Life as an IP Lawyer: Milan

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...


For the sixth in the series, we travel a couple hours east by air to Milan, Italy where Elena Varese at DLA Piper dispels some notions about Italian court delays, the joys of being an expert in various fields and wine tasting with Advocate General Cruz Villalón.

What can you see from your office window right now?

Our Milan office is located in the financial heart of Milan, right in front of the Stock Exchange building and in the city centre. The view from my office window is on the old roofs and green terraces. I can also see a white church tower and often beautiful sunsets.

When did you know that you wanted to pursue a career in IP?

I always dreamt about being an art critic, but I thought it was a very uncertain path. Then, I started the Law Faculty in Genoa and discovered that IP was a good way to keep alive my passion for art, fashion and music. I signed up to a specialised intellectual property course at the University of Genoa and wrote my two dissertations on Copyright. After graduation I undertook my LLM in IP in London, University College (UCL) [Elena was in the AmeriKat's class all those years ago]. In 2008 I moved to Milan and started to work in the IP department of an international law firm. I think I am lucky, as I discovered relatively soon that I wanted to become an IP lawyer and made all the plans to put this in practice, since my days at the University.

Walk us through a typical day...

I arrive in the office around 9 am, then I start reading e-mails and legal updates on specialized online directories and blogs. My work is quite various and mainly involves drafting court briefs in different matters from use of music in videogames, trademark rights over titles of magazines, comparative advertising, parallel imports of alcoholic beverages, copyright and designs on fashion creations or furniture or search orders on tissue-making machines. I often speak in fashion law lectures and seminars and I am a regular lecturer at Istituto Marangoni. I tend to leave the office (on average) around 8.30 pm, although sometimes I finish later or I keep working from home. I forgot to mention that on Thursdays and Fridays during the lunch break I have my Yoga and Pilates classes!

What are the key differences in your system that clients/other lawyers from outside the jurisdiction find surprising or strange?

We have some unique provisions.  For instance, for unregistered trademarks or the protection of items that are produced on an industrial scale, where the higher threshold of artistic value should be met to trigger copyright protection. In addition, applications for national IP rights could be enforced in Italy without waiting for their grant.

Finally, in 2011 opposition procedures were introduced in Italy, meaning that published trademark applications can be opposed before the Italian PTO (UIBM), but only on a limited number of relative invalidity grounds (earlier rights arising from unregistered trademarks, company or domain names and well-known trademarks are excluded). Once the new EU Directive provisions will be implemented into Italian Law, UIBM will be able to handle the whole range of invalidity grounds (both absolute and relative), as well as revocation actions against granted trademarks.

What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

We are living in an increasingly globalized world and I would say that the main challenges in IP for the younger generations are triggered by Internet, social media and new technologies, where we need to adapt our old tools of law to new creations, forms of infringement and remedies.

There is also another big challenge old and new generations are called to, both as individuals and as law firms: pursuing effective strategies to retain, promote and develop women lawyers. Many women work in IP in Italy and we should be an example of innovation not only for the kind of law we practise, but also for the culture we preach.

View from the terrace over Milano
What are the misnomers that people have about IP practice in your jurisdiction?

Let me discredit a legend: IP proceedings are not as long as one might expect in Italy. Interim proceedings are quite efficient and sometimes it is not necessary to start proceedings on the merits (which last on average three years). In addition, courts are increasingly recognising non-negligible damages to right holders. I am not saying the system is perfect, but IP cases are decided surely faster and in a more effective way than ordinary cases.

If you could change one thing about IP practice in your jurisdiction, what would it be?

Encouraging even more young people to study, practice and love IP!

What gives you the biggest thrill in your job?

What I like the most is that you have always to become expert in different fields, to understand the business of your clients: from wine regulations to toys, from handbags to pharmaceutical preparations, from architecture to cosmetic products. The issues that you face are always diverse and it is good to have the possibility to discuss them also with colleagues and clients from different countries and backgrounds.

What are the top trends or cases that we should be looking out for in your jurisdiction in 2017?

Some recent decisions of the Court of Milan granted copyright protection to a wider range of industrial items, including the shape of the well-known Moon Boot and of the Ty Nant water bottle. As to the Moon Boot case, it is one of the first times that a fashion item is granted with copyright protection, which was traditionally accorded to furniture or jewellery. I see more of these cases coming for the next future.

Also, there is much movement on the new case-law developments on the liability of Internet service providers. In particular, Italian courts should provide their view on the national implementation of the Telekabel decision of the CJEU, clarifying to which extent and under which circumstances non-specific blocking orders for copyright infringement are available to copyright holders. Further, courts should specify which technical measures could be taken by ISPs to block the infringing contents.

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

Commitment, incisiveness, passion for what you do and… sense of humour!

What are you going to/what did you eat for lunch today?

A salad with fresh tomatoes and few slices of San Daniele ham.

What other jurisdictions do you work with the most in your practice?

In a nutshell: US, UK and Germany, also in terms of interoffice work.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Lawyers should increasingly become business partners with their clients. To do so, they are called to understand their clients' market. This is the main driver that will reshape our profession in the next future.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

Here the list is long: London, where I have lived for two years and studied IP, but I had never the chance to practice. Beijing, to better understand the key issues of enforcing IP rights in such jurisdiction. Luxembourg, to work at the CJEU and be part of its decision-making process.

If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be and why, and where would you take them?

I would say Advocate General Cruz Villalón, who was involved in some of the most important IP cases before the CJEU. I would be interested to understand how he makes his researches and which will be the upcoming hot topics of the CJEU's decisions. And what a question: I would surely bring him to an Italian wine tasting (I forgot to mention that I am a qualified sommelier and that this passion also started while I was involved in an IP case regarding a well-known sparkling wine).
Bone marrow and risotto...yum!

What is the best piece of advice you have ever been given?

A serious one and a funny one. As to the first, I will quote one of my clients, who said that she did not like "No" lawyers, but counsels that were able to find creative and practical solutions to minimize risks. I always try to follow this, but I have no magic wand! As to the second, I would surely quote my former flatmate Nura, who had a golden rule: "Better overdressed than underdressed". I have never put this last one in practice, as I often change my shoes as soon as I get into the office.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?

I am originally from Genoa, but I have been working for 9 years in Milan. There is a lot going on in Milan and it is difficult to make a choice. I would highly recommend to see San Maurizio al Monastero Maggiore (the Sistine Chapel of the North) with its wonderful paintings by Bernardino Luini and to make a walk in the Navigli area. Coming to food, you should definitely try the Milanese "risotto al salto with ossobuco" (i.e. a sort of crispy risotto with marrowbone). Finally, go to Cantine Isola, to drink a good glass of wine in a cosy and old atmosphere.
Life as an IP Lawyer: Milan Life as an IP Lawyer: Milan Reviewed by Annsley Merelle Ward on Friday, June 09, 2017 Rating: 5

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