedures.
The complainer is not condemned to
pay legal fees in case the seizure is
not granted. The criminal court can
not annul the IP title under any
circumstances.
The impossibility to annul the IP
title, and the fact that the eventual
rejection of the seizure does not lead
to a decision of refusal and have no
binding effects on the procedure, are
remarkable peculiarities of the
criminal procedure.
The Criminal Judge can not annul an
IP title in any case. The Judge can
only eventually acquit the defendant
at the end of the trial, but can not
annul the IP title.
The criminal judge can not condemn
those who have filed the complaint
to pay legal expenses, if a complaint
is dismissed, except in exceptional
cases.
- If the criminal
seizure is not
granted, are there
any consequences?
- May the
Criminal Judge
annul an IP title?
- May the Criminal
Judge sentence the
complainer to pay
legal expences?
After the criminal seizure, the
infringer and/or its customers
normally cease in full or in part the
infringement. The rightholder
regains all or part of the market. The
market recovery allows virtuous
investments and the indirect
recovery of expenses and damages. It
also allows one to fund the
continuation of criminal and civil
cases. In practice it is a form of self-
financing of civil and criminal cases
and it is an indirect way to obtain
compensation, which comes by
recouping the market.
The experience shows that the
criminal protection allows an
excellent dialogue with investigators,
often of the best level, in order to
solve concrete problems, where each
solution can be carried out with
maximum flexibility, in perfect
parallel with the civil remedies.
The law establishes sanctions only if
"anybody promote a criminal action
knowing with certainty that the
counterparty is innocent." Therefore, in
case of reasonable doubt, one can
proceed. One should not file a
complaint only if he is aware of the
innocence of the counterfeiter.
The validity of the IP title is a matter to
be assessed differently than in civil
proceedings. In fact, if an IP title is
cancelled in the course of a criminal
action, the nullity is not retroactive in a
criminal trial. The nullity is quite
irrelevant, until it is not declared in the
civil courts. The criminal judge,
however, can not annul the IP title and
therefore the validity is a matter to be
addressed in a different way only in
civil court.
- What are the
effects of the
prosecution?
- Does the criminal
trial remain in the
availability of the
complainer?
- Are there
possible risks to
promote a
prosecution?
