29 Sep 2017 in Newsletter
European Litigation Series, Part II: Search Order and Seizure in Italy
Italy is the Eurozone’s third-largest economy after Germany and France and, due to the size of its market and reduced litigation costs, should be taken into consideration when Intellectual Property (IP) rights need to be enforced in Europe. Since exclusive jurisdiction over IP cases has been conferred on select Italian courts, the duration of patent litigation proceedings has been shortened: a first-instance action on the merits may take two to three years, depending on the complexity of the case and the workload of the court.
Although discovery is not available in the Italian IP litigation system, it is possible to gather evidence of alleged infringement of an IP right in force in Italy before proceedings on the merits are started. This is done by requesting a search order (descrizione) or a seizure (sequestro). The patentee should be able to show that, on the balance of probabilities, the IP right is valid and infringed and that there is likelihood of a good case. Both procedures may be authorized by the court ex parte, i.e., without the alleged infringer being informed prior to the search and/or seizure, in case of irreparable harm or whenever there is risk of evidence being destroyed. This prevents the defendant from hiding, destroying or altering any evidence of the alleged infringement. However, due to its less invasive nature in relation to damages that may suffered by the defendant from the execution of the measure in comparison to a seizure, an ex parte search is granted more easily than an ex parte seizure. Once granted, ex parte searches and seizures have to be executed rather quickly because the court schedules a hearing aimed at confirming, amending or revoking the order. The claimant has to serve the motion and the order on the defendant within only eight days from the grant of the order. The order is then performed by a court bailiff who may be assisted by technical experts as well as by the patentee’s IP counsel. Differently from the French seizure (saisie-contrefaçon), the patentee may also be authorized to take part in the procedure. Further to the order being granted, an action on the merits must commence within twenty working days or thirty-one calendar days from the issue of the order, whichever deadline falls later. The results of the order are acquired by the judge within the proceedings on the merit. Search and seizure orders are subject to appeal within fifteen days from the date of conclusion of the operations before a panel of three judges. The judge who granted the order cannot be a member of the appeal panel.
A search order is used when the infringement is not so evident as to warrant a seizure order and is the only available tool provided by Italian law against allegedly infringing goods being displayed at exhibitions and trade fairs or in transit to or from such exhibitions and trade fairs. In such cases, no seizure is authorized. A search is particularly useful when the allegedly infringing products are not on sale yet or, albeit on sale, are very expensive, as well as in case of allegedly infringing processes or methods. To have a search order granted, the likelihood of infringement and validity has to be sufficiently clear. It should be requested as soon as possible after the claimant has gained knowledge of an infringement (within months), otherwise the urgency cannot be acknowledged by the judge and the order cannot be granted. Upon grant of a search order, the claimant is authorized to inspect and describe the allegedly infringing products/processes, under the supervision of a court bailiff, who drafts a written report for the court. Any materials and means used in the production of these goods and any related documents, including commercial and accounting documents useful to establish the entity of the infringement, may be inspected and described.
To have a seizure order granted, the likelihood of the infringement and validity must be clear, which generally amounts to a heavier burden for the claimant, with respect to a search order. A seizure order may be granted ex parte if the claimant shows that inter partes proceedings would impair the effective execution of the order. However, grant of an ex parte seizure order is difficult to obtain. Once the seizure order is issued, the seizure is performed by a court bailiff. The bailiff, after having identified the allegedly infringing goods, places them under seal, appoints a custodian and drafts a written report for the court. The seizure, as in the case of a search order, may cover not only the allegedly infringing goods, but also the materials and means used in the production of these goods and any related documents.
Search orders and seizures are particularly useful enforcement strategies in Italy because they permit collecting elements of evidence which may prove the alleged infringement and quantify the damages suffered by the patentee. While an ex parte seizure is not easy to obtain, the bar to acquire an ex parte search order is lower. Owners of IP rights should be aware of these tools, and in particular of the ex parte search, offered by the Italian law.