CJEU to address compatibility of Italian anticipatory measures with Enforcement Directive

The Italian Supreme Court has referred to the Court of Justice of the European Union (CJEU) a question on the compatibility of Italian ‘anticipatory measures’ with Directive 2004/48/EC on civil enforcement of intellectual property rights (case C-132/25). The request for preliminary ruling is not yet available officially, but may be accessed through the national litigation.

National proceedings and question referred

In 2018, the Court of First Instance of Rome, by ways of a precautionary order, prohibited M.M. Ristorazione to use the sign “Mò Mò Pizza, Sapori e Salute” and any other sign containing “Mò Mò”. This was done upon a request from Villa Ramazzini s.r.l., who owns the rights to the “Mò Mò” trade mark.

Seeing that Villa Ramazzini was not initiating proceedings on the merits, M.M. Ristorazione requested the court to invalidate the precautionary order. According to M.M. Ristorazione, the other party, having obtained a preliminary injunction, had to initiate proceedings on the merits within the time-limit set by Art. 132(2) of the Italian Code of Industrial Property (CPI).

According to Art. 132(2) CPI, if the judge grants a precautionary measure and does not establish the term within which the parties must begin the trial on the merits, this shall be done within 20 working days or 31 calendar days, whichever is longer. Otherwise, the precautionary measure loses its effectiveness (Art. 132(3)).

Art. 132(2) CPI transposes Art. 9(5) Directive 2004/48/EC (which, in turn, implements Art. 50(6) of the TRIPS Agreement into the EU legal order) into Italian law. Art. 9 of the Directive, ‘Provisional and precautionary measures’, sets the procedure for injunctions and seizure orders in preliminary proceedings, including when this is done ex parte.

In 2020, the Court of Rome rejected the request to invalidate the precautionary order. According to the court, the injunction had been granted not on the basis of Art. 132(1) CPI, but rather on that of Art. 700 of the Civil Procedure Code, known as emergency measures, 'provvedimenti d'urgenza'.

According to Art. 132(4) CPI, the deadline to initiate the trial on the merits does not apply to emergency measures issued under Art. 700 of the Civil Procedure Code and to other precautionary measures suitable to anticipate the effects of a judgment on the merits (referred together as ‘anticipatory measures’). The Court of Rome found that this is compatible with Art. 9 Directive 2004/48/EC and Art. 50 TRIPS Agreement, as both the Directive and the TRIPS Agreement refer exclusively to provisional measures, not to anticipatory ones.

M.M. Ristorazione appealed to the Rome Court of Appeal, which also refused to invalidate the precautionary order. For the Appeal Court, the emergency measures are in line with Directive 2004/48/EC, as Art. 3 therein mandates that available remedies shall be fair and equitable, not unnecessarily complicated or costly, or be such as not to entail unreasonable time-limits or unwarranted delays.

Following this decision, M.M. Ristorazione appealed to the Supreme Court. M.M. Ristorazione alleged that emergency measures, as regulated by the Civil Procedure Code and by the Code of Industrial Property, are in breach of Art. 10 of the Italian Constitution, Art. 9 Directive 2004/48/EC and Art. 132 CPI.

The Supreme Court first reviewed the existing case-law and approaches found in the Italian scholarship. It then decided to stay the proceedings and request the CJEU to clarify whether the regulation of emergency measures under Italian law is compatible with Art. 9(5) Directive 2004/48/EC.

Comment

A mechanism similar to emergency measures (also known as ‘summary proceedings’ or ‘summary decision’) exists in other EU Member States, including for example the Netherlands and Germany.

German law does not automatically include a deadline to initiate proceedings on the merits. However, under Sect. 926 of the German Civil Procedure Code, the defendant may request the judge to set such a deadline. If the corresponding lawsuit is not filed within the prescribed timeframe, the summary decision is set aside. This procedural step is not foreseen in the case of Italian anticipatory measures, discussed above.

In C-53/96 (that is, long before the adoption of Directive 2004/48/EC), a Dutch court asked the CJEU whether an equivalent procedure under Dutch law would be regarded as a ‘provisional measure’ as per Art. 50 TRIPS Agreement. Here, too, the national court’s doubt was essentially whether injunctions granted in summary proceedings must abide to a deadline to initiate a trial on the merits.

While the CJEU’s decision to establish jurisdiction over the TRIPS Agreement was criticized by commentators at the time, the CJEU did find that said measures under Dutch law fell within the definition of provisional measures. The wording of Art. 9 Directive 2004/48/EC is almost identical to that of Art. 50 TRIPS (the main addition being that EU law also prescribes that these measures be available against intermediaries). As also underlined by Recital 22, Art. 9 contains several norms that aim at guaranteeing the rights of the defence, including the requirement that provisional injunctions are followed by a trial on the merits. If the CJEU finds that Italian law lacks sufficient procedural guarantees, the model found in other EU Member States might be under scrutiny too.