RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/ITA/1
27 August 1998
(98-3320)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
ITALY1
The present document reproduces the introductory statement of the delegation of Italy, the
questions put to it and the responses given in the re view of legislation on enforcement at the Council's
meeting of 17-21 November 1997.2
_______________
I. INTRODUCTORY STATEMENT
According to Italian legislation, the intellectual  property right holder can act before the civil
judge in order to obtain:
- the recognition of the right;
- the inhibition of the behaviour infringing the intellectual property right;
- the compensation for damages;
- the destruction of counterfeit goods.
Before and during the proceedings, it is always possible to ask the civil judge to adopt an
urgent procedure in order to obtain a measure protecting said right (in particular the inhibition of thecontinuation of the prejudicing behaviour and the sequestration).  Said measure has a provisional
character in that at the end of the proceedings it is replaced by the final decision of the judge.
As a general rule, urgent procedures are provided for in the Italian Code of Civil Procedure.
There are, nevertheless, special provisions concerning  urgent protection of intellectual property rights.
As regards the procedural aspect, the two most important principles are the cross-examination
principle and the burden of proof.
The cross-examination principle implies the equality between the plaintiff and the defendant.
Both have the same rights and the same duties and no measure can be adopted by the judge if one of
the parties has not been given the possibility to be defended.
                                                     
1 As regards laws and regulations relevant to the area under review and notified by Italy under
Article 63.2 of the Agreement, reference is made to document IP/N/6/ITA/1.
2 The minutes of this meeting have been circulated as document IP/C/M/16.IP/Q4/ITA/1
Page 2
This principle can be interpreted in various ways, i.e. the plaintiff must summon the defendant
at the first hearing through a writ of summons specifying the subject of the case, the statement of the
plaintiff argument, the indication of the evidence and the date of the hearing.  The same principle
applies also to the defendant.
Besides, during the trial, when a party asks for a measure or makes some remarks, the other
party has the right to reply.
As far as evidence is concerned, the principle of the burden of proof shall be applied.  This
means that the party declaring some facts is obliged to supply evidence.  In its turn, the other party
must rebut evidence.
Said principles of the cross-examination and of the burden of proof shall also apply to urgent
procedures with the only exception provided for as regards the adoption of a measure inaudita altera
parte  in the case of a serious and imminent danger for said right.  Anyway, in that case, after having
adopted said measure, both parties must be summoned by the judge for a special hearing in order to
decide about the confirmation or the revocation of the above-mentioned measure.
The general principles of Italian legislation are entirely in compliance with the TRIPS
Agreement.  This applies also as regards particular aspects of the Treaty as it might be inferred from
the answers given to the questions from the United States, Japan and New Zealand.
The same happens as far as criminal penalties are concerned.  In particular, the sanctions
provided for in Italian laws are quite fair.  They, in fact, order the same penalties provided for in
relation to crimes of similar seriousness as specified in the answer to question 38 from the
United States.
As far as customs regulations are concerned, Italian law is perfectly in compliance with the
TRIPS Agreement.  In this regard, we would like to  underline that most of the provisions currently in
force are those of the European Community Regulation No. 3295/94, as it is specifically explained in
the answers to the questions from Japan.
II. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please indicate the "competent authorities" stipulated in Article 51 of the TRIPS
Agreement.
The authority competent to receive requests to suspend the clearance of goods suspected of
being counterfeit is: Dipartimento delle Dogane - Direzione Centrale dei Servizi Doganali -Divisione Via Marco Carucci, 71  -  00144 Roma.
2. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
The procedure relating to the merits of the case is judicial in character, dealt with under
civil law.
3. Are there any ways other than the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder torequest the competent authorities to suspend the release of the goods which infringeintellectual property rights or which are suspected to infringe intellectual property rights?IP/Q4/ITA/1
Page 3
In order to suspend the clearance of goods infringing copyright there are no other
procedures than those indicated in the EC Regulation No. 3295/94 of 22 December 1994.
4. Please explain what term your country regards as "a reasonable period within which
the competent authorities shall inform the applicant whether or not they have accepted theApplication" stipulated in Article 52 of the TRIPS Agreement.
Within three days of receiving the request from the right holder, the competent national
authority (see the answer to question 1 above) must notify the fact that the request to suspend theprocedure for clearing the goods has been accepted, if that has been the case.
5. Please explain the term during which the Application is effective.
The procedure remains effective for six months, after which the application can be filed
again if the aggrieved party reports further suspected infringements.
6. Please explain whether a right holder is obliged to pay any fees to lodge the
Application.
The applicant is required to deposit Lit 5 000 000 as bail for the purposes of the procedure,
which may be raised to a maximum of 10 % of the value of the goods as soon as the value has been
ascertained.  this deposit is to be used to cover all the costs of keeping the goods in custody or storing
them, in the event that it is necessary to keep the goods in a bonded warehouse while their clearance is
suspended.
No fee is provided for.
7. Please indicate provisions of laws and ordinances which prescribe the "proceedings
leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS
Agreement. And please summarize their contents.
The judicial proceedings are governed by the Code of Civil Procedure (adopted by Royal
Decree No. 1443 of 28 October 1940, as subsequently amended and supplemented).  (hereinafter"c.p.c.").
8. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPSAgreement.
If, after the evidence has been taken, it fails to corroborate the claims with all the necessary
technical proofs to show that an offence has been committed, the suspension is revoked and all thegoods are released.
9. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulationof goods which infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Suspension is normally ordered at the request of the right holder and on the basis of
technical evidence supplied by an expert witness.  The customs authorities are not thereforeIP/Q4/ITA/1
Page 4
empowered to suspend the clearance of the goods in question without the help of an expert.  The
same rule is provided for clearing goods.  As a general rule, public administration and publicofficials are responsible towards third parties for the damages they have caused for unlawful actscommitted in violation of rights and which have been declared such by the judicial authority(Article 28 Italian Constitution).
10. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectualproperty rights and nevertheless release them into free circulation with regard to thesuspension based on the Application or the Ex Officio Action stipulated in Article 58 of theTRIPS Agreement.
See the reply to question 9.
11. Please explain the responsibility that the competent authorities and other related
authorities take to the importers when they suspend the release into free circulation of goodswhich do not infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Any liability relating to any procedure rests with the applicant who has to stand surety in a
specific formal document (see also the answer to question 6).
12. Is the right holder informed of identities of the importers and consignors when the
competent authorities "suspend" the goods which infringe on intellectual property rights orwhich are suspected to infringe intellectual property rights, as well as the case where the rightholder is informed of identities of the importers and consignors stipulated in Article 57 of theTRIPS Agreement?
Yes, so that he can sue.
13. Please explain the measures to protect confidential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions oflaws and ordinances which prescribe such measures.
Such information is handled by the personnel responsible for that particular sector, and they
are required to treat all the information as being totally confidential under current legal provisionsgoverning professional secrecy in the performance of their duties.
14. Please explain the procedures of detentions and seizures to be ordered by the
competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
The competent authorities may order all the goods in question to be seized, acting within the
prescribed deadlines and at the request of the right holder.  This procedure must subsequently beconfirmed by the courts which, at the request of the relevant party, can authorise the goods to beseized as a precautionary measure.  If there are well-founded suspicions of irregularities thatsuggest that a crime may have been committed, the customs authority may seize the goods.  This isa procedure that falls outside the scope of EC Regulation No. 3295/94 of 22 December 1994.
15. Please explain the procedures to appeal against any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.IP/Q4/ITA/1
Page 5
Any judgements handed down at first instance and any others issued subsequently may be
appealed in the manner prescribed in the Code of Civil Procedure (Royal Decree No. 1443 of28 October 1940, as subsequently amended and supplemented).
16. Please explain the basis for calculating the security or equivalent assurance stipulated
in Article 53 of the TRIPS Agreement that the competent authorities may require an applicantwhen they suspend the release into free circulation.
See the answer to question 6.
17. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
If the goods are found to be counterfeit, the courts may order the importer to pay this cost.
Otherwise the cost must be paid by the applicant who undertakes to pay it when filing the petition(see the answer to question 6).
18. Please explain what kind of cases are regarded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goodsstipulated in Article 59 of the TRIPS Agreement.
Pursuant to Article 2 of EC Regulation No. 3295/94, it is never possible to re-export
counterfeit or pirated goods in an unaltered state.
19. Please indicate names of laws and ordinances and their provisions in which the
suspension of the release of goods which infringe intellectual property rights or which aresuspected to infringe intellectual property rights is prescribed, as stipulated in Article 51 of theTRIPS Agreement.
EC Regulation No. 3295/94 is applicable.  Pursuant to these articles on a national level
instructions have been given to customs offices by means of a Circular Letter 188/D dated12 July 1995, Ref. No. 3538, of the 12th Department of the Central Directorate for the CustomsService.
20. Please explain whether the amount of damages which judicial authorities order the
person who infringes intellectual property rights to pay the right holder is adequatecompensation for the injury the right holder has suffered, and what criteria and the way forcalculation to decide the amount for compensation. Does the expenses include appropriateattorneys' fees?
3
Article 2043 of the Civil Code, which generally applies to all unlawful acts including those
infringing any right related to intellectual property, provides that the person infringing the rightshall pay damages.  Said damages shall include, as provided for in Article 1223 c.c., both lossincurred by the person suffering damage and loss of gain.  The unsuccessful party is ordered to paythe costs of proceedings including attorneys' fees.
                                                     
3 Reference is made to Italy's response to ques tion 5 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 6
In case of abuse of judicial procedures by the unsuccessful party, this is ordered, through
the judgement deciding on the case, to pay damages (Article 96 c.p.c.).
[Follow-up question from Japan]
In response to question 20 from Japan and Italy's answer to question 5 of the Checklist
of Issues on Enforcement4 for damages for the infringement of intellectual property rights,
Italy states that the person infringing the intellectual property right shall pay damages asrelated both to loss incurred by the person suffering damage and loss of gain.  Please describethe way for calculation of loss incurred by the person suffering damage and loss of gain.  And,please explain whether loss incurred by the person and loss of gain includes the intellectualproperty right holder's lost profits, infringer's profits of the unlawful utilization of theintellectual property right or reasonable royalty for utilization of the intellectual propertyright.
The calculation of loss incurred by the persons suffering damage and loss of gain is made
by the judge.  This means that the evaluation is made case by case, without any general criteriabeing applied.
Loss of gain includes holders' lost profits and loss of reasonable royalties and can also
include infringers' profits as correspondent to lost holders' profits.
III. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
General obligations
1. Article 41.1 of the TRIPS Agreement requires that procedures be available for the
effective enforcement of the intellectual property rights covered by the Agreement.
IP/N/6/ITA/1 states that the pretore  and the Courts have jurisdiction over intellectual property
cases. Please describe the structure of the judicial bodies in Italy in which parties can enforcetheir intellectual property rights, at local, provincial and national levels, indicating thejurisdiction of each type of court and explain the interrelationships, if any, of the variousbodies.
As regards first instance judicial authorities, the pretore  has jurisdiction over cases not
exceeding Lit 50 000 000.  The Court ( Tribunale ) has jurisdiction over cases exceeding said amount.
In the first six-month period of 1998, however, the two judicial authorities will be unified into a Court
(Tribunale ) which will act as first instance Court with jurisdiction over all civil cases including
intellectual property cases.  Appeal against the decisions of said authority and a further appeal to theCourt of Cassation against the decisions of the Appellate Courts are admitted.
2. Please describe briefly the procedure that must be followed by a foreign party to
initiate an enforcement procedure in each of the courts identified in response to question 1 andcite the legal authorities establishing those procedures.
The procedure of protection of intellectual property rights to be followed by a foreign party is
the same as the procedure to be followed by Italian citizens, namely a writ of summons before the
competent Court or an application when urgent measures are requested.
                                                     
4 Document IP/N/6/ITA/1.IP/Q4/ITA/1
Page 7
3. Please identify any requirement that a foreign party must meet to initiate a proceeding
that is not required of a national or resident of Italy and cite the legal authorities providing forthose differences.
No particular requirement must be met by a foreign party other than those to be met by Italian
citizens.
4. Article 41.1 of the TRIPS Agreement requires establishment of safeguards against
abuse of judicial procedures, including provision for adequate compensation for injurysuffered because of such abuse.  Please describe the means available under the law of Italy toprevent abuse of judicial procedures or to remedy damages suffered as a result of such abuse.
In case of abuse of judicial procedures by one of the parties, this is ordered, through the
judgement deciding on the case, to pay damages (Article 96 c.p.c.).
5. Please explain any provisions in the enforcement system in Italy that ensure expeditious
remedies.  In addition, please explain what provisions are available to prevent deliberatedelays by the parties to a proceeding and indicate the circumstances in which such provisionswill be applied.
With respect to civil matters, urgent proceedings aimed at obtaining the description or
sequestration of things representing infringement of intellectual property rights (Article 162 L.633/41,Article 63 R.D.929/42) as well as inhibition of production, trade and utilization
(Article 83 R.D.1127/38; Article 63 R.D.929/42), ma y be carried out.  In the cases not expressly
provided for by law, the procedure set forth in Article 700 c.p.c. (a provision of general application)
providing for the adoption of appropriate measures to provisionally ensure the effects of the final
decision, shall apply.
Urgent procedure provides for a petition to the competent judge who fixes the summoning of
the parties within the shortest lapse of time (in case of particular urgency he can immediately issue a
measure without summoning);  after having heard the parties and carried out a summary examination,
he issues a provisional measure which is subject to the result of the ordinary proceeding which, if notin progress, must be started within 30 days.
If the party refuses or delays the enforcement of the measure, the judge can cause it to be
enforced.
In case of inhibitory order, the judge can order a pecuniary penalty for the delay in the
enforcement or for the lack of enforcement (Article 63 R.D. 929/42; Article 83 R.D. 1127/38).
6. Article 41.2 addresses, among other things, the cost of judicial and administrative
enforcement proceedings.  Please describe any fees charged for filing legal actions involvingintellectual property or for pursuing such actions once initiated and cite the legal authoritiesfor such fees.
This question has already been answered.
5
                                                     
5 Reference is made to Italy's response to ques tion 8 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 8
The costs of the proceeding (except those concerning defence counsel) amount to about
Lit 500 000, which is the tax to be paid to the court ( Tribunale ); to that amount the cost for the
registration of the judgement must be added.
7. Article 41.2 also addresses the timeliness of judicial and administrative enforcement
proceedings.  Please cite the legal authorities establishing any time limits for judicialproceedings.
This question has already been answered.
6
As regards duration of judicial proceedings, no time-limits are provided for by law.
Nonetheless, urgent measures are issued on averag e within a period of time not exceeding 30-60 days
and in many cases within one to two days, if necessary.
8. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determine the reasoning on which the decision is based.Please state, with regard to each type of court identified in question 1, whether judges mustrender their decisions in writing and cite the legal authorities requiring such written opinions.
All judgements (judgement or urgent orders) are written and must include the reasoning as to
the facts and as to the law on which the decision is based (Articles 132 and 134 c.p.c.).
9. Article 41.3 also requires that decisions on the merits of a case be based only on
evidence in respect of which parties had an opportunity to be heard.  Please state, with regardto each type of court, what factors may be considered by a judge in rendering a decision andcite the appropriate legal authorities.
In civil proceedings, the parity of the parties in a proceeding is ensured.  Each party may infer
and present evidence contrary to the evidence brought forward by the counterpart (Article 184 c.p.c.).
This system is the same for each Court.
10. Article 41.4 obligates WTO Members to provide for judicial review of certain judicial
decisions in intellectual property enforcement proceedings.  Please describe what legallimitations, if any, are placed upon the ability of a party to an intellectual propertyenforcement proceeding to have both procedural rulings and final decisions reviewed by aseparate judicial authority, and cite the legal authorities providing for such reviews.
In civil proceedings, against the decisions of the Court of first instance, it is possible to appeal
to the Appellate Court and against the decision of the latter, it is possible to appeal to the Court of
Cassation concerning errors in law in the decision (Articles 323 et seq . c.p.c.; Article 360 c.p.c.).
Civil and administrative procedures and remedies
11. Article 42 requires that defendants be notified of intellectual property enforcement
proceedings brought against them.  Please describe the procedures followed for notifyingdefending parties regarding proceedings that have been initiated against them, indicate theinformation provided regarding the proceeding and cite the legal authorities establishing theseprocedures.
                                                     
6 Reference is made to Italy's response to ques tion 8 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 9
The defendant must be sued through a writ of summons specifying: the competent court, the
name of the defendant, the subject of the case, the statements of the plaintiff's arguments, the
indication of the evidence, the date of the hearing in which the defendant must appear.
The writ of summons is serviced to the defendant by a process server at least 60 days before
the hearing (Article 163 bis c.p.c).
Similar principles apply also to those applications through which urgent measures are
requested.
12. Article 42 also requires that parties to intellectual property enforcement proceedings
must not be subject to overly burdensome requirements to appear personally.  Please describeany requirements imposed on the party to appear personally in a proceeding.  Please cite thelegal authorities imposing such requirements.
The parties are not required to appear personally.  They have to be represented before the
court by a defence counsel (Articles 82 and 183 c.p.c.).
The judge may in any case order the parties to appear in person for an attempt to reconcile
them (Article 185 c.p.c.), or when this is made n ecessary for the free or formal interrogation or for
swearing (Articles 228 and 233 c.p.c.).
13. Under Article 42, parties are to be entitled to substantiate claims and present relevant
evidence.  Please describe any limitations under the law of Italy on a party’s ability tosubstantiate a claim or to present relevant evidence and cite the legal authority providing suchlimitations.
The plaintiff must substantiate his/her claims and present relevant evidence in the writ of
summons (Article 163 c.p.c.).  The defendant has to do the same in his/her statement of defence
(Article 167 c.p.c.).
At the hearing of first appearance, the judge asks for explanations to the parties with regard to
their questions and exceptions and may fix a time-limit within which they can present briefs
containing clarifications and amendments (Article 183 c.p.c.).  During said hearing, the judge admits
evidence or may fix a time-limit for the parties to produce documents or new elements of evidence
(Article 184 c.p.c.).
There are then no limits preventing the parties from substantiating their claims and from
producing evidence.
14. Article 42 requires, with one narrow exception, that there be a means to identify and
protect confidential information during intellectual property enforcement proceedings.IP/N/6/ITA/1 includes a paragraph regarding protection of confidential information andcitations to two provisions of Italy’s Code of Civil Procedure.  Please describe what judges cando to ensure that confidential information that must be presented in court to substantiateclaims is protected against disclosure both during the litigation and after the litigation is over.
This question has already been answered.
7  Pursuant to Article 210 c.p.c., the judge, when
ordering a party to disclose a document or other things necessary to the proceedings, orders
                                                     
7 Reference is made to Italy's response to ques tion 4 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 10
appropriate measures concerning time, place and disc losure procedures.  In so doing, the judge may
provide the necessary measures for the protection of confidential information.  The contents of said
measures vary from case to case according to the different needs.
In case of a third party, Article 211 c.p.c. in particular provides that the judge has to reconcile
the interests of justice with the need to respect the rights of a third party.
Article 58 bis R.D.929/43 (Law on Trademarks) and Article 77 R.D.1127/39 (Law on Patents)
provide that the judge, in acquiring through interrogation the information requested by the party who
has given indications on the documents and the information held by the opposing party, adopts the
necessary measures to safeguard the protection of confidential information.
15. Article 43.2 provides that, in the event a party refuses to provide information ordered
by the judicial officials, those officials may be authorized to make preliminary and finaldeterminations adverse to that party.  Please describe what sanctions may be imposed on aparty that refused to provide ordered information and under what circumstances thosesanctions are imposed, citing the legal authority for those sanctions.
Under Article 43.2 of the TRIPS Agreement, Members have the possibility but not the
obligation to make determinations adverse to the party which does not supply the information
requested.  It is then an optional performance.
Article 116 provides that the judge can make his opinions on the basis of the behaviour of the
parties and consequently from their possible refusals.
Article 232 c.p.c., provides that if one of the parties is invited to answer a formal interrogation
about some facts and such party refuses to answer, said facts can be deemed to have been submitted.
Furthermore, Article 118 c.p.c., provides that the judge can order the parties or a third party to
follow the examination of the items possessed by them if this is essential to know the relevant facts.From the unjustified refusal the judge can infer evidence against the party.
16. Article 44.1 requires that judicial officials be able to enjoin or otherwise prevent
infringing activity by a party, including by preventing the entry of infringing goods into thechannels of commerce in their jurisdiction.  IP/N/6/ITA/1 refers to the possibility of aninjunction as a "provisional" decision in connection with trademarks or patents.  Pleasedescribe authority of the judges officials to stop infringements and to prevent infringing goodsprotected by other forms of intellectual property from entering the channels of commerce andcite the legal authorities authorizing such actions.  Also please clarify whether the statement inIP/N/6/ITA/1 means that permanent injunctions are not available.  If the latter is the case,please explain in what manner the law of Italy conforms with Article 44.1 of the TRIPSAgreement.
Without prejudice to the provisions concerning trademarks and patents referred to in Italy's
response to question 5 of the Checklist of Issues on Enforcement,
8 as concerns copyright, Article 156
L.633/41, provides that any person having reason to fear the infringement of a right of economic
utilization belonging to him according to this Law, or who seeks to prevent continuation or repetitionof infringement which has already occurred, may take legal action to ensure that this right be
recognized and the infringement forbidden.
                                                     
8 Document IP/N/6/ITA/1.IP/Q4/ITA/1
Page 11
The interested party, besides, can ask the judge be means of urgent measures the sequestration
of things representing infringement (Article 162 L .633/41) or the counterpart to stop his prejudicing
behaviour (Article 700 c.p.c.).
As regards other intellectual property rights, any person may apply to a judicial authority for
the latter to adopt such urgent measures to prohibit the entrance of the counterfeit goods on the marketas per Article 700 c.p.c.
It is to be pointed out that urgent orders prohibiting prejudicing behaviours are provisional, in
that they last (except for revocation for various reasons) until a final judgement on the merits are
reached.  And if said final judgement acknowledges the infringement of the right, it shall finally order
that the acts representing infringement of the right cease.
17. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy forinfringement to payment of adequate remuneration as provided in Article 31(h).  Pleasedescribe any such limitations on remedies in the laws of Italy and cite the legal authoritiesproviding for those limitations.
Italian legislation does not provide for the exceptions as per Article 44.2 of the TRIPS
Agreement.
18. Article 45.1 requires that judicial officials be able to order an infringer to pay the right
holder damages adequate to compensate for the injury caused by the infringement.IP/N/6/ITA/1 refers to damages authorized in connection with copyrights, trademarks, andpatents.  Please describe the authority of the judges to order a party found to be infringingother forms of intellectual property required to be protected under the TRIPS Agreement topay the right holder damages adequate to compensate for the injury caused by theinfringement.  If judges are not authorized to order damages in connection with other forms ofintellectual property, please explain in what manner the law of Italy conforms withArticle 45.1 of the TRIPS Agreement.
This question has already been answered.
9  Article 2043 c.c., which generally applies to all
unlawful acts including those infringing any right related to intellectual property, provides that theperson infringing the right shall pay damages.  Said damages shall include, as provided for in
Article 1223 c.c., both loss incurred by the person suffering damage and loss of gain.
19. Article 45.2 requires that judges and administrative officials be authorized to order
payment of a right holder’s expenses, including legal fees.  IP/N/6/ITA/1 refers to thispossibility only in connection with copyright infringement.  Please describe the authority of thejudges to order payment of right holder's expenses in cases involving other forms ofintellectual property, the circumstances under which such an order will be given, the factorsconsidered in establishing the expenses, and cite the legal authorities authorizing suchpayments.  If the judges are not authorized to order payment of a right holder’s expenses inappropriate cases, please explain in what manner the law of Italy conforms with Article 44.1of the TRIPS Agreement.
Article 91 c.p.c., which is of general application and applies then also to all cases concerning
any right related to intellectual property, provides that the judicial authorities, when deciding on a
                                                     
9 Reference is made to Italy's response to ques tion 5 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 12
case pending before them, shall order the unsuccessful party to refund the expenses incurred by the
other party and assess the amount of such expenses together with attorney's fees. (See Italy's
answer to question 5 of the Checklist of Issues on Enforcement.10)
20. Article 46 requires that judges be authorized to order, in certain circumstances, other
remedies, including disposal of goods outside commercial channels or destruction of goods anddestruction of materials and implements the predominant use of which is the creation ofinfringing goods.  IP/N/6/ITA/1 refers to this remedy only in connection with copyrights andtrademarks.  Please describe the additional remedies available under the laws of Italy inconnection with other forms of intellectual property, the circumstances in which suchauthority will be exercised, the factors considered in determining the nature of the remediesprovided, and cite the legal authorities providing for such remedies.  If these remedies are notavailable in connection with other forms of intellectual property, please explain in whatmanner the law of Italy conforms with Article 44.1 of the TRIPS Agreement.
The disposal of goods outside commercial channels and their destruction are provided for not
only with regard to copyright and trademarks,
11 but also to contents and industrial models for which it
has been established that properties being the subject of infringement of rights are assigned to theowner of the patent (Article 85 R.D.1127/39 and Articl e 1 R.D.1411/40).  This is also the case for the
layout-designs of semiconductor products (Article 20 L.70/89).
All this causes the same effects of the destruction of goods or of their disposal outside
commercial channels.  As regards the unlawful use of geographical indications and of confidential
information, they are protected from the point of view of unfair competition (Article 6 bis
R.D.1127/39 and Article 31 D.lgv.198/ 96) as per Articles 2598 c.c. et seq .  In particular, Article 2599
c.c. provides that the judgement ascertaining unfair competition, prohibits its continuation and
provides for adequate measures in order to eliminate the effects of it:  measures which can provide for
the destruction of what constitutes counterfeit.
21. Article 48.2 permits WTO Members to exempt public authorities and officials from
liability from remedies only where their actions were taken or intended in good faith incarrying out their responsibilities under the law.  Please explain any exemption providedpublic authorities and officials from liability for abuse of enforcement procedures, describe thecircumstances in which such limitations would not apply, and cite the legal authoritiesgranting such exemptions.
Italian legislation does not provide for the exceptions pursuant to Article 48.2 of the TRIPS
Agreement.  Public Administration and public officials are responsible towards third parties for the
damages they have caused (Article 28 Italian Constitution).
Provisional measures
22. Article 50.1 requires that judicial authorities have the authority to order prompt and
effective provisional remedies to prevent an infringement of any intellectual property right.IP/N/6/ITA/1 indicates that provisional measures are available only in connection withcopyrights, trademarks, and patents.  With respect to other intellectual property rightsidentified in Article 1.2 of the TRIPS Agreement, please identify the provisional measuresavailable to protect intellectual property rights and cite the relevant legal authority
                                                     
10 Document IP/N/6/ITA/1.
11 Reference is made to Italy's response to ques tion 5 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 13
establishing those provisional remedies.  If such remedies are not available, please explain in
what manner the law of Italy conforms with Article 44.1 of the TRIPS Agreement.
Urgent measures shall apply, beside the cases already mentioned relating to trademarks,
patents and copyright12 also to industrial designs and models (Article 1 R.D.1411/40 referring to the
application of provisions concerning patents) and to lay-out designs of semiconductor products
(Article 21 L.70/89).  As regards geographical indications and the protection of confidential
information Article 700 c.p.c. shall apply (see the answer to question 5).
23. Article 50.1 requires that judicial authorities have the authority to order prompt and
effective provisional remedies to preserve relevant evidence in regard to an allegedinfringement.  Please identify the provisional measures available to preserve relevant evidencein regard to an alleged infringement.  Please cite the relevant legal authority establishing thoseprovisional remedies.
Articles 692 c.p.c et seq . provide that before the beginning of a case, if there is urgency to
verify the state of the places or the quality or conditions of things, an expert evidence or a judicial
inspection can be requested, as well as the examination of witnesses.
In such case, the competent judge fixes a hearing for the appearance of the parties and, after
having acquired summary information, he can admit evidence.
As regards trademarks, patents, industrial models and designs and copyright, an urgent
procedure of description (see the answer to question 5), establishing in advance the proofs of the
occurred counterfeit through their documentation (for instance photographs) is provided for.
24. Articles 50.2 requires Members to authorize judicial authorities to adopt provisional
measures inaudita altera parte .  IP/N/6/ITA/1 indicates that such authorization applies only to
copyright.  With respect to other  intellectual property rights identified in Article 1.2 of theTRIPS Agreement, please describe briefly the circumstances in which the judicial andadministrative authorities are empowered to adopt provisional measures inaudita altera parte
and cite the relevant legal authority.  If such procedures are not available, please explain inwhat manner the law of Italy conforms with Article 44.1 of the TRIPS Agreement.
This question has already been answered.
13  It follows that Article 669 sexies  c.p.c., regarding
urgent measures of a general character and applying them to all cases, including those regarding any
right related to intellectual property, provides that "when the summoning of the counterpart could
prejudice the enforcement of said measure, the judge shall decide by a decree stating the reasons
thereof after acquiring summary information, if necessary.   In such case, he fixes, by the samedecree, the hearing of appearance of the parties before him within a time-limit not exceeding 15 days
assigning to the applicant a mandatory time-limit not exceeding eight days for the service of the
appeal or of the decree.  During said hearing the judge, by an order, confirms, modifies or revokes the
measures issued by a decree".
25. Article 50.2 requires that judicial authorities be authorized to grant provisional
remedies when a delay is likely to cause "irreparable harm" to the right holder.  Please
                                                     
12 Reference is made to Italy's response to question 10 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).
13 Reference is made to Italy's response to question 11 of the Checklist of Issues on Enforcement
(document IP/N/6/ITA/1).IP/Q4/ITA/1
Page 14
describe briefly what is required under the law of Italy to establish "irreparable harm" to the
right holder.
The irreparable harm and the risk of evidence being destroyed as per Article 50.2 of the
TRIPS Agreement jeopardize the enforcement of the measure set forth in Article 669 sexies  c.p.c.
referred to in the said Article and justify the lack of summoning.
The irreparable harm takes place when, because of the long duration of the trial on the merits,
some circumstances occur not allowing realization and enjoyment of the right at the end of the
proceeding, as is the case of destruction of goods (Article 700 c.p.c.).  The same occurs as regards
destruction of evidence.
26. Article 50.2 also requires that judicial authorities be authorized to grant provisional
remedies when there is a "demonstrable risk of evidence being destroyed".  Please describebriefly what factors are considered by the competent authorities in determining when there isa "demonstrable risk of evidence being destroyed".
Please see the answer to question 25.
27. Article 50.3 requires that judicial authorities be authorized to require an applicant to
provide evidence to establish with a sufficient degree of certainty that the applicant is the right
holder and that infringement has occurred or is imminent.  With respect to each intellectualproperty right defined in Article 1.2 of the TRIPS Agreement, please describe the evidencerequired by right holders to establish ownership.
The plaintiff must provide elements as to the facts and as to the law on which his application
is based and indicate more specific evidence supporting them.
The judge carries out a summary investigation to ascertain the existence of the conditions for
the urgent measure to be issued (Article 669 sexies  c.p.c.).  The judge must ascertain from time to
time at the end of the investigation the existence of elements which make the existence of the relevant
right sufficiently proved and at least possible.
28. Article 50.3 requires that judicial authorities be authorized to provide a security or
equivalent assurance to protect the defendant.  With respect to each intellectual property rightidentified in Article 1.2 of the TRIPS Agreement, please cite the legal authority establishing asecurity or equivalent assurance.
An urgent measure can order the applicant to pay a bond for the compensation of damages, if
any (Article 669 undecies  c.p.c.).
29. Article 50.4 requires that defendants be afforded a review process to determine
whether provisional measures should be modified, confirmed, or revoked.  Please describebriefly the procedures a defendant must follow to initiate review proceedings and identify theperiod within which such proceedings must be initiated.
Article 669 terdecies  c.p.c. provides that against said urgent measure a claim to the competent
judge who decides within 20 days from the filing of the appeal can be filed.
At all events, the urgent measure is no more effective if in the decision delivered at the end of
the trial on the merits the right of the plaintiff is not recognized.IP/Q4/ITA/1
Page 15
30. Article 50.5 requires that competent authorities be authorized to require applicants to
supply other information necessary for the identification of goods concerned by the authoritythat will execute the provisional measures.  Please describe briefly what other information maybe required by the authorities and cite the legal authority establishing the basis for thissupplemental information.
Under Article 50.5 of the TRIPS Agreement, national legislation has the possibility to provide
that the applicant has to supply other information necessary for the identification of the goods subjectto provisional measures.
This informally happens in Italy because goods must be searched by those who carry out the
judicial execution wherever said goods are and this is a question of mere information of extra-legal
character.
31. Articles 50.6 provides that if proceedings leading to a decision on the merits is not
initiated within a reasonable time, provisional remedies granted by competent authorities willbe revoked or otherwise cease to have effect, at the request of the defendant.  Please identifythe relevant provisions in Italy’s law authorizing the revocation or cessation of provisionalmeasures if review proceedings are not initiated within a reasonable time and specify whatconstitutes a "reasonable time period" to initiate proceedings.
Article 669 nonies  c.p.c., provides that if the trial on the merits has not begun within the time-
limit provided for in the urgent measure (which is of 30 calendar days maximum), said measure
becomes ineffective.
32. Article 50.7 provides that judicial authorities shall have the authority to order the
applicant to provide the defendant appropriate compensation for any injury caused by theadoption of provisional measures when said measures are revoked, have lapsed, or when it hasbeen determined that there has been no infringement or threat of infringement.  Pleasedescribe how the competent authorities determine "appropriate compensation".
The judicial authority deciding on the merits or at all events the first instance court competent
with regard to the amount involved  (Article 2043 c.c.), is competent to order to pay damages in case
of ineffectiveness or revocation of the measure.
Special requirements related to border measures
33. Article 52 of the TRIPS Agreement requires that rights holders wishing to stop
importation of counterfeit trademarked goods or pirated copyrighted works present evidenceto the competent authorities that there is prima facie  infringement of their trademark or
copyright.  Please explain what evidence will constitute prima facie  infringement in Italy.
In this case, the evidence that must be submitted to the organization empowered to receive
requests for the customs authorities to take action must contain, in respect of the counterfeitedproducts, a description of the infringed trademark (pursuant to Article 1 of Regulation 28.IV.1992)
together with all the documentation proving ownership of the original trade mark.
Prima facie  in the Latin language stands for "first appearance":  this means that counterfeiting
must appear then in existence from a summary and not in-depth examination of goods and works.Therefore, any proof supplying said appearance is appropriate for that aim.IP/Q4/ITA/1
Page 16
34. Article 52 also requires that the right holder provide a "sufficiently detailed description
of the goods" to be stopped.  Please explain what is required of the right holder in Italy for adescription to be "sufficiently detailed".
The person requesting the special control procedure must submit a copy of the drawing of the
registered trademark and/or the right infringed, together with a description of the original productintended for protection, together with photographs of it, if any, and information on the commercial
name of the product at issue.
35. Article 53.2 provides that the owner, importer, or consignee of goods involving
industrial designs, patents, layout-designs or undisclosed information that have beensuspended by customs authorities should be able, in certain circumstances, to have such goodsreleased on payment of security sufficient to protect the right holder from infringement.Please identify what forms of intellectual property, if any, are subject to provisions ofArticle 53.2 and cite to the relevant provisions of law or regulations.
As far as industrial models and designs are concerned, the provisions pursuant to
Article 7.2 EC Regulation No. 3295/94, concerning the possibility of putting properties into
circulation under payment of a bail on certain conditions are applicable.
36. Article 57 requires that the competent authorities be able to authorize the right holder
to inspect the detained goods in order to substantiate the claims.  Please explain how rightholders are provided an opportunity to inspect suspect goods that have been detained bycustoms authorities.
The true owner may request the Court sitting to take cognizance in relation to goods for
which the customs formalities have been suspended to order a technical opinion on the goods
themselves to be carried out by experts on that particular sector.
37. Article 57 also provides that, where the decision on the merits favours the right holder,
the competent authorities also may be given authority to give the right holder informationregarding the importer, consignee or consignor.  If competent authorities in Italy can provideinformation regarding the importer, consignee or consignor to the right holder, please explainhow information regarding names and addresses of consignors, importers and consignees andquantities of goods are provided to the applicant after a positive decision of infringement is
made, e.g. authorities automatically providing information or by submission of a written
request from the right holder, etc.  Please cite to the law or regulations providing suchauthority.
Information on the importer, the addressee and the sender of the counterfeit goods and/or
goods infringing intellectual property rights is supplied, pursuant to Articles 6(1) and 8(3) of
EC Regulation No. 3295/94 to any party requesting action to be taken and to the person declaring the
goods under challenge, in compliance with the requirements of commercial secrecy and
confidentiality on the part of the officials involved.
Criminal procedures
38. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least
for wilful trademark counterfeiting and copyright piracy.  Please explain how the penaltiesprovided under the laws of Italy comply with that obligation.IP/Q4/ITA/1
Page 17
Under the TRIPS Agreement, imprisonment and/or monetary fines must be "sufficient to
provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding
gravity".
As far as copyright is concerned, Italian legislation (Article 171 Copyright Law) provides that
unlawful copy, distribution, introducing into the State and representation of works etc. are punishedwith a term of imprisonment from three months to three years.
As far as other intellectual property rights are concerned, Article 473 of the Penal Code
provides that any person who counterfeits, alters or makes use of patents and industrial models as well
as of distinctive signs of intellectual works or industrial products, shall be punished with a term of
imprisonment not exceeding three years and a fine not exceeding Lit 4 000 000.
Under Article 474 c.p.c. any person who commits su ch offences as introducing into the State,
holding for sale, commercially distributing or circulating intellectual works or industrial products
bearing counterfeited or altered marks shall be punished with a term of imprisonment not exceeding
two years and a fine not exceeding Lit 4 000 000.
Said penalties correspond to those applied to theft (Article 624 p.c.), cheating
(Article 640 p.c.), and fraud in data processing (Article 640 ter p.c.) which are crimes of a
corresponding gravity as provided for in the Penal Code under the TRIPS Agreement.
Besides, other crimes are applicable as concerns the infringement of intellectual property
rights: counterfeiting of works amounts to fraud in  the conduct of commerce (Article 515 p.c.: a term
of imprisonment not exceeding two years and a fine); sale of industrial products with deceptive signs
(Article 517 p.c.:  a term of imprisonment not exceeding one year); receiving (Article 648 p.c.: a term
of imprisonment from two to eight years).  If the conditions provided for by law are met, there can be
a crime of association for purposes of delinquency (Article 416 p.c.: term of imprisonment from threeto seven years).
Besides, any person who offers for sale or ot herwise places in circulation, industrial products
with counterfeit or altered names, thereby causing injury to national industry, is punished with a term
of imprisonment not exceeding five years and a fine not less than Lit 1 000 000 (Article 514 p.c.).
Penalties as per Articles 468, 469 and 470 p.c. are finally applicable to copyright for
counterfeiting the seals designed to be affixed by the Italian Society for Authors and Publishers on
works certifying the compliance with the provisions concerning copyright as well as for the purchase
and sale of said works without seal (term of imprisonment from one to five years and a fine from
Lit 200 000 to Lit 2 000 000).
[Follow-up questions from the US]
1. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, inte grated circuit layout-design and trade secret
enforcement for each of the years 1996 and 1997, including the number of cases filed;
injunctions issued; infringing products seized; infringing equipment seized; cases resolved
(including settlement); and the amount of damages awarded.
Article 63.3 of the TRIPS Agreement provides that each Member shall supply information of
the sort referred to in paragraph 1 above (laws and regulations, judicial decisions and administrativerulings).  Statistical information is not included.
At all events, in Italy statistical data referring to the years 1996 and 1997 are not yet available.IP/Q4/ITA/1
Page 18
Besides, statistical surveys that have been carried out in past years, refer only partly to the
issues requested in this question.
2. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1996 and 1997, including the
number of raids, prosecutions, convictions and the amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that your criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
See the answer to follow-up question 1.
3. The United States Government has received  reports that civil copyright infringement
cases require on average approximately three years, and up to six years in some cases, to be
resolved In light of these reports, please explain how Italy is in compliance with the obligations
of Article 41 regarding "expeditious" civil remedies without "unwarranted delays".
The Italian Government does not know the data mentioned in this question and as the source
is not mentioned, control of the reliability of the data is not possible.  Said data are not, at all events,
significant.  It is not, in fact, specified if they refer to the whole duration of proceedings, for which in
Italy there are three instances, (first instance Court, Appellate Court and Court of Cassation), or only
to a single instance.  In addition, the kind of case and the subject-matter thereof are not specified(patents, trademarks, copyright) and there are not territorial indications of the Courts of first instance
which have issued the decision.
In any case, it has to be underlined that according to the Italian judicial civil system, first
instance judgements are immediately enforceable.  It follows that the owner of the copyright has notto wait for the conclusion of the proceeding (for which, as it has already been said, there may be three
instances)  but he can obtain the concrete protection of his own right through the enforcement
proceeding at the end of the first instance proceedin g, which usually concludes in much shorter time-
limits than those indicated in this question from the United States.  In addition to this, in almost all
cases concerning intellectual property provisional measures issued by the judge in a very short time(of a few days and sometimes of hours), and which ensure a protection in advance of the right
involved, are requested.
In conclusion, in the Italian judicial system no "unwarranted delays" happen.
4. Please confirm whether Article 2043 of the Italian Civil Code permits the recovery of
profits of the infringer as a civil damages remedy, and, if so, whether such remedy is alternative
or cumulative to other remedies.
Article 2043 c.c. provides that damages are related both to resulting damage and the loss of
gain.  The latter, which is the loss of gain by the owner of the copyright, corresponds to the gain
carried out by the infringer of said rights and therefore this gain constitutes the loss of gain awarded tothe owner of said right.
5. The United States Government has received reports that prosecutors in Italy often fail
to initiate prosecutions promptly after raids and that criminal prosecutions often take two to
three years to be concluded.  In light of th ese reports, please explain how Italy fulfils its
obligation to provide criminal remedies against commercial piracy that are "expeditious" and
without "unwarranted delays".IP/Q4/ITA/1
Page 19
The Italian government does not know the data referred to in this question and as the source is
not mentioned, control of the reliability of the data  is not possible.  See the answer to follow-up
question 3.  According to the Italian criminal system , prosecution is compulsory and must be carried
out for any notice of offence including those offences concerning intellectual property.  Usually
prosecution is initiated immediately except for some cases due to the number of offences to be
prosecuted by each single public prosecutor.
Our legal system, besides, ensures the prosecution of all offences and consequently of all
offences concerning intellectual property rights differently from other systems according to which
criminal action is optional and consequently the public prosecutor can choose which offence to
prosecute by not bringing a criminal action against others.
Said system may ensure quicker criminal protection but in so doing it does not prosecute all
offences.  In so doing, it often ensures the prosecution of only a minimum percentage of offences and
after all it seems to offer a minor protection to the community.
As regards the duration of proceedings, it can vary from case to case.  The proceeding
indicated in the answer to follow-up question 7, fo r instance, has been decided in two months (the
crime was committed on 16 September 1996; the decision was taken on 26 November 1996).
However, it is to be pointed out that, in general, immediate effects already occur during the
proceeding as it happens in the case of seizure of goods, preventive imprisonment or application of
other precautionary measures against the defendant.  In addition, the effectiveness of criminal
suppression does not arise as much from the very short time employed to conclude proceedings outfrom the actual ability to detect offences and to prosecute them.  The deterrent effect of criminal
punishment is in fact represented by the high probability for the offender to be detected and
prosecuted.  It is of minor importance if the final sentence is imposed six months before or after.
Italian legislation seems then to completely fulfil the obligations of this treaty.
6. Under Italian law the fines for criminal copyright infringement range from Lit 500 000
to Lit 6 000 000 (US $288 to $3 500) and the potential prison sentences range from three months
up to three years, reportedly among the lowest fines and sentences in Europe.  In addition, the
United States Government has received reports that indicate that sentences actually imposedare usually quite low.  In light of these criminal remedies and these reports, please explain how
Italy fulfils the obligations in Articles 41 and 61 to provide penalties "sufficient to provide a
deterrent."
We report what has already been said in the answer to question 38.  The basic principle
concerning this subject-matter is provided for in Article 61 of the TRIPS Agreement according to
which imprisonment and/or monetary fines must be "sufficient to provide a deterrent, consistently
with the level of penalties applied for crimes of a corresponding gravity".
This means that the suitability of the system of sanctions has to be assessed according to the
criminal system of each country and not according to external assessments.  No country can impose
its own criterion of assessment to another country in this field.
Who can say and according to which criterion that the suitable punishment is of four years
instead of three years?  A county which still applies corporal punishments could equally consider
imprisonment as not being a suitable punishment and request our instance the application of lashing
and the cutting of an organ.  The criminal judicial system of each country is the result of its history,culture and traditions and as such it has to be respected.IP/Q4/ITA/1
Page 20
We need also to underline that the complexity of assessment concerning the suitability of
penalties entails both the accessory and alternative measures and it can not be therefore carried out
separately from the assessment of the criminal system in its entirety.  Said assessment could be carried
out only by experts in criminal matters and not by experts in intellectual property rights.
In the answer to question 38, it has been pr oved that the penalties applied for offences
concerning intellectual property are the same as those applied for crimes of a corresponding gravity
according to the Italian criminal system and under Article 61 of the TRIPS Agreement.  In our
opinion it is not necessary to add anything else.
As concerns the reports concerning low penalties imposed by judges it is to be pointed out
that in democratic countries the power of the gove rnment is detached from the judicial one and the
government cannot influence judges or impose its own directives to the judicial authority, which canfreely establish case by case the extent of the penalty.
7. The Unites States government has received reports that Italian courts have ruled that
unauthorized, widespread copying by business of computer software for end-use does not satisfy
the "commercial purposes" requirements of Article 171 bis of the Copyright Statute for criminal
copyright infringement.  Please indicate whether this is the case, and, if so, how this
interpretation of Article 171 bis complies with Article 61 regarding effective criminal
enforcement.
The question refers to an isolated decision issued by a judge of a small Italian town.  Said
decision is not so significant because:
(a) it may be amended by the Appellate Court;(b) other first instance Courts may decide differently because in the Italian legal system
judicial precedents are not binding:
(c) should this issue be brought before the Court of Cassation a legal principle opposed
to that provided for in the judgment in question might be issued.
IV. REPLIES TO QUESTIONS POSED BY NEW ZEALAND
1. There is no response to question 9 of the Checklist of Issues on Enforcement
14 on
administrative procedures and remedies.  We would be grateful if Italy could complete thispart of the checklist for enforcement of protection of wine geographical indications.
Question 9 of the Checklist has not been answered because the protection of intellectual
property is almost exclusively provided for through jurisdictional proceedings and there are no
significant administrative procedures regarding said protection.
2. With reference to Italy's response to qu estion 15 of the Checklist of Issues on
Enforcement,
14 we would be grateful if Italy could confirm whether or not prohibition on
release into free circulation by the Customs authorities applies to wine bearing misleadinggeographical indications.
For all aspects connected with action taken by the authorities responsible for permitting the
marketing of particular commodities whenever infringements of intellectual property law are found,
                                                     
14 Document IP/N/6/ITA/1.IP/Q4/ITA/1
Page 21
we refer to section 8 of Legislative Decree 198/96 which lays down the procedures relating to the
seizure of goods.  The same section refers to the Code of Civil Procedure for the pre-emptive or
precautionary measures.
3. With reference to Italy's response to qu estion 21 of the Checklist of Issues on
Enforcement,15 we would be grateful if Italy could clarify whether any of the provisions listed
in this reply apply criminal procedures and penalties relating to misleading wine geographicalindications.
Penalties as per the reply to question 21 of the Checklist shall apply to geographical
indications if they are protected as trademarks.  On the contrary, Articles 514 and 517 c.p. shall apply.
Besides, the geographical names used for wines are governed by the provisions of Law 164/92 which
enacted "new rules governing the denomination of or igin of wines".  More specifically, Chapter X
created a special system of penalties for infringements regarding the use of denominations of origin
and typical geographical names of Italian wines.  It is to these provisions that reference must be made
when discussing any misleading uses of geographica l names to designate wines, without prejudice to
the general rules governing food labelling, which also indicate the cases in which legal action can be
taken in respect of untrue information, which includes the use of trademarks containing geographicalnames likely to mislead the consumer regarding the origin of the product
__________
                                                     
15 Document IP/N/6/ITA/1.