ITALIAN NATIONAL REPORTS - Università Degli Studi Di Palermo

ITALIAN NATIONAL REPORTS – WASHINGTON 2010
THE CARDOZO ELECTRONIC LAW BULLETIN, VOL. 16(1) - SPECIAL ISSUE
context other than by principal claim or counterclaim. Indeed, Art.
2:401.2, second sentence, establishes that decisions arising from such
disputes do not affect the validity or registration of the IP rights
questioned as against third parties.
The ALI principles do not adopt the model of the US Court of Appeal
for the Federal Circuit Voda v. Cordis decision, and rather permit the
competent court to adjudicate claims arising under foreign laws (Art.
211.1). Indeed, those principles limit the effectiveness of a court
decision holding invalid the registered rights granted under the law of
another state. Hence, Art. 211.2 of the ALI principles states that such a
decision shall be effective only between parties, but does not affect the
validity or registration of the IP rights in question as against third parties.
The same result is reached under Arts.213.2 and 213.3 of the ALI
principles, concerning proceedings to obtain a declaration of invalidity
of registered IP rights.
I.B.2.D Italian case-law
As for the Italian case law related to the rules just recalled, it is relevant
to remember the following decisions.
(i) The Italian case-law generally accepts jurisdiction in cases concerned
solely with the issue of infringement of foreign IP rights 65 .
(ii) In Italy whenever a court declines its jurisdiction by reason of
Article 22.4 with respect to validity issues related to foreign IP rights,
then it also declines its jurisdiction with respect to claim of non
infringement related to the same foreign IP rights, raised as a defence 66 .
(iii) The court of first instance of Milan, with a decision of August the
6.8.2008 67 applied Article 22.4 to a copyright infringement case. Indeed,
it is pacific that Article 22.4 does not concern either copyright either IP
rights infringements claims 68 .
(iv) Before the ECJ‟s GAT decision the Italian jurisprudence did not
apply Article 16.4 of the Brussels Convention, now Article 22.4 of the
Brussels Regulation, to validity issues raised as a defense or incidentally
65 See Trib. Roma, 1 February 2000, in AIDA (2000), n.716, p.870. On this decision see N.
BOSCHIERO, „Art. 54 (Beni immateriali)‟, Commentario del codice civil, Scialoja-Branca (Bologna,
Zanichelli 2010) fortchoming.
66 See Trib. Milano, 10 December 2007, in Giurisprudenza annotate di diritto industriale (hereafter,
GADI) (2007) n.5177, p. 1103; Trib. Milano, 24 January 2004, cit., p.788; Trib. Milano 23 May 2002,
in GADI 2002, n.4437, p. 912. On these decisions see N. BOSCHIERO, loc. cit. n. 65, at p. 18.
67 Ready to be published in AIDA (2009), on which see N. BOSCHIERO, loc. cit. n. 65, at p. 18.
68 See all other Italian judgements on 22.4 hereafter mentioned and for all N. BOSCHIERO, loc. cit. n.
36, at p. 11, p. 94.