WORLD TRADE 
ORGANIZATION 
Council for 1rrade-Related Aspects 
of Intellectual Jlroperty Rights IJl~/I/I1r~/I/l 
17 July 1996 
(96-2806) 
Original: English! 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
The present document reproduces 1 Legislative Decree No. 198 of 19 March 1996 concerning 
provisions for making national legislation in respect of industrial property conform to the mandatory 
provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights -Uruguay Round, 
as notified by Italy under Article 63.2 of the Agreement (see document IP/N/l/ITA/I). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES 
A LA PROPRIETE INTELLECTUELLE NOTIFIEES 
AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
Le present document contient le texte du Decret-loi n° 198 du 19 mars 19961, relatif aux 
dispositions visant a rendre la legislation nationale sur la propriete industrielle conforme aux dispositions 
imperatives de l' Accord du Cycle d'Uruguay sur les aspects des droits de propriete intellectuelle qui 
touchent au commerce, notifie par l'Italie au titre de I'article 63:2 de l' Accord (voir le document 
IP/NIVITA/I). 
Consejo de los Aspectos de los Derechos de hopiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PA.RRAFO 2 DEL ARTICULO 63 DEL ACUERDO 
En el presente documento se reproducel el Decreto Legislativo N° 198, de 19 de marzo de 1996, 
relativo alas disposiciones mediante las cuales la legislaci6n nacional sobre propiedad industrial se 
pone en conformidad con las disposiciones imperativas del Acuerdo de la Ronda Uruguay sobre los 
Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio, notificado por Italia 
en virtud del parrafo 2 del articulo 63 del Acuerdo (vease el documento IP/N/l/ITA/I). 
lIn English only/en anglais seulementlen ingles solamente. IP IN 11 lIT A/Ill 
Page 2 
LEGISLATIVE DECREE no. 198 of 19 March 1996 
Provisions for making national legislation in respect of industrial property conform to 
the mandatory provisions of the agreenlent on trade-related 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 trade-related 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 agreen1ent 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 
L 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 traden1ark shall consist in the faculty to 
make exclusive use of the traden1ark. The owner shall have the right to prevent all third 
parties not having his consent fron1 using: 
a) signs identical with the trademark for products or seIVices which are identical with 
those in respect of which the trademark was registered; IP/N/l/ITA/I/l 
Page 3 
b) signs identical or sin1ilar to the registered trademark for products or seIVices 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 seIVices, 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 seIVices which 
are not similar, where the registered trademark is well-known 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 seIVices 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 seIVices mentioned therein as 
well as similar products or seIVices, 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 seIVices manufactured, put on the market or lent by others, for 
identical or sin1ilar products or seIVices, where on account of the identity or similarity 
between the signs and of the identity or similarity between the products or seIVices 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 well-known 
if, pursuant to article 6bis of the Paris Convention (Stockholm text, July 1967), it is well­
known 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 emblen1 adopted by others, where on account of the identity or similarity IP/N/I/ITA/VI 
Page 4 
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 hvo years, or for three years in the case of a collective trademark, or which may be 
considered to be cancelled on account of non-use, 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 well-known in the European Economic Community, 
in the case of a conlnlunity 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 sinlilar to a trademark which is already well-known 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 registcred tradcmarks, 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 \vho do not have, in the 
State's territory, the undertakings from which the products or services originate that are 
distinguished by the said trademark n1ay be granted on a reciprocal basis, i.e. if the 
applicants' States grant the sanlC treatment to Italian nationals. IP/N/I/ITA/VI 
Page 5 
2. Nationals of the States which ratified and enforced the Agreement on trade-related 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 intenlational 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 charcter 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 
hinlself 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 58-bis. -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 infom1ation acquired by questioning the opposing pflrty. 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 nleasures 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 he substituted the following: 
(Article 61. -1. The right holder of a registered trademark, or of a tradenlark whose 
registration is pending, n1ay request that description or seizure be ordered of all or some of IP/N/l/ITA/Ifl 
Page 6 
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 
infonnation. ' 
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 n1ay 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 renledy. The provisions of articles 669-octies, 669-novies, 669-undecies and 675 of 
the Code of Civil Procedure shall apply to description as well. 
5. After the tenn as per article 675 of the Code of Civil Procedure has elapsed, description 
and seizure n1ay be conlpleted 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 nlcrits. 
6. Description and seizure may concern goods belonging to subjects \\'ho 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 whon1 the said measures were ordered and that such 
goods are not intended for personal use. The record of the seizure and description perforn1ed, 
along \vith the con1plaint 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 tradeI11ark, or of a trademark whose 
registration is pending, may request judicial authorities to issue an injunction prohibiting the IP/N/I/ITA/IIl 
Page 7 
nlanufacture, 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 deternline a sum to be paid 
in case of infringement or non-compliance as well as of a delay in implementing the 
provision. ' 
Chapter H 
AMENDMENTS TO LAW No. 164 OF 10 FEBRUARY 1992 
CONCERNING PROVISIONS ON GEOGRAPHICAL INDICATIONS FOR WINES 
Article 10 
1. The follo\ving paragraph shall be added to article 24 of Law no. 164 of 10 February 
1992: 
'4-bis. 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 detennine the practical conditions under which, by 
means of suitable differentiating elements, the producers concerned may be ensured an 
equitable treatment and consumers are not nlisled.' 
Chapter IH 
AMENDMENTS TO "ROYAL DECREE No. 1411 OF25 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 nlay be paid in yearly instalments.' 
2. For itenl 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 sunl is paid at one time, Lit. 1,OOO~OOO; 
c) for the granting of the patent, if the whole sum is paid by three instalments,: 
a) Lit. 500,000, for the first five-year period; 
b) Lit. 600,000, for the second five-year period; IP/N/lIITA/I/l 
Page 8 
c) Lit. 1,000,000 for the third five-year 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 \vhole 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 five-year period; 
2) Lit 1,000,000 for the second five-year period; 
3) Lit 1,500,000 for the third five-year 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 Decenlber 1995: 
'6-bis. When an application is filed for a patent relating to a textile design, the licensing fee 
Dlust be paid, being equivalent to the first yearly instalment; the subsequent yearly payments 
must be made \vithin 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 nlonths.' 
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 1-bis. -1. In particular, a patent shall confer the following exclusive rights on its 
owner: 
a) where the subject nlatter of a patent is a product, to prevent third parties not having 
his consent from nlaking, using, putting on the nlarket, 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 fronl using, putting on the market, selling or 
importing for these purposes the product obtained directly by that process.' Article 13 IP/N/l/ITA/Ifl 
Page 9 
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 \vith 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; 
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. 
2. 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 6-bis -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 conlmercial value because it is secret; 
c) is subject to reasonable steps under the circumstances, by the persons lawfully in 
control of such infomlation, 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, phaffilaceutical 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. IP/N/l/ITA/Ifl 
Page 10 
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 \Vorld 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 fron1 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 in1plement the 
patented invention, either directly or through one or n10re licensees, thereby producing in the 
State's territory or importing goods produced in a ll1ember State of the European Union 
and/or of the World Trade Organisation, or else implen1ented such invention to a 
disproportionate extent as con1pared with the State's needs, a mandatory licence may be 
granted for the non-exclusive use of that invention in favour of any person applying therefor. 
2. The mandatory licence as per paragraph 1 n1ay also be granted: 
a) where the implen1entation 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. \Vithout prejudice to the provisions of paragraph 5 of article 54-bis, such licence shall 
be non-assignable unless with the assignment of the patent relating to the subsequent 
invention. The owner of the patent relating to the first invention shall be entitled, in his turn, 
to a cross-licence on reasonable temlS to use the patent relating to the subsequent invention. 
3. Any person filing an application for a mandatory licence as per the preceding paragraphs 
shall have to prove that he made prior efforts to obtain authorization from the owner of the 
patent and that he was unable to obtain such authorization on reasonable terms and 
conditions. 
4. The provisions of this article shall not apply to patented inventions belonging to the Armed 
Services and to those which are kept secret pursuant to article 41 of this decree.' 
Article 18 
1. After the second paragraph of article 54-bis of royal decree no. 1127 of 29 June 
1939, as subsequently amended, there shall be inserted the following: IP/N/1/ITA/Ifl 
Page 11 
'A mandatory licence may be granted in case exploitation of an invention is aimed mainly to 
the supply of the domestic market.' 
Article 19 
1. The provisions as per articles 1 to 5 of presidential decree no. 360 of 18 April 1994 
shall further apply to the procedure for granting a mandatory licence. 
2. After article 54-fer of royal decree no. 1127 of 29 June 1939, as subsequently 
amended, there shall be inserted the following article 54-quater which shall substitute for the 
one repealed by presidential decree no. 360 of 18 April 1994: 
'Article 54-quater. -1. The decree granting the licence shall set forth scope, duration and 
manner of the exploitation, safeguards and other conditions applying to the authorization as 
related to its purposes, and amount and payment conditions of the remuneration. In case of 
opposition, amount and payment conditions of the remuneration shall be set forth as per 
paragraph 2 of article 50. 
2. The licence conditions may, by a decree of the Minister for industry, commerce and trade, 
be changed on application of any of the parties concerned \vhere there are reasonable grounds 
to do so. 
3. Paragraph 3 of article 50 shall apply to changes in the ren1uneration paid. 
4. A licence shall be revoked by a decree of the Minister for industry, commerce and trade 
whenever the conditions applying to exploitation of the invention are not complied with or 
the licence owner did not pay the remuneration as prescribed in respect of its amount and 
payment conditions. If the owner or the previous right holder of the patent in respect of which 
a nlandatory licence was granted authorised third parties to use that patent on nlore 
favourable conditions as compared with those set forth in the mandatory licence, such 
conditions shall be extended to the mandatory licence upon request of the licensee. 
5. The Ufficio italiano brevetti e march] [Italian patent and trademark office] shall be in 
charge of con1municating the adopted measures to the parties concerned. 
6. The decree granting the licence, the one concerning any changes in the relevant conditions, 
the one revoking such licence and the amount or any change in the remuneration due shall be 
published in the Bollettino dei brevetti [Bulletin of patents] and entered in the registry of 
patents.' 
Article 20 
1. After article 54-quater of royal decree no. 1127 of 29 June 1939, as subsequently 
anlended, there shall be inserted the following article 54-quinquies which shall substitute for 
the one repealed by presidential decree no. 360 of 18 April 1994: IP/N/l/IT A/Ill 
Page 12 
'Article 54-quinquies. -1. A n1andatory licence shall also be revoked, by a decree of the 
Minister for industry, commerce and trade, if and when the circumstances that led to it cease 
to exist and arc unlikely to recur. 
2. Revocation may be requested by the patent owner by applying to the Italian patent and 
trademark office, which will readily communicate it, through a registered letter with notice of 
receipt, to the owner of the mandatory licence. The latter may, within sixty days of the receipt 
of the registered letter, lodge a grounded complaint against such revocation with the Italian 
patent and trademark office. Articles 4 and 5 of presidential decree no. 360 of 18 April 1994 
shall apply. 
3. In case of revocation, the person who had previously been granted the licence may exploit 
the invention on the same conditions within the limits of its pre-use or as resulting from 
serious, effective preparations.' 
Article 21 
1. Article 54-sexies of royal decree no. 1127 of 29 June 1939, as subsequently 
amended, shall be repealed. 
Article 22 
1. For the second paragraph of article 60 of royal decree no. 1127 of 29 June 1939, as 
subsequently amended, there shall be substituted the following: 
'Expropriation may be limited to the right of using the invention for the public interest, 
without prejudice to the provisions as per article 54-quater and subsequent ones where 
compatible. ' 
Article 23 
1. For article 77 of royal decree no. 1127 of 29 June 1939, as subsequently amended, 
there shall be substituted the following: 
'Article 77. -1. The burden of proof in respect of invalidity or expiry of a patent for an 
industrial invention shall be in all cases on the person challenging the patent, whereas the 
burden of proof in respect of counterfeiting shall be on the patent owner. 
2. 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. Hemay 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. lP/N/I/ITA/Ifl 
Page 13 
3. When adopting the above nleasures, the judicial authorities shall take such nleasures as arc 
appropriate to ensure the protection of confidential infom1ation, after having heard the 
opposing party.' 
4. In respect of the subject matter of this decree, the e.x officio technical consultant may be 
provided with docun1ents relating to the questions asked by the judicial authorities even 
though such docun1ents have not yet been produced in evidence. Each party may appoint 
nlore than one consultant.' 
Article 24 
1. For article 81 of royal decree no. 1127 of 29 June 1939, as subsequently amended, 
there shall be substituted the following: 
'Article 81. -1. The right holder of a patent for industrial invention may request that 
description or seizure be ordered of all or sonle of the goods produced by 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 n1easures shall be adopted as 
are appropriate to ensure the protection of confidential information.' 
Article 25 
1. For article 82 of royal decree no. 1127 of 29 June 1939, as subsequently amended, 
there shall be substituted the following: 
'Article 82. -1. Except where otheIWise provided by the following paragraphs, the 
proceedings as per article 81 shall be govenlcd by the provisions of the Code of Civil 
Procedure regarding precautionary remedies -nan1ciy, preparation of a case and seizure. 
2. Description and seizure shall be perfonned by a bailiff, who may be assisted by one or 
more experts, where necessary, and n1ay use technical, including photographic, equipment. 
3. The parties concen1ed n1ay 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 n1ust be considered equivalent to the need not to jeopardize enforcement 
of the remedy. The provisions of articles 669-octies, 669-novies, 669-undecies 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 sanle order; this is \vithout 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. IP/N/l/ITA/Ifl 
Page ~4 
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 26 
1. For article 83 of royal decree no. 1127 of 29 June 1939, as subsequently amended, 
there shall be substituted the following: 
'Article 83. -1. The right holder of a patent for industrial invention may request judicial 
authorities to issue an injunction prohibiting the manufacture, trade and use of the counterfeit 
patented goods in accordance with the provisions of the Code of Civil Procedure regarding 
precautionary n1easures. 
2. In issuing the prohibition injunction the judicial authority may determine a sum to be paid 
in case of infringen1ent or non-compliance as well as of a delay in implementing the 
provision. ' 
Article 27 
1. For article 83-bis of royal decree no. 1127 of 29 June 1939, as subsequently 
an1ended, there shall be substituted the following: 
'Article 83-bis. -1. The provisions as per articles 81, 82 and 83 may be applied for either 
from the time when the application is made known to the public or in respect of the persons 
to \vhon1 the application was notified in pursuance of article 4.' 
Chapter V 
AMENDMENTS TO LAW No. 70 OF 21 FEBRUARY 1989 
CONCERNING LAYOUT-DESIGNS OF SEMICONDUCTOR PRODUers 
Article 28 
1. For article 5 of Law no. 70 of 21 February 1989 there shall be substituted the 
following: 
'Article 5 (Recognition of rights). -1. The exclusive rights as per article 4 shall be recognized 
if: 
a) the layout-design complies with the requirements as per article 2; IP/N/l/ITA/Ifl 
Page 15 
b) the layout-design was registered in Italy or, in case of its previous commercial 
exploitation wherever in the world it occurred, its registration \vas accomplished within the 
tem1 set forth in article 7; 
c) the owner of the layout-design is, at the time of its first commercial exploitation or 
of filing an application for its registration,: 
1) an Italian national or legal person, or a national or a legal person of any other 
member State of the European Union; 
2) a national or a legal person of another State which is a party to the agreement on 
trade-related aspects of intellectual property rights adopted in Marrakech on 15 April 1994, 
or to a convention for the protection of layout-designs to which Italy has acceded; 
3) a national or a legal person or a person who is resident or has a serious, effective 
plant for the creation of layout-designs or the proquction of integrated circuits in the territory 
of any of the States referred to under items 1 and 2; 
4) a national or a legal person of other States to which Italy grants the same treatment 
as to its nationals on a reciprocal basis, although in the absence of bilateral international 
conventions for the protection of layout-designs, provided the legal protection granted by 
that other State to Italian nationals or legal persons is comparable to that laid down in this 
law.' 
Article 29 
1. For paragraph 3 of article 18 of Law no. 70 of 21 February 1989 there shall be 
substituted the following: 
'3. If the acts designated under subheadings a) and b) of article 7 are performed after the first 
commercial exploitation of a semiconductor product without reservation clause, the owner of 
the registered layout-design shall be entitled to equitable remuneration and the infringer shall 
be entitled to being granted a licence on equitable conditions in order to continue the 
exploitation of the layout-design within the scope of its use prior to registration. Should the 
right holder refuse to grant a contractual licence, articles 54-quater and 54-quinquies of 
royal decree no. 1127 of 29 June 1939 shall apply as appropriate.' 
Article 30 
1. For paragraph 2 of article 19 of Law no. 70 of 21 February 1989 there shall be 
substituted the following, and paragraph 2-bis below shall be added thereto: 
'2. In the case as per paragraph 1 it shall be allowed to continue the activity within the scope 
of the contracts already made and of the stock on hand; however, the holder of the exclusive 
rights shall be entitled to equitable remuneration after the time that he gave sufficient notice 
to the bona fide purchaser that the relevant layout-design was reproduced unlawfully. 
2-bis. Failing an agreement between the parties, the said equitable remuneration shall be 
determined and paid by taking account of market prices and in accordance with the 
provisions as per paragraphs 2 and 3 of article 50 of royal decree no. 1127 of 29 June 1939, as 
subsequently amended.' IP/N/llIT AlII 1 
Page 16 
Chapter VI 
PROVISIONS APPLYING TO GEOGRAPHICAL INDICATIONS 
Article 31 
1. Geographical indications shall be indications which identify a good as originating 
in a country, a region or a locality, where a given quality, reputation or characteristic of the 
good is exclusively or essentially attributable to its geographical origin, including natural, 
human and heritage factors. 
2. Without prejudice to the provisions as per no. 2 of article 2598 of the Civil Code 
and to the special provisions applying to this subject-matter, as well as to trademark rights 
which were acquired previously in good faith, the use of geographical indications or of any 
other means in the designation or presentation of a product that indicate or suggest that such 
product originates in a locality other than its true place of origin, or that the product has such 
qualities as are typical of products originating in a locality designated by a geographical 
indication, shall constitute an act of unfair competition where it is apt to mislead the public. 
3. The protection as per paragraph 2 shall not preclude third parties from using their 
own names in the activity performed, or the names of their prior right holders, unless such 
names are used in a manner which misleads the public. 
Article 32 
1. This decree shall enter into force on the day following that of its publication in the 
Official Journal [Gazzetta Ufficiale]. 
This decree, provided with the State's seal, shall be included in the official collection 
of laws and decrees of the Italian Republic .. All concerned shall have to comply with it and to 
cause it to be conlplied with. 