We are proud to share that Antonio Di Bernardo, THINX founder, and Silvia Mati, European Patent Attorney, are both “Recommended IP – Patent Agents & Attorneys” by Who’s Who Legal which every year identifies the foremost legal practitioners and consulting experts in business law.

About Mr. Di Bernardo, WWL says: “Antonio Di Bernardo impresses market sources with his top-notch advice on complex patent transactions in the telecommunications sector””.

About Mrs. Mati, WWL says: “Silvia Mati earns high praise from peers and clients alike for her unique ability  to easily understand complex concepts and ability to lead her clients to their targets”

Congrats!

Antonio Di Bernardo – Thinx S.r.l. – Experts – Lexology

Silvia Mati – Thinx S.r.l. – Experts – Lexology

 

 

We are proud to share that Antonio Di Bernardo, THINX founder, and Giancarlo Belloni, European Patent Attorney, have both been ranked by the prestigious IAM as top patent attorneys in its “IAM Patent 1000 2023” which every year identifies the world’s leading patent professionals.

About Mr. Di Bernardo, IAM says: “Fast, accurate and cost-effective” are the hallmarks of Antonio Di Bernardo offering as he “leverages extensive technical experience to help academic inventors in the assessment of the invention”.

About Mr. Belloni, IAM says: “Giancarlo Belloni has a profound understanding of clients’ goals and takes time to effectively translate complex matters into more simple terms”. He utilizes his expertise to provide extremely precise and detailed drafts and secure patents.

Congrats!

Antonio Di Bernardo – IAM (iam-media.com)

Giancarlo Belloni – Patent 1000 – IAM (iam-media.com)

 

Author: Eng. Antonio Di Bernardo

Food industry is one of the most active and innovative, not only because new foods are coming on our tables, but also because automation is a must for any companies processing food and beverage (F&B)

Despite traditional foods are produced following centenary-old recipes, mass production requires automated machines which must be up to the hilt in terms of speed, performance and low energy consumption. There’s no alternative to stay on the market.

At Interpack, in Dusseldorf, more than 150 exhibitors will show their brand-new technologies for processing F&B. Each of them has spent time and resources in R&D to properly design machine and plants that respond to the needs of F&B companies.

Sometime the innovation brought by a company can be so trivial as genial (the Egg of Columbus), sometimes the innovation is not trivial, but it can be so evident and easy to be implemented by competitors. As a result, a company that has spent much time in finding a solution to a technical problem, to provide improvements and respond to the market needs, can see its solution copied soon after the exposition.

How can these innovative companies secure themselves and their investments? The answer is simple: by registering patents.

Patents are very effective solutions to keep technologies safe because they allow to protect a general technical idea that can be deployed in different ways. The more the invention is disruptive, the more will be the scope of protection of the patent which is not limited to the exact wording of the claims (defining the protection conferred by the patent) but is extended to all equivalent solutions.

Patents allow protecting both machines and methods, this means that companies can get protection over both the physical device and the processes implemented by the machines. This is very important because by protecting the processes, the patent owner can get a somehow broader protection, e.g. over particular actions or steps independently from the technical elements used to make them.

Patentable methods are also the software algorithms that are used to control machine operations, e.g. software that process acquisition data to decide on F&B  quality in order to change control parameters of the machine. Software is more and more pervasive and important in F&B processing, and the huge amount of data available has made artificial Intelligence (AI) a reality adopted to control performance of food processing machines.

AI allows taking decisions that are often too difficult to be taken by human minds and is therefore used to solve optimization problems involving several parameters. In this field of technology, AI is typically used for dosing ingredients, saving energy, or controlling parameters to optimize F&B processing. Also, if AI is often based on well-known classes of algorithms (e.g. Support Vector Machines, Neural Networks or Genetic Algorithms) the particular application, feature selection or training adopted, can make the solution patentable.

This article was first written for and published by “Food Processing” magazine of Editrice Zeus.

Author: D.ssa Giovanna Del Bene

On 1 January 2023, the 12th edition of the Nice Classification came into force.

This is an internationally recognized system, established following the Nice Conference in 1957, revised in Stockholm in 1967 and Geneva in 1977, and amended in 1979, which is used for the classification of goods and services for trademark applications. Currently, the Nice Classification consists of 45 classes (34 classes of goods and 11 classes of services). Each class contains a list of terms that define the scope of protection of the goods or services to be protected through trademark registration.

Every year, the Committee of Experts on the Nice Classification updates the classification according to market and user needs.

In this respect, the 12th edition was particularly eagerly awaited by professionals and trademark owners, as it introduces important novelties concerning the way trademarks are protected in the metaverse regarding virtual goods and the use of NFTs, which until now were not expressly provided for in the Nice Classification.

NFTs (acronym for Non-Fungible Token) are certificates registered on blockchain, which represent the deed of ownership and the attestation of authenticity and uniqueness of a digital asset (they are therefore not interchangeable).

The term METAVERSO originated in Neal Stephenson’s 1992 science fiction novel Snow Crash as a combination of the terms ‘meta’ (from Aristotle’s ‘Metaphysics’) and ‘universe’. Recent years have seen a strong development of the metaverse due to the advancement of virtual reality technology and many companies, such as Microsoft and Facebook, are investing in this parallel market. The metaverse is a virtual reality projected onto the web and shared simultaneously by several people. These are shared three-dimensional spaces (so they are not owned by companies) where users move freely (with their own identity or using avatars), performing social and commercial activities. Access to the metaverse is through registration on a computer platform that can be accessed simply through a computer and an Internet connection. The use of visors or augmented reality devices is recommended to enhance the experience. Purchases can be either real or virtual (via crypto assets).

This new digital reality has proved to be an opportunity for major brands and companies in general, so much so that there has been an increasing number of trademark applications containing terms related to the metaverse, virtual goods and non-fungible tokens (NFT). This has made it necessary for Trademark Offices to provide guidance to users on the classification of these new types of terms.

In recent months the EUIPO (European Union Intellectual Property Office) and the USPTO (United States Patent and Trademark Office) have provided some guidance for the classification of these terms pending the entry into force of the new edition of the Nice Classification.

According to the EUIPO’s approach:

– Virtual products fall under Class 9 because they are treated as digital content or images. However, lacking clarity and precision per se, the term virtual goods needs to be further specified by clarifying the content to which these virtual goods refer (e.g. downloadable virtual goods, or virtual clothing).

– The term NFT is to be considered ‘new’ and for the Office, the term non-fungible tokens per se is not acceptable. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital elements while remaining distinct from them, and it will be necessary to indicate the type of digital element that NFTs authenticate.

– Services related to virtual products and NFTs will be classified in line with established classification principles for services.

The USPTO has provided the following guidance in relation to the identification of virtual goods and services in the relevant classes:

Class 9: downloadable virtual goods, i.e. computer programs containing footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds.

Class 35: retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds; online retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds

Class 41: Entertainment services, i.e. virtual footwear that cannot be downloaded online, clothing, sports equipment, art, toys and accessories for use in virtual worlds created for entertainment purposes.

Below are some of the new features introduced with the 12th edition of the Nice Classification:

– Class 9 incorporates the term “downloadable digital files authenticated by non-fungible tokens (NFTs)”, as well as “downloadable computer software for handling crypto assets’ transactions using blockchain technology” and “downloadable cryptographic keys for receiving and spending crypto assets” and also “virtual reality viewers” and “virtual keyboard projection devices”.

– Class 36 includes ‘transactions involving cryptocurrencies’;

– Class 41 includes ‘provision of online virtual tours’;

– Class 42 covers “mining of crypto assets” and the “provision of virtual computer systems via the cloud”.

In light of the above, it is always advisable to consider extending the protection of one’s trademarks to virtual and NFT-related goods and/or services and to the presence in the metaverse, so as to be able to take advantage of the opportunities offered by this new market with greater serenity, avoiding fraudulent activities by third parties.

© THINX Srl  – January 2023

 

 

 

Author: Dr.ssa Giovanna Del Bene

On 29 November 2022, the Regulation implementing Decree No. 180 of 19 July 2022 of the Ministry of Economic Development was published in the Official Gazette, containing amendments to Decree No. 33 of the Minister of Economic Development of 13 January 2010, implementing the Industrial Property Code adopted by Legislative Decree No. 30 of 10 February 2005, for the purpose of regulating the invalidity and revocation proceedings of trademarks before the UIBM.

The administrative procedures for the revocation or declaration of invalidity of national trademarks were introduced into the Italian legal system by Legislative Decree No. 15 of 20 February 2019, which, transposing European Directive 2015/2436 of 16 December 2015, included in Chapter IV of the Industrial Property Code the section II-bis, headed “Revocation and invalidity of registered trademarks” and consisting of Articles 184-bis et seq. However, implementation rules were awaited to make the revocation and invalidity procedures operative at the administrative level, without prejudice to the possibility of bringing actions before the judicial authorities.

In particular, the decree establishes that parties entitled pursuant to Article 184-ter of the Industrial Property Code may file an application with the Italian Patent and Trademark Office to ascertain the invalidity, revocation or both of a valid registered trademark.

The regulation will enter into force on 29 December 2022.

 

Entitled persons

The following are entitled to file a request for revocation or invalidity:

(a) in the cases referred to in Article 184a(2) and (3)(a), any interested party;

(b) in the case referred to in Article 184a(3)(b), the proprietor of an earlier trademark or the person authorized by law to exercise the rights conferred by a protected designation of origin or geographical indication

(c) in the case referred to in Article 184a(3)(c), the proprietor of the trademark concerned.

Grounds on which the application for revocation or invalidity is based

According to Art. 184bis (2) C.P.I., revocation may be invoked on the grounds laid down in Article 13 (4) (if the trademark has become in the course of trade a generic designation of the product or service or has however lost its distinctive character) Article 14 (2) (a) (if the trade mark has become deceptive) and Article 24 (for non-use).

According to Art. 184bis (3) IPC, a trademark may be invalidated on the following grounds

(a) the trademark should not have been registered because it does not meet the requirements for registration under Articles 7, 9, 10 (1), 13 (1), (2) and (3), 14 (1) (a), (b), (c-bis), (c-ter), (c-quater), (c-quinquies) and (d);

(b) the trademark should not have been registered because of the existence of an earlier right ex Article 12 (1) (c), (d), (e) and (f)

(c) the application for registration of the trademark was filed by the agent or representative without consensus or a proper-reason.

 

Contents of the application

The application shall contain:

(a) the identification of the applicant and its representative, if any, by indicating the surname, first name, tax code or VAT number, nationality and residence of the natural person or the name, seat and nationality of the applicant legal person or entity, one or more telephone numbers, an ordinary e-mail address and a certified e-mail address, and an address for service;

(b) the identification of the national or international registration designating Italy against which the application is made, by indicating:

1) the owner, the representation of the mark, the number, the filing date and any priority and date of registration

2) the goods and services, grouped according to the relevant classes, against which the application is filed;

(c) the grounds on which the application for revocation or invalidity is based;

(d) the signature of the applicant or his representative.

Where the application is based on an earlier trademark or right, it shall, in addition, contain:

(a) in the case of earlier registered trademarks

1) the indication that it is a national, European Union or international trademark designating Italy, the representation of the trademark, the owner, the number and the filing date of the application and any priority or seniority and registration date

(2) if the trademark has been the subject of a partial assignment, limitation, division, renewal or surrender, the relevant specification;

(b) in the case of trademarks with a reputation, the representation of the trademark and an indication of the geographical extent of that reputation;

(c) in the case of trademarks filed by an agent without consent, in relation to the proprietor’s earlier right:

(1) in the case of registered trademarks, the indications provided for in (a);

(2) in the case of non-registered trademarks, the representation and indication of the territory in which the protection of the right is claimed.

(d) in the case of rights referred to in Article 14(1) (c-bis), (c-ter), (c-quater) and (c-quinquies) of the Code

1) an indication of the nature of the protected right, specifying whether it is a designation of origin, geographical indication, traditional term for wines, traditional specialty guaranteed, registered plant variety name;

2) the representation of the sign, the number and the date of filing of the application or registration or, failing that, the effective date of protection;

3) the indication of the territory in which the protection of the right is claimed (Italy or the European Union) and the normative or conventional references on which the right to protection is based.

The demonstration of the payment of the prescribed fees must be attached to the application.

 

Procedure

Once the fees have been paid, the Office examines the admissibility of the application.

After verification, the Office will notify the parties of the beginning of the proceedings, transmitting the motion for revocation or invalidity and advising them of the possibility of reaching a conciliation agreement within a period of two months from the date of communication of the beginning of the proceedings, which may be extended several times up to one year, upon the joint request of the parties.

In the absence of an agreement, the Office shall assign the holder of the contested trademark a term of 60 days for submitting his observations and for any request for proof of use.

Once the time limit has expired:

(a) if the holder of the contested trademark submits his observations and the request for proof of use, if any, the Office shall transmit them to the applicant and allow him a period of 60 days to reply. After expiry of the time limit, the Office shall grant the trademark holder a further 60 days to file the observations in reply. The request for proof of use of the earlier mark shall always be subject to the admissibility check;

(b) if the trademark holder submits no observations in reply, the Office shall proceed to a decision.

 

Request for Proof of Use

According to Art. 184quinquies of the Industrial Property Code, paragraph 1, in proceedings for a declaration of invalidity based on a trade mark registered with an earlier filing or priority date pursuant to Article 184a, paragraph 3 (b), at the request of the owner of the later trade mark, the owner of the earlier trade mark shall furnish proof that, during the five years preceding the date on which the application for a declaration of invalidity was filed the earlier trade mark has been put to genuine use within the meaning of Article 24 in connection with the goods or services for which it is registered and on which the application is based, or that there are proper reasons for non-use, provided that the registration procedure for the earlier trade mark, at the date of the application for a declaration of invalidity, had been concluded for at least five years.

Where, on the filing or priority date of the later trade mark, the period of five years during which the earlier trade mark was to be put to genuine use has expired, the proprietor of the earlier trade mark shall, in addition to the proof pursuant to paragraph 1, furnish proof that the trade mark has been put to genuine use during the period of five years preceding the filing or priority date, or that there were proper reasons for non-use.

If the earlier trademark has been used in accordance with Article 24 for only part of the goods or services for which it is registered, it shall, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered for that part of the goods or services only.

The aforementioned provisions shall also apply where the earlier trademark is an EU trade mark. In that case, the genuine use of the EU trademark shall be determined in accordance with Article 18 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017.

In proceedings for revocation for non-use of the mark pursuant to Article 24 of the Code, if the holder of the contested mark fails to provide proof of use within the allotted time limit, including any extensions, the Office shall grant the application.

In proceedings for a declaration of invalidity based on earlier marks, if the applicant does not furnish proof of use within the allotted time limit, including any extension thereof, the Office will reject the motion.

 

Decision and costs

At the end of the of the proceedings, applications for invalidity or revocation will be decided according to the chronological criterion of filing the motion.

The Italian Patent and Trademark Office issues its decision within 24 months from the filing date of the application, subject to any suspension periods.

According to Art. 184quater par. 5 C.P.I., At the end of the revocation or invalidity proceedings, if the Italian Patent and Trademark Office accepts the motion, it establishes the revocation or declares the nullity of the registration of the trademark in whole or in part or orders the transfer of the ownership of the registration in the case where the request referred to in Article 184a, par. 4, letter c), has been filed. In the case of an international registration, the Italian Patent and Trademark Office shall communicate the decision to the World Intellectual Property Organization (WIPO).

With the decision, the Office shall provide for the costs in accordance with Article 184c(6) C.P.I., including, within the limit of Euro 600.00, professional representation costs.

The decision is communicated to the parties and it is public.

Pursuant to Art. 184quater C.P.I., the measures declaring the revocation or invalidity of the registration or transferring the ownership of the registration of a trademark shall be recorded in the Register.

 

© THINX Srl – December 2022