Welcome on the section Forgery cases law
To defend your idea from forgery, you need to choose the best protection with the help of an expert.
Below there is a list of the main topic on this subject to help you.
- Action against those who copy a product/trademark
- Defense of the person accused of having copied a product/trademark
Action against those who copy a product/trademark
If someone is copying one of your products, a trademark, a design or is violating your copyright, the first thing to do is to go to anattorney with proven experience in this particular field.
It is extremely important to act immediately finding the right professional who understands readily the solution and is also able to intervene quickly. Best,if thisattorney has at his/her disposal in the office a person expert in patents who can give him/her relevant support.
The attorney won’t just intervene quickly but s/he will even suggest the best instruments and the strategy suitable to your case.
We remind you that for trademarks and patents there are specific procedures different from those used in ordinary civil case law.
These procedures are designed to ease forgery abolition efficaciously and fast. But they need to be well used and at the right time.
For instance, starting by sending a cease and desist letter, as many attorneys do, is not always the right choice.
In some cases, if you need to collect proofs and use the description tool – which can be very useful but loses its effects if the counterfeiter is warned of your intentions by a cease and desist letter -the surprise effect can be better.
There aren’t strict rules and as in a match, the game strategy changes according to the situation.
The important thing is that the professional to go to has a deep knowledge not only of right in general but of industrial rights as wellwhich is what gives the instruments to get rid of forgery and obtain the wanted effects.
Again:an error at the initial setting of the strategy can produce negative consequences, sometimes irreversible, on the whole process even in case you are right.
Before examining which instruments can be used to act against the counterfeiter of one of your products or trademark, it is necessary to debunk a myth and affirm that in Italy the “processo industrialistico” (that is the name of the type of process related to forgery) works.
It is a fast and efficientprocedure composed by two different levels.
The first level consists in “securing” the person who suffered a forgery. Thanks to a series of mechanisms and due to the urgency of the matter, it is possible to have the forger stop the production, the counterfeited goods seized and the judge issue an order against the forger,all in a short time, even in few weeks.
The aim of this first step is to stop the forgery urgently, postponing the accurate analysis of the case.
The second level is related to this analysis and can be asked if someone is willing to obtain a compensation for the damage which cannot be tamed in the first step.
This second step is like a normal civil proceeding in terms of times and procedural deadlines but it is held before the Section Specialized in Business Matters that has a specific knowledge in patent and trademark forgery and has more effective instruments than a common proceeding.
For example, the judge can ask the forger to give indication on the entire chain of forgery and can obtain information even from third parties that in some way are involved in the productive and distribution chain.
It is possible to know the whole forger’s accounting situation and ask for the “return of the profit” collected thanks to the forgery which may be an important portion of the compensation.
Production prohibitory injunction
The most requested measure in case of forgery is the prohibitory injunction to ask the judge to order the forger to stop copying the trademark or the product or anyway to stop the unfair practice.
The prohibitory injunction can be obtained by mean of preventive proceedings, even in few months and sometimes in few weeks.
The order of the judge maintains its efficacy even without the introduction of a trial proceeding which is necessary to ask for the compensation for the damage.
The prohibitory injunction can be requested only by acting promptly at the discovery of the forgery. Acting after years of wait forces to the longer path of the common civil proceeding.
The prohibitory injunction is often connected to a penalty which the forger has to pay in correspondence to each day of delay in the execution of the order of the judge.
It is a really effective measure that stops the forger and allows the owner of the right to have its position on the market quickly back.
Seizure of the counterfeited goods
The seizure is the measure that stops all the counterfeited goods, preventing their commercialization.
Practically it consists in packing the products so that they cannot be moved nor sold.
The seized goods is often stored in the forger’s storehouse but no one can touch it.
The seizure can be urgently obtained with a preventive proceeding in few months and sometimes even in few weeks.
Once the seizure is allowed, a trial proceeding should be instructed. This is required to extensively verify the reasons of the person who obtained the seizure and to ask for the compensation.
The seizure needs to be requested as soon as possible once one is aware of the forgery but it is also important to be careful and sure of the reasons that may cause a great damage to the assumed forger.
It is a really effective measure that has the aim to prevent the copied good from being distributed on the market allowing the owner of the right to maintain its position on the market.
Description of the counterfeitedgood
With the description process the judge is asked to enter the presumed forger’s office, and eventually even third’s, in order to verify the existence of counterfeited goods and then “describe” them.
In order to ask for it, it is necessary to have some proof of the unfair act even if the aim of the description is to get a better picture of the situation and verify the importance of the phenomenon.
It happens frequently to ask for a description thinking to the copy of one specific article and then turns out that the forger was copying the entire series of products.
The description can be obtained urgently with a preventive proceeding, in few months and sometimes in few weeks. If is often granted without schedule a hearing (the so called inauditaaltera parte) and without the forger’s knowledge even because without the surprise effect it would be useless.
Once the description is allowed, a trial proceeding should be instructed. This is required to extensively verify the reasons of the person who obtained the seizure and to ask for the compensation. In that proceeding the material collected during the description will be used as proof supporting the reasons of the owner of the rights.
It is then a very efficacious measure to find out forgery acts or documents proofing them and so gain further instruments even in view of the compensation.
The person who suffered the forgery of a patent, trademark, design or the plagiarism of a copyright or unfair competition has as main aim to stop the forger and also obtain a compensation.
Scheduling a trial proceeding is required to ask for compensation because it not expected during the urgency phase which may last few weeks and is used to stop the commercialization of the forged goods.
It is a long procedure but the jurisdiction furnishes valid instruments to allow the person suffering the forgery to efficaciously obtain the compensation.
One may ask the forger to pay for the “actual damage”, that is the compensation of all expenses paid as a consequence of the forgery, and the “loss of profits” which represents the loss of profit caused by the unfair act.
If on the one hand the first can be demonstrated easily, on the other hand the latter is harder. It is not always possible to know exactly the total loss due to forgery in terms of profit.
For this reason our legislation gives the chance to ask, as an alternative or in addition to the loss of profits, the “return of the profits”, in other words the return of the forger’s profit to the person that suffered the damage.
When these criteria are not sufficient, it can be asked to the forger to pay a compensation esteemed on the basis of the “fair royalty”, the amount that the forger should have paid to the person that suffered the forgery if he paid a royalty (pretending that the patent, trademark, design was licensed) plus an additional percentage as “penalty”.
The “non-pecuniary damage” – which is normally calculated as a percentage added to the economic damage – can be requested in addition to the economic damage.
They are very efficacious and new instruments and one should know how to use.
Defense of the person accused of having copied a product/trademark
If someone accuses you of copying a patent, trademark, design or of violating a copyright, the first thing to do is to go to an attorney with proven experience in this particular field.
It is extremely important to be supported by the right professional who understands readily the solution and is also able to intervene quickly. Best, if this attorney has at his/her disposal in the office a person expert in patents who can give him/her relevant support.
The attorney won’t just intervene quickly but s/he will even suggest the best instruments of defense and the strategy suitable to your case.
We remind you that for trademarks and patents there are specific procedureswhich are completely different from those used in ordinary civil case law.
These procedures are designed to ease forgery abolition efficaciously and fast so the defense should be very fast as well since the attorney will have a very short time, sometimes only few days, to prepare the defensive writings.
If the forgeryyou are charged with isrelated to a patent or a design, a technical report isverynecessary to evaluate the validity of the title and itscontent and to look for defensivearguments.
The technical report is usefulalso in case of trademark forgery or copyright violation but it is not always necessary as it is for patents and design.
Our professionals work side by side, attorney and engineer, to give the client the best report that takes into account both technical and legal aspects.
Starting a legal actwithout having done this step first can seriously endanger the defense and it is as walk blindfolded.
Action for a declaration of non-infringement
Attack is the best defense.
Moving from this premise, the person receiving a cease and desist or thinking that someone would sue him/her for a presumed forgery, if believes to be right, should act first with a declaration of non-infringement instead of waiting to be accused.
This action can be proposed urgently during a preventive proceeding or during a trial proceeding according to the situation and on the basis on the time passed between the moment of the reception of the cease and desist and the one when you decide to act.
This is the opposite of preparing an action of forgery, the instruments are the same but used “at the opposite”.
One should have gained experience in order to prepare and manage a cause of this type, it is not a common proceeding.
Its results however are important. The wrongly accused person can produce without risking legal actions or seizures which could harm its image before costumers.
Chiara Morbidiesq. has been working on many cases of this type and she can give you a valid assistance.
Briefs and the briefing reply are the documents used by the defendant before the judge.
If one is charged with forgery or plagiarism,in order to prepare a good brief this person has to turn to an attorney with knowledge in field. A wrong answer may have dramatic costs.
Moreover, before writing a brief it is necessary to decide a defensive strategy . The act in itself is only the last part of a series of actions that need to be fast and effective.
Sometimes investigations, researches in databases, technical reports and exams could be neededto find defensive arguments and “demolish” the plaintiff’s attack.
Our professional have the advantage of never working alone. They form a team of lawyers, patent attorneyengineers, experts in trademarks and design, technicians, and each question is examined from different perspectives.
Settlements and mediations
In many cases, trying to reach an agreement could be better than facing a lond and expensive legal cause.
This is true the majority of the times, even if one is right. A good agreement is the best solution to end a litigation and turn the energies to activities more important for the work and the company.
This path is possible only with the collaboration of the other part which is not always possible.
When the counterparty is “reasonable”, and supported by an attorney helping him/her to think, finding a amicable solution could be a good way out.
Reaching an agreement (in technical term it is called “settlement”) needs time and patience.
Sometimes it is reached talking to the counterparty’s attorney or, at an early stage, talking directly to the opponent.
In other cases, more complex or with contentious parts, the best thing could be to move the negotiation before a mediator supporting the parts in finding an amicable solution.
During an infringement action there isn’t the obligation to attempt to find a preventive mediation, as happens for other types of causes, but one can resort to the voluntary mediation.
Voluntary mediation puts the parties and their attorneys before a mediator who hasn’t the power to take decision but just to facilitate the dialogue.
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