Intellectual Property

Intellectual Property rights (IPrs) are day-by-day at risk and protecting clients is vital to the current and future development of industries and artists. The reflection of key brands, trade marks, company names, trade secrets, designs and models, patents, domain names and copyrights involves more than just registering an IPr. FASANO is an emerging IP firm in the worldwide scenario, confirmed by listing and appointing its naming and managing partner by Milan Court as arbitrator and expert for “trade marks, domains and advertising”, by Czech Arbitration Court for “.eu” domain names disputes resolution and by the Italian Registry of country code Top Level Domain “.it”. Mr. Pierfrancesco C. Fasano is regularly invited in EU and overseas as lecturer at IP training courses (accredited by the Bar) for Trademark and Patent Attorneys or Attorneys-at-Law.

TRADEMARKS

FASANO encourages its clients with filing registration applications, after a priority search, as well as with registration and operation of their trade marks in Italy, in the EU and worldwide. FASANO assists its clients both in civil and criminal proceedings, and in such instances, cooperates with customs authorities in the fight against counterfeiting. FASANO also advises and assists its clients with the protection of its trade mark rights on the Internet in litigation proceedings in Court and online proceedings for dispute resolution (UDRP) set up by the World Intellectual Property Organization (WIPO).

See representative case: Vasco International SA vs Antonio Nadal SL – F&G Compagnia di Commercio srl

PATENTS

FASANO assists its clients to negotiate and draw up licence agreements, patent co-ownership rules in connection with invention remuneration issues, with the acquisition and management of know-how, with regard to community exemption regulations in the scientific, pharmaceutical, automobile, food industry sectors. FASANO assists its clients with the defence and protection of their patents and know-how, in connection with infringement proceedings or patent claims in particular, acting closely with Italian and European Patent attorneys.

DESIGNS AND MODELS

Community and International design registrations are becoming ever more attractive. FASANO has been actively involved in these developments and have worked in various expert and advisory circles to actively support and further them. FASANO has gained a particular reputation for its efficient action against counterfeits and slavish imitations of design products. Due to our network and all major European jurisdictions, we target infringements both in the country of origin and in the distribution markets. For this purpose, we have built a close working relationship with customs authorities, public prosecution and civil courts alike. This network of co-operation allows us to stop infringements at an early point in time and often prevent major damage to our clients’ interests.

INDUSTRIAL AND TRADE SECRETS (KNOW-HOW)

Issues relating to industrial and trade secrets frequently arise in connection with technical and scientific know-how, sensitive product, business and market information and business methods. We have experience of the technical complexities associated with confidentiality cases and transactions in technical and scientific contexts. Thanks to the implementation of EU Directive (2016/943) FASANO created a tailored made compliance program dedicated to protect and validate measures aiming to safeguarde the existence of trade secrets inside businesses’ clients to the extent to exercise the right to know-how before the IP Judges over EU countries.  

ADVERTISING

FASANO advises its clients in connection either with planning and organizing their advertising, marketing and communication operations, either with the creation of foundations for cultural purposes, the endorsement of advertising campaigns, the organization of events, with setting up partnerships, sponsoring contracts with celebrities or public personalities, creating and managing information or promotion campaigns. FASANO assists its clients with litigations involving the defence and protection of their promotion, communication and advertising policy, in connection with infringement proceedings or infringement of the right of personal portrayal. FASANO assists companies in validating their advertising campaigns by verifying the compliance of such campaigns with the legal framework on misleading and comparative advertising and fair competition. FASANO also evaluates the conformity of rival advertising campaigns. Other services involve administrative procedures to protect ideas, advertising creations and pay-off by registering them with the Advertising Self-disciplinary Institute (IAP) located in Milan. FASANO assists with protection in proceedings before the Antitrust Authority and the Advertising Self-disciplinary Jury for infringements of norms regulating advertising activities (Advertising Selfdisciplinary Code-CAP).

DOMAIN NAMES

IPrs are at risk on the Internet and protecting clients’ online presence is vital to the current and future development of brands. The reflection of key brands, trade marks and company names online involves more than just registering a domain name. There are an increasing number of country code Top Level Domains (ccTLDs) available, each providing the registrant with a global reach. Constantly changing registration requirements in ccTLD registries, coupled with the many and varied dispute resolution procedures, make the effective management of brands online increasingly challenging. Working in close liaison with our worldwide network of offices, FASANO’s IP litigation consists of arranging and handling precautionary claims against hypothetical abusive registrations of domain names and involves managing matters of unfair competition and IP infringements. Judicial assistance is also available in foreign jurisdictions. FASANO represents and assists clients in arbitration and mediation procedures set by the WIPO that can be started claiming for domain names abuses. The administrative assistance on domain names in the country code “.it” views FASANO as one of the co-founder of MFSD, an IP Disputes Resolution Centre accredited by Italian Registry to deal with so called .it domains re-assignment procedures, approved by ICANN (Internet Corporation for Assigned Numbers and Names) as Uniform Rapid Suspension System (URS) for new generic Top Level Domains and authorized by Italian Ministry of Justice to administer IP mediations.

See representative case: Finmeccanica S.p.A. vs Moniker Privacy Services /Guillermo Lozada.

UNFAIR COMPETITION

FASANO acts in all areas of passing off/unfair competition law, which relates to unfair and misleading advertisements including comparative advertising. FASANO has a thorough understanding of the issues arising from the applicable national laws and the interplay with patent law, trade mark law and competition/antitrust law. FASANO is experienced in unfair competition litigation both on the national and multijurisdictional level.

See representative case (data protected – Italian language – injunction order with right of publication): XY vs YZ

COPYRIGHT

FASANO has particular experience in managing and protecting softwares, comics and virtual animations, literary works, broadcasting and sports image rights; FASANO provides consulting to national and International Film Production Companies and to show-business and sport celebrities. Italian Social Security Agency for Entertainment and Professional Sport Workers (ENPALS) listed Pierfrancesco C. Fasano as recommended litigation lawyer.

TRANSACTIONS

FASANO provides essential knowledge and services as intellectual property issues, which increasingly drive many of today’s transactions. Clients depend on FASANO for transactional-related issues including: freedom-to-operate issues, licensing agreements, sale and acquisition issues, R&D agreements, confidentiality agreements, software agreements, assignments. The International Trade and Investments Practice draws from FASANO’s IP, Labour, Corporate and Tax practices to provide due diligence and opinions related to licensing, disposition and acquisition issues surrounding IPrs.

LITIGATION

Our IP Litigation Practice is national in scope and includes cases in IP Section Courts throughout Italy and European Union. We handle a significant number of matters before extra-EU Courts. We enforce and defend IP litigation matters, and advise our clients on other types of high-technology legal concerns, such as: patent, trade secret, copyright, and trademark cases; patent infringement and strategies for patent enforcement campaigns; unfair-competition and antitrust issues related to patent enforcement; IP crisis management and related issues regarding employee mobility. The IP Pratice Group assists Italian and International clients in all legal aspects connected to IPrs protection either in relation to ordinary and urgent judicial protection before ordinary courts and before Italian and International arbitration courts, either in relation to extra-judicial assistance. FASANO often receives requests for assistance with investigations, monitoring, and preventive measures concerning IPrs protection, and also with national and international anti-piracy legislation issues, trademarks and patents counterfeiting, breach of license contracts, unfair competition practices, and the so called domain grabbing.

Attorney: Ivett Paulovics