“Late Reaction” and Irreparable Harm in Italian IP Interlocutory Proceedings

A much debated issue in Italian IP litigation is whether a “late reaction” against alleged infringements by the right-holder should affect his chances of obtaining an urgent interlocutory relief. Precedents suggest that the right-holder will be affected. However, a recent patent infringement case decision by the Turin IP Court (Feb. 21, 2013, case 4B – F. B. vs K. and al.), confronting that issue, takes a different view.

In the above case law, an Italian company, claiming infringement of one of its patents, had filed an urgent motion for an ex parte search of the alleged infringer’s premises. The appointed Turin Judge had provisionally granted the search.

At the following hearing, the respondent had sought revocation of the ex parte order, arguing, among other things, that the allegedly infringing product had been already on display at trade-shows for almost two years prior to the filing of the motion. The patentees’ failure to act during that time, according to the respondent, showed lack of urgency – periculum in mora, literally meaning “danger in delay,” which is one of the legal requirements for awarding urgent relief under the Italian legal system (largely corresponding to the “irreparable harm” requirement used in most Common Law legal systems).

The lack of urgency exception was rejected by the presiding Judge, who confirmed the ex parte order. In citing reasons, the Judge first noted, almost in passing, that there was no evidence that the patent holder could have become aware of the infringement from the display of the infringing product at trade shows. However, the Judge’s main point was that the very notion that the lack of urgency could be inferred upon by a “late reaction” of the right-holder was incorrect.

That notion, in the Judge’s opinion, has no relationship with the purpose that periculum in mora serves within the legal system, i.e. ensuring that urgent reliefs in the framework of summary proceedings are granted in cases where the average length of ordinary proceedings on the merits would affect the effectiveness of the protection afforded by the law to IP rights. Accepting it would ultimately result in making the victim of the infringement co-responsible of the harm suffered, for failing to react promptly. Such implication would have no basis in the legal system.

What is essential in the assessment of “danger in delay” or periculum in mora according to the Turin Judge, is that the alleged infringement is still going on. If there is an infringement in progress at the time of the application, regardless of when it started or became cognizable, the “danger in delay” should be presumed, because the infringement of IP rights, as a general rule, involves an irreversible severing of client relationships and a devaluation of the right-holder’s goodwill, i.e. an irreparable harm. This presumption would be, however, without prejudice to the alleged infringer’s right to prove that, in the specific case, there is no such harm to an appreciable degree.

In providing further reasons for the dismissal of the exception, the Turin Judge noted the absence of any statutory deadline for instituting urgent proceedings. In addition, he cited that no acquiescence could possibly be presumed from delay in the commencement of legal action under the general principle of legal irrelevance of silence.

The Judge reasoned that the time lapse during the infringement period could have affected the granting of urgent relief only if the failure to act by the right-holder had resulted in such irreversible harm as to render the granting itself pointless. A “late reaction,” he added, might also theoretically come into play as a form of contributory negligence under Article 1227 of the Italian Civil Code, reducing the amount of damages that can be recovered. That, however, would be a matter for merits proceedings, where damages would be discussed.

There is little doubt that, in the ongoing conflict between IP right- holders and alleged infringers, the decision from the Turin IP Court has created a favorable precedent for the right-holders.