An industrial property infringement may require a rapid response, but not every similarity between products, signs, or websites constitutes counterfeiting. If a competitor uses a name close to your trademark, places a product on the market that you believe is covered by a patent, or replicates the appearance of a registered design, the concrete questions concern the cessation of use, the collection of evidence, and the economic damage already produced.
In this guide I explain which elements distinguish a violation from lawful competition, what measures can halt the conduct, and how a claim for damages is formed. We will also see why trademarks, patents, designs, and domain names are not protected in the same way: the starting point is always the actually existing right and its precise scope of protection.
The right to be protected defines the infringement
It is not enough to have been the first to use an idea or a name: one must first understand which title or sign is protected and against which uses. The Industrial Property Code governs, among other things, trademarks, designs and models, inventions and utility models; registration or patenting confers a title, while certain distinctive signs may receive protection even if unregistered when the conditions are met. The text in force of the Code can be consulted in the current version of the Industrial Property Code.
Trademark: the sign, the products, and the risk for the public count
Trademark protection does not concern an isolated word, but the sign in relation to the products or services for which it is protected. An identical sign for identical products presents a different problem from a mere similar sign used for close products or very distant activities. In the second case, the risk that the public might confuse the origin of the products or assume a non-existent economic connection between the businesses assumes relevance.
The comparison must be made as a whole. Denomination, pronunciation, graphic elements, sales channels, clientele, and the products or services concerned can change the outcome of the analysis. Even a trademark registered by the alleged counterfeiter does not automatically render its use lawful: subsequent registration can be challenged if it interferes with a prior right. The discipline of trademarks and other IP rights is contained in Legislative Decree No. 30 of February 10, 2005, published in the Official Gazette of the Industrial Property Code.
Patent and design: the comparison is not merely visual
For the patent, the boundary is marked by the claims, meaning the parts of the title that define what is protected. The competing product must therefore be compared with the claimed technical solution, not with a generic description of the invention or with the mere commercial function of the product. If even an essential element of the claim is missing, the conclusion may change; similarly, an issue regarding the validity of the patent can affect the requested protection.
For registered design, what matters instead is the overall impression produced on the informed user, taking into account the freedom the creator had in the sector. Two objects can share functional characteristics or features widespread on the market without this being sufficient to demonstrate unlawful copying. The deposited representation, the visible parts of the product, and the elements that make the design or model individual become decisive.
Domain name and cybersquatting
A domain can become a distinctive sign in conflict with the trademark. Article 22 of the Code extends the prohibition of adopting a sign identical or similar to another's trademark, when there is a risk of confusion, also to the corporate domain name. Therefore, it is not sufficient to observe who is registered as the domain owner: one must consider the chosen name, the activity carried out through the website, the date and reason for registration, and any potential use to intercept users or offer the domain to the holder of the sign.
The transfer of the domain does not stem from similarity alone. If the name is descriptive, is used for a genuinely different activity, or does not present a likelihood of confusion, the claim requires closer examination. If instead the domain reproduces a trademark with minimal variations and leads to competing offers, the connection between the sign and digital use assumes central weight.
Evidence serves to demonstrate use, scope, and timing of the violation
The evidence must capture the conduct before it is modified. For products and packaging, documented purchases, photographs, catalogs, invoices, and indications of origin are useful; for sites, marketplaces, and advertising campaigns, screenshots showing address, date, content, and connection to the operator matter. The industrial property title alone proves the existence of the right, not the concrete use opposed to it.
One must distinguish imitation from the source of evidence. An advertising message can attest to the sign used, but does not always demonstrate how many products were sold; an acquired sample can highlight the conformation of the product, but not the entire supply chain. This distinction is important both for requesting cessation and for quantifying damages, because remedies may require different evidentiary elements.
Specific judicial measures are available where evidence is held by the opposing party. Article 129 of the Code governs description and seizure of infringing objects, production equipment and evidence concerning the infringement and its extent, while protecting confidential information. These measures relate to identified facts and evidence rather than authorising an indiscriminate search of another party’s documents. Article 128 instead concerns preliminary expert proceedings under Article 696-bis of the Italian Code of Civil Procedure, which have different conditions and purposes.
Injunction and recall: stopping use before the final judgment
The injunction aims to stop the infringement, not to calculate damages already accrued. In precautionary proceedings, Article 131 of the Code allows for urgent measures when the asserted right and the hazard deriving from delay are adequately represented. The measure may concern production, marketing, advertising, the use of the sign, or other conduct continuing the harm.
Urgency is not automatic. Current product distribution, an impending trade fair, an online campaign, loss of control over trademark positioning, or possible dispersion of evidence can explain why waiting for the judgment to conclude is not sufficient. However, the plausible existence of the right and a concretely identified violation remain essential: a precautionary motion does not replace proof of the title nor does it single-handedly resolve a technical doubt regarding the patent.
The judgment may order further corrective measures. Article 124 of the Code allows, once the infringement is established, to order an injunction and the withdrawal from commerce of the things constituting it; in appropriate cases, removal, destruction, or assignment of goods also come into play. The measure must however be proportionate and linked to the removal of the effects of the unlawful act, rather than a punishment disconnected from the infringed right.
Cessation and compensation are distinct claims. It may be a priority to block ongoing use even when the amount of damage is not defined; conversely, now-ceased use does not exclude the claim for damages for the prior period. Directive 2004/48/EC requires Member States to provide effective remedies against infringements and distinguishes injunctions from rules on prejudice relief: the text is available in the European directive on the enforcement of intellectual property rights.
How counterfeiting damages are quantified
Compensation is not an automatic sum tied solely to the infringement. Article 125 of the Code recalls civil law rules on damages and requires linking the claim to the consequences of the conduct. Actual loss concerns losses actually suffered, such as costs necessary to react to the unlawful act when conditions are met; loss of profits concerns instead the gain the right holder lost due to counterfeiting.
Lost sales require a reasonable connection to the unlawful act. Not every sale by a competitor equates to a sale subtracted from the right holder: price, geographical market, production capacity, alternative products, trademark notoriety, and consumer behavior can all have an impact. However, the judge may consider the profits made by the infringer and the royalties that would have been due for a license, i.e., the hypothetical price of authorization for use.
The hypothetical royalty is a minimum guiding criterion, not a truly concluded license. It serves to estimate the economic value of unauthorized use when lost sales cannot be precisely demonstrated. To be credible, the parameter must rely on elements referring to the market, the duration of use, the territory, the type of product, and the value of the right. An abstract percentage, devoid of comparison with the concrete case, does not clarify the damage.
The infringer's profits do not always coincide with turnover. One must distinguish revenues from margins actually obtained thanks to the infringement and evaluate what part of the economic result depends on the unlawfully used sign, patent, or design. Non-pecuniary loss as well, when alleged, cannot be taken for granted: a prejudice different from mere economic loss must emerge, such as injury to the image or the distinctive function of the sign.
Assessment may use presumptions based on case files when damage cannot be demonstrated in every detail, but this does not eliminate the need to offer a concrete basis. Sales data, available accounting documentation, prices, comparable license agreements, and duration of conduct can become important elements. The objective is to reconstruct the prejudice caused by the infringement, not to attribute a punitive amount.
Cease-and-desist letter, agreement, and legal action: alternatives with different effects
A cease-and-desist letter can be useful if it precisely identifies what must cease. Indicating the invoked title, the contested sign or product, the channels through which use occurs, and the essential requests allows the opposing party to understand the problem. A generic contestation, instead, favors evasive responses and fails to clarify whether the stop of sales, the modification of the sign, the removal of online content, or the transfer of the domain is being requested.
An agreement can reduce uncertainty, but must not be confused with involuntary waiver. Product renaming, gradual withdrawal of stock, a license, or coexistence rules produce very different effects. Coexistence is only evaluable if the parties can clearly demarcate signs, products, territories, and methods of use without maintaining the risk of confusion intended for elimination.
Legal action becomes central when conduct continues or evidence risks dispersion. In that forum, claims for declaratory relief, injunctions, description or seizure, corrective measures, and damages can coexist, but each requires its own prerequisites. Amendments to the Code introduced by Law No. 102 of July 24, 2023, affected various areas of industrial property; therefore, reference should be made to the text of Law No. 102 of 2023 alongside the current version of the Code.
What elements to bring immediately to the center of the issue
Chronology can change the meaning of the dispute. Useful items include the filing, registration, or grant date of the title, classes and products or services indicated for the trademark, the representation of the design, the patent claims, early evidence of the contested use, and available data on its dissemination. If the issue concerns a domain, the exact address, reachable contents, and commercial use connected to the site are also needed.
It is not advisable to confuse ownership and practical availability. The acting party must be able to demonstrate they hold the right or have the power to enforce it; moreover, assignments, licenses, co-ownership, and territorial limits can affect the formulate requests. If you wish to discuss your case, you can contact me with the essential documents and already available evidence.
Frequently Asked Questions
Can I immediately request the blocking of a counterfeited trademark or product?
Yes, when the prerequisites for a precautionary measure are met. Urgent injunctions aim to halt ongoing conduct that delay could render more harmful. However, you must be able to indicate the invoked right and the contested use with sufficient precision: urgency does not replace proof of registration, patent, or concrete interference.
To obtain compensation, must I prove every lost sale?
No, but a concrete basis is needed to estimate the damage. The judge can consider sales, margins, duration of the infringement, infringer's profits, and hypothetical license fees. Thus, an impossible reconstruction is not required, while stating that damage exists is not enough: it must be linked to available data and the contested conduct.
Does trademark registration automatically exclude challenges?
No, subsequent registration does not in itself neutralize a prior right. The conflict must be evaluated in relation to signs, products or services, relevant dates, and the risk of confusion. Furthermore, a registration can be subject to a claim of nullity or forfeiture under the conditions provided by the Code.
Must a domain name similar to my trademark be transferred?
Transfer requires elements beyond literal similarity. The distinctive function of the trademark, the risk of confusion, the website's content, the activity carried out, and the reasons for domain registration all matter. Use directed at the same market presents a different problem from a domain used for a genuinely descriptive and non-confusing meaning.
Can I obtain both cessation of use and damages?
Yes, the two remedies can be requested together, because they address different needs. The injunction looks at the continuation or repetition of the infringement; damages concern prejudice already caused. However, the required evidence is not identical: to quantify damages, elements regarding duration, dissemination, and economic consequences of the contested use are also necessary.
Essential normative references
The primary reference is the Industrial Property Code, Legislative Decree No. 30 of February 10, 2005, particularly for rights on trademarks, designs and models, patents, and judicial enforcement tools governed by Articles 124, 125, 128, 129, and 131. For the European framework of remedies against infringements, the reference is Directive 2004/48/EC on the enforcement of intellectual property rights.