IP & Competition

Specialisations Advertising (including procedures before the Italian Advertising Self-Discipline Tribunal), Sponsorship and Media Law; Antitrust and Competition Law; Biotechnologies; Copyright Law; Counterfeiting and Passing-off; Biotechnologies; Business Methods; Industrial Design & Models; Fashion Design; IP Litigation; IP Criminal Defense & Prosecution; IT & TLC Law; Life Sciences; Patents; Pharmaceuticals; Software; Technology Transfer and Licence Agreements; Trademarks, Trade names and Merchandising; Domain Names, WIPO Arbitration and Cybersquatting; Trade Secrets; Unfair Competition.

Counsel to our Intellectual Property and Competition Department is Prof. Romano Vulpitta.

In the framework of the Intellectual Property & Competition Law Department the Firm’s Patent & Trademark Agency Services are active. Tax planning and strategies related to the exploitment of corporate and group IP portfolio and its licensing are dealt with with in close cooperation with our Tax Department.

Studio Legale Sutti has been along the years nominated as Acquisition International‘s IP Law Firm of the Year (2017), ACQ‘s Intellectual Property Law Firm of the Year (2014, 2015, 2017), Acquisition International‘s IP Award Winner (2014), Gobal Law Experts‘ IP Law Firm of the Year in Italy (2014), Superior Lawyer Magazine‘sIP Law Firm of the Year (2014),Corporate INTL Legal Awards’ IP Law Firm of the Year (2013), Lawyers World‘s Law Firm of the Year in Italy for Competition Law (2011), Lawyers World‘sLaw Firm of the Year in Italy for Intellectual Property Law (2011).

Comments of Independent Sources and Additional Details According to the results of the analysis of the Italian legal market following recommendations by London lawyers which is available online on the World Legal Forum. A Guide to Law Firms around the Globe – and has been published by the issue of June 1999 of the British magazine InBrief – Simona Cazzaniga, the Head of our IP & Competition Dept., was one of the two “IP gurus of the moment” in Italy (as SLS is as such especially recommended for Intellectual Property by the same survey). Similarly, in June 2002 InBrief (and the identical article on the WLF) again remarks that Dr. Cazzaniga “always produces” in IP litigation (while SLS is said to have “one of the largest, best informed, IP practices” in Italy). Actually, Simona Cazzaniga‘s name is mentioned with respect to the Italian jurisdiction by both the Guide to World’s Leading Trademark Practioners and by the Guide to World’s Leading Patent Lawyers 2001 (both published by the Legalmediagroup), as well as by the IP Section of European Legal Experts (Legalease).

The 2002 edition of The World’s Leading Lawyers (aka Chambers and Partners Global) agrees and describes again Dr. Cazzaniga as one of the three leading individuals in the Italian IP arena, remarking that “clients firmly endorses the ‘smart’ Simona Cazzaniga for her ‘diligent and prompt advice’”. SLS is in turn noted for its “expansion in the consumer electronics and Internet markets with increased visibility in the farmaceutical industry”. The 2003 edition stresses instead our “international reach for handling counterfeiting cases in Europe and the Far East”, mentioning also our offices in Sofia and Belgrade. It adds: “Market opinion acknowledges SLS long-standing expertise in the high-tech industry. Other areas of specialisation include IT and Internet, cellular phones and fibre-optics technology, 3D trademarks and MP3 technology. […] The IP team obtained 22 precautionay measures in a three-month period. […] The clients are drawn from the pharmaceutical, telecoms, IT, automotive, fashion and food sectors.”

Simona Cazzaniga and SLS are recommended to all American attorneys by the American Bar Association’s prestigious Guide to Foreign Law Firms, edited by the Section of International Law and Practice. This view was shared by The American Lawyer in its October 2002 IP Europe supplement, were we are mentioned amongst the leading European IP players as one of the law firms with the oldest and largest patent practice in Italy.

A recent survey of the Italian major legal players published by Lombard – The Italian Magazine of International Finance (February 2003) recognises in fact SLS – mentioned also by the Guide to Intellectual Property Services published in 2001 and 2002 by the Italian financial newspaper Italia Oggi – as the single large Italian firm having made intellectual property one of the main focuses of its practice. On 23/10/2003 the same newspaper again mentions our IP practice in an article entitled “Law Firms, a List of the Best”.

While Studio Legale Sutti mostly represents one of the corporate sides in “hardcore”, highly technical, IP deals and cases, in some high-profile international matters we also happened to advise companies, and exceptionally well-known individuals, in matters related the abuse of their name and image for advertising and other commercial purpose, as in a number of disputes involving one of the most famous living French actors (see Italia Oggi 07/08/2002, “Cazzaniga, How to Protect VIPs’ Images”; Il Mondo 23/08/2002, “Belmondo Shirts Outlawed by the Court of Milan”; Managing Intellectual Property 09/2002, “French actor scores infringement first in Italy”; Yahoo Italy 04/09/2002 “Protecting One’s Own Name. Two Interesting Cases Concerning Mr. Belmondo”; Libero News2000 09/09/2002, “The More, the Better”). Accordingly, Managing Intellectual Property, the IP-focused magazine of Legalmediagroup, lists us in November 2003 among the “world top-ranked firms for trade mark/copyright work”.

In fact, both our Milan and Belgrade offices have been recently mentioned by local and international press with regard to high-profile Internet- or media-related copyright cases (see for instance Legal Week 05/09/2002 “Sutti celebrates Belgrade launch with CNN defence”), and trademark and unfair competition cases (see the recent decision obtained on behalf of the world largest yacht shipyard, commented by Il Mondo 21/12/2002 “Picchiotti Ordered to Stop Using His Name” and Managing Intellectual Property 04/2003 “Famous Family Banned from Using Own Name in the Yacht Construction Business”).

Additional attention was drawn to our “soft” IP practice (see Il Mondo 03/10/2003, Italia Oggi 03/10/2003) by a few landmark models and design cases we had to opportunity to participate in, such as one where we recently represented a well-known sport car manufacturer against one of the leading Italian leather garment and clothes manufacturer concerning the limits of patent protection for non-technical ideas. Several articles and short essays are also often cited which we published in various Law Reviews on industrial design issues, especially with respect to the patent / copyright alternative or complementary protection for industrial design work.

Studio Legale Sutti was already amongst the Italian firms which were judged to have the strongest IP practices by ILFR’s 1000 – The Guide to the World’s Leading International Business Law Firms 1999 (published by Legalmediagroup), confirming in this respect the content of its 1998 and 1997 edition, where we were “highly recommended” for IP matters. The same source also mentioned specifically our “Internet and TLC practice”. Its 2000 edition recommended us instead for our IP litigation and arbitration skills. In 2001, we were again the first law firm cited for IP by ILFR 1000, and Simona Cazzaniga and her team were praised for her trademark expertise. The 2002 edition recommends them instead for “patent work” and mentions the IP and IT expertise of our Sofia office.

Similarly, European Counsel 3000 (published by L&C Publishing Ltd) – which in 1998 remarked our special involvement in criminal defence & prosecution related to intellectual property infringements – in its 1999 edition recommended the Firm for its hi-tech work and lists, among our “strong areas of practice”, IT law, also noting our specific expertise with regard to the pharmaceutical sector. Now, Global Counsel 3000, the new annual practice survey of the same publisher, reported in 2000 that SLS is recommended by corporate clients for “Internet-related work” and “pharmaceutical” (many clients in this sector working with SLS also for non-IP related matters) . In 2001 we were mentioned instead for our expertise with respect to “Life Sciences” in general. This recommendation for our “Life Sciences” and biotechnology practice has been reiterated in the edition 2002, 2003, 2004, along with that for “Communications” (which is extended to both our Italian practice and our Bucharest office).

Again, Legal 500 – Law Firms in Europe 1998 (Legalease) also used the term “very strong” to define our patent and trademark practice, while the 2002 edition concentrates on our competition and technology practice; in turn, the survey contained in the UK 2000 edition of Legal 500 SLS is especially recommended, amongst Italian firms having an office in the United Kingdom, for “IP & IT”. Again in 2003, the same publication, not having an IP section anymore in the Italian Chapter, listed in 2002 and 2003 SLS amongst the firms active in Milan and Rome which are recommented for “Technology, Media and Telecommunications” as well as for “EU, Regulatory and Competition” work. In 2004, we are again on for “EU, regulatory and competition” and “TMT” in Italy and for “IP, IT, telecoms and media” in Bulgaria.

A description of our activity in this field is contained in, inter alia, the World IP Contacts Handbook, published by Euromoney.

Finally, Studio Legale Sutti is the only firm listed for the Italian jurisdiction by Peter Anthony Nieves in his Peter’s Patent Perfect Page, with regard to the copyright, patent, trademark, and trade secret, fields.

Studio Legale Sutti was thus elected to be the Italian representative of the Paris International Chamber of Commerce recently established “Counterforce”, a task force of law firms which offer Intellectual Property and Anti-Counterfeiting services. This is a unique alliance of highly regarded lawyers dedicated to assisting victims of counterfeiting. Launched at the beginning of 1995 the “Counterforce” network currently embraces more than fifty law firms in forty-eight countries throughout the world. The ICC publishes an annual “Counterforce Directory” of these firms. More detailed hard copies are available free of charge from the ICC Counterfeiting Intelligence Bureau. The establishment of Counterforce in Italy, and the election of Studio Legale Sutti as its representative in our country, SLS’s appointment has also been discussed by the Italian financial and general press (see Italia Oggi, issue of 16 September 1999), and, inter alia, on 18/04/2000 Stefano Sutti, in his capacity of SLS’s Managing Partner, was interviewed by Daniela Cuzzolin of TG3, one of RAI TV news broadcast services, on Counterforce’s position with respect to a decision of the Italian Supreme Court on low-quality counterfeiting.

Italian Counterforce desks are currently available in the Head Office of SLS’s IP & Competition Dept., in Milan, and in SLS’s offices in London,Tokyo, and Belgrade.

SLS is also a member of The Intellectual Property Network. and is associated with CONVEY, an Italian organisation based in Turin which every year organises an EC-sponsored Master Course in Technology Licensing, where Simona Cazzaniga holds teaching positions. In fact, a number of SLS’s IP & Competition Dept. members were recruited from its alumni.

As a matter of fact, the members of our IP Dept., besides authoring a very large number of specialised articles and essays, are especially involved into academic, seminarial and continuing education activities.

Among our recent lectures and speeches during international congresses and seminars, it may be of interest to mention here for example the Italian report presented by SLS members in the Working Session on “Licensing and Trade in the Foodstuff and Agrochemical Industry” of the LES-Europe1999 Conference, which took place on 22 – 25 September in Venice. Again, as early as 1996, Simona Cazzaniga presented the Italian Report on “Sponsorship Agreements” in Montreux, during the annual AIJA Congress, and on 12 May 2000 she participated in a public debate on “The Single Judge Reform. Related Challenges and Opportunities for the Protection of Intellectual Property”, organised by INDICAM in Milan; and on the 29-31 March, during a three days seminar organised by IIR on The Management and Legal Protection of Trademarks, she presented a paper on “When and How To File A Trademark Infringement Suit”, which was complemented by Andrea Montanari’s intervention on “When and How To File a Trademark Voidability Suit”. Simona Cazzaniga also relied on our reputation in the field of M&A legal work to present a lecture on “IP Due Diligence” in the seminar on Due Diligence held by IIR on 25-26/09/2001. Our IP and technology licensing reputation had in turn SLS invited a few years ago by the British-Italian Law Association to present, during the conference on The Internationalisation of EU Law (Bologna, 01/12/1995) the then brand-new “EU Technology Transfer Block Exemption Regulation”.

Among other public speeches by partners and counsel to Studio Legale Sutti along the years, it is worth mentioning “Intellectual Property on the Internet”, in the conference organised in Stresa on 04/05/2001 by the Centro Nazionale di Prevenzione e Difesa Sociale; and “IP Rights on Communication Standards” in the annual congress held in Perugia on 25-26/05/2001 of the Società Italiana per lo Studio della Proprietà intellettuale. Again on the Internet-related aspects of IP was the lecture given by Tito Ballarino in the seminar on 08/06/2001 in Padua Domain names, Trademarks and Copyright by Centro Studi Ateneo. Simona Cazzaniga was also invited by IIR to hold conferences in Milan on “Abuse of Trademarks and Domain Names” on 19/03/2002, and on “How to Protect Registered Trademarks Against Undue Interferences On the Internet”, on 26/11/2002. Again Simona Cazzaniga was invited to speak on 21/11/2003 in Bologna on “The New Protection of Intellectual Property in the Internet Age” at the Italian Cyberspace Law Conference, and on 12/02/2004 in Milan on “IP Aspects of Sotware Patents” by AICA; while Gianluca Gilardi discussed Open Source licenses and business models on 16/09/2003 for Ius On Demand.

Other past lectures, speeches and reports regarding IT- and Internet-related aspects of intellectual property are discussed in the section on our IT Group.

Unfair Competition and Antitrust matters, which have been handled since the end of 1998 by Livia Oglio, LL.M., are of course dealt with in strict cooperation with our Company-Commercial Law Department , and include the necessary support for its M&A work and for selective commercial distribution and franchising networks setups.

Similar support is provided to our Labour Law Department for litigation and prosecution against employees, directors and executives in breach of statutory or contractual non-competition agreements.

Antitrust matters are of course dealt with both before the Italian Autorità Garante delle Concorrenza e del Mercato and at an European level. with the EU Commission and Courts.

Our expertise in this area led to our appointment as the contributors of the Italian section of Buttersworth’s Competition Laws of Europe, now in its second edition.

Widespread media exposure was also enjoyed by the Firm in high-profile proceedings for alleged abuses of a dominant position. Moreover, as recognised experts in this field, we are often interviewed by the Italian and international media on famous competition procedures where SLS did not participate directly (e.g., the interviews published by Il Gazzettino, 09/06/2000, on the US proceedings against Microsoft; by Il Corriere della Sera, same date, on the recent Italian antitrust measures against the Italian oil and gas companies; by Lawmoney 10/07/1998, on the Italian procedure against COCA-COLA; by Italia Oggi 26/08/2003 concerning the launch of Mecca Cola and the related competitive issues).

Significant interest was also raised among competition specialists and entrepreneurs by our participation to a seminar organised within the framework of the Osservatorio della Proprietà Intellettuale, della Concorrenza e delle Telecomunicazioni, about Competition in the UK, Italy and Europe.

Lastly, our IP & Competition practice benefits nowadays from the presence of professionals other than lawyers among our members, and notably that of patent attorneys and patent agents (see in this respect the information on Firm’s Patent & Trademark Agency Services); and of a number of commercialisti (accountants / auditors /tax advisors / business consultants), with a business and economics, rather than legal, background, who, even though they are formally part of our Company-Commercial Dept. or of our Tax Dept. intensely contribute to, e.g., licensing campaigns, IP portfolio assessments for auditing or due diligence purposes, the definition of relevant markets in antritrust matters, licensing-related tax planning, etc.

Studio Legale Sutti is the official contributor for Intellectual Property Law updates and surveys regarding the Italian jurisdiction to Mondaq Business Briefing, a news service which is accessible on the Web, and to all Lexis-Nexis, Reuters and Dow Jones information services’ users. Many brief texts authored by SLS’s members on the same subject are available there (a free registration is needed to access them).

Various specialisations of SLS’s Intellectual Property and Competition Law Dept. are discussed in detail in our entries in the relevant Mondaq directories, and in particular:

  • Competition Law
  • Intellectual Property
  • Year 2000, IT, Telecoms & Internet
  • Media & Entertainment
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