Updates on interim measures for intellectual property

The new Article 132, paragraph 4, of the Industrial Property Code and Article 162-bis, paragraph 4, of Law No. 633/1941 on Copyright following the judgment of the Court of Justice of the European Union of 23 April 2026 in Case C-132/25 2 September 2026

In Italy, prior to the aforementioned ruling of the Court of Justice of the European Union, interim injunctions concerning intellectual property remained in effect and did not lose their effectiveness, even where neither party subsequently initiated ordinary proceedings to establish the infringement of the relevant right. This case was referred to the Court of Justice following an interim injunction issued by the Court of Rome in 2018 to protect the figurative trademark “Mò Mò”.

Following the ruling of the EU Court, injunctions and preliminary injunctions must cease to have effect where proceedings on the merits are not commenced within the mandatory statutory time limits—namely, 20 business days or 31 calendar days—unless otherwise ordered by the court.

Now, this legislative change has a significant impact on the precautionary measures of the party benefiting from the preliminary injunction must take. The applicant must now decide whether to commence proceedings on the merits within the aforementioned time limit, without knowing whether the respondent will subsequently file a motion to set aside the injunction. Indeed, if the holder allows this deadline to expire, relying on the opposing party’s inaction, the holder runs the risk that the respondent may wait until the peremptory time limit or filing the main action has expired and then file a motion to declare the injunction invalid within the following 30 days. Consequently, in most cases, the prudent course of action would be to commence proceedings on the merits without delay.

The Italian legislature has accordingly amended the provisions governing industrial and intellectual property through Decree-Law No. 100/2026 of June 12, 2026.

The newly amended Article 132 of the Italian Code of Criminal Procedure, entitled “Advance Application of Precautionary Measures and the Relationship Between Precautionary Proceedings and the Trial on the Merits”, provides as follows (amendments highlighted in bold):

1. The measures referred to in Articles 126, 128, 129, 131, and 133 may also be granted during the patent or registration process, provided that the application has been made available to the public or to the persons to whom the application has been served.
2. If, in issuing the preliminary injunction, the judge does not specify the deadline by which the parties must commence the trial on the merits, the trial must be commenced within twenty business days or thirty-one calendar days, whichever is longer. The period begins to run from the date the order is issued if it was issued during a hearing or, otherwise, from the date of its service. If additional interim measures beyond those described in the petition were requested either together with or in addition to the latter, the time limit shall be calculated based on the order of the designated judge who also rules on such additional measures.
3. If the trial on the merits has not commenced within the mandatory time limit referred to in paragraph 2, or if it is subsequently discontinued, the interim order ceases to be effective.
4. The provisions set forth in paragraph 3 do not apply to emergency orders issued pursuant to Article 700 of the Code of Civil Procedure or to other interim measures intended to anticipate the effects of the judgment on the merits. In such cases, either party may initiate proceedings on the merits.
5. In all preliminary injunction proceedings, the judge may order an expert opinion for the purpose of obtaining preliminary technical guidance.
5-bis. In all preliminary injunction proceedings concerning the unlawful acquisition, use, or disclosure of trade secrets referred to in Article 98, the judge may, upon a party’s motion, as an alternative to the application of preliminary injunction measures, authorize the interested party to continue using the trade secrets provided that the party posts adequate security to cover any damages suffered by the rightful owner. The disclosure to third parties of trade secrets whose use is authorized pursuant to the first sentence is prohibited.
5-ter. In ruling on applications for injunctive relief concerning the unlawful acquisition, use, or disclosure of trade secrets referred to in Article 98, the court shall consider the circumstances set forth in Article 124, paragraph 6-bis. The court shall take these same circumstances into account when assessing the proportionality of the measures.
5-quater. Without prejudice to the provisions of paragraph 4, if the interim measures adopted to protect trade secrets under Article 98 become ineffective, pursuant to paragraph 3, because the trial on the merits has not commenced within the mandatory time limit set forth in paragraph 2, or if they lose their effectiveness due to an act or omission by the petitioner, or if it is subsequently determined that the acquisition, use, or disclosure of the aforementioned trade secrets did not occur, the plaintiff shall be required to compensate for the damages caused by the measures adopted.

Meanwhile, Article 162-bis, paragraph 4, of the Copyright Law now states that:

If, when issuing the preliminary injunction, the judge does not specify the deadline by which the parties must commence the trial on the merits, the trial must be commenced within twenty business days or thirty-one calendar days, whichever is longer. The time limit referred to in paragraph 1 begins to run from the date the order is issued if it was issued during a hearing or, otherwise, from the date of its service. If the trial on the merits has not commenced within the mandatory time limit referred to in paragraph 1, or if it is discontinued after it has commenced, the preliminary injunction ceases to be effective.
4. With respect to emergency orders issued pursuant to Article 700 of the Code of Civil Procedure and other interim measures intended to anticipate the effects of the judgment on the merits—without prejudice to the parties’ right to initiate proceedings on the merits—if such proceedings have not commenced within the mandatory time limit referred to in paragraph 1, or if they are discontinued after their commencement, the orders shall be declared ineffective if, within the mandatory period of thirty days from the expiration of the time limit set forth in paragraph 1 or from the termination of the proceedings on the merits, the party against whom the order was issued files a motion to declare the order ineffective.

The Transitional Regime

For measures issued before the entry into force of Decree-Law 100/2026, the transitional provisions allow the recipient of such measures to file an appeal for revocation or a declaration of invalidity as set forth in Article 669-novies of the Code of Civil Procedure, namely within 60 days. Taking into account the suspension of procedural time limits during the judicial recess, the deadline for filing appeals regarding measures issued before June 12, 2026, is due to expire on September 11, 2026.

Contact us for further information: our professionals are at disposal to assist you in developing the best protection strategy in light of the new Regulation changes.

UPDATE

News