Trademark Infringement Remedies in Italy: A Practical Guide to Enforcement Across Civil, Criminal, Administrative, and Customs Channels

When a competitor, distributor, or online seller infringes a trademark in Italy, the rights holder has access to one of the most articulated enforcement frameworks in the EU. Italian trademark protection operates simultaneously through civil litigation, criminal prosecution, customs intervention, and administrative procedures — and effective enforcement often combines multiple channels in a coordinated strategy. This guide explains the operational framework under the Italian Industrial Property Code (D.Lgs. 30/2005), the Italian Criminal Code, and EU customs regulations.

For the broader trademark framework, see our brand identity legal protection guide and our coexisting trademarks guide. For reputation-based opposition under Article 8(5) EUTMR, see our taking unfair advantage analysis.

Civil action and injunctive relief

The primary civil framework for trademark enforcement in Italy operates through the Italian Industrial Property Code (D.Lgs. 30/2005) and the Italian Code of Civil Procedure:

• Article 121 CPI: rights holders can seek injunctive relief against any continuing or threatened infringement, including orders to cease infringing use, withdraw infringing goods from the market, and destroy infringing materials;
• Article 122 CPI: penalty payments (penali) for non-compliance with court orders;
• Article 124 CPI: orders to disclose information about origin and distribution networks of infringing goods;
• Article 125 CPI: damages framework including consequential losses, lost profits, and reasonable royalties;
• Specialised IP chambers: in major Italian courts (Milan, Rome, Naples, Turin, Venice, Bologna, Genoa, Florence, Bari, Catania), handling trademark litigation with sectoral expertise.

Civil action is typically the framework of choice for substantial commercial disputes where the rights holder seeks both immediate cessation of infringement and damages compensation.

Urgent measures and preliminary injunctions

Italian trademark enforcement is particularly effective through urgent measures available before the main proceedings:

• Article 700 Italian Code of Civil Procedure: general urgent measures applicable to trademark infringement, allowing rapid injunctive intervention where serious harm threatens;
• Article 129 ff. CPI: specific industrial property urgent measures including descrizione (judicial descriptive seizure), sequestro (seizure of infringing goods), and inibitoria urgente (urgent injunction);
• Ex parte procedures: in particularly urgent cases, measures can be granted without notice to the defendant, with the defendant having post-grant opportunity to contest;
• Timeline: urgent measures can be obtained in days or weeks, compared to months or years for main proceedings.

The Italian urgent measures framework is one of the most effective in the EU and is frequently used as the opening move in trademark enforcement strategy.

Damages and account of profits

Italian trademark damages framework provides multiple bases for compensation:

• Actual damages: lost sales, price erosion, market dilution caused by the infringement;
• Lost profits: profits the rights holder would have earned absent the infringement;
• Account of profits (retroversione degli utili): under Article 125 CPI, the rights holder can elect to recover the infringer’s profits as an alternative measure of damages;
• Reasonable royalty: minimum compensation based on what a reasonable licensee would have paid;
• Moral damages: in appropriate cases, compensation for reputational harm to the rights holder;
• Costs: the losing party typically pays the winning party’s legal costs.

For famous and reputation-protected marks (Article 8(5) framework — see our taking unfair advantage guide), damages calculations can reach substantial amounts reflecting the brand’s commercial value.

Criminal prosecution

Italian law criminalises serious trademark infringement through the Italian Criminal Code:

• Article 473 Criminal Code: counterfeiting, alteration, or use of distinctive signs of intellectual works or industrial products, with imprisonment up to 3 years and fines;
• Article 474 Criminal Code: introduction into the State and trade of products with counterfeit signs, with imprisonment up to 2 years and fines;
• Article 517 Criminal Code: sale of products with fraudulent signs;
• Article 517-ter Criminal Code: manufacture and trade of goods made by violating titles of industrial property;
• Articles 416-bis ff. Criminal Code: where counterfeiting is organised, mafia-type or organised crime provisions may apply with substantially heavier penalties.

Criminal prosecution is led by the Public Prosecutor (Pubblico Ministero), often triggered by rights holder complaint and investigated by Guardia di Finanza (financial police) or Carabinieri. Criminal proceedings can coexist with civil action, with civil damages claimable as parte civile in the criminal proceeding.

Customs intervention

For counterfeit goods entering or transiting through the EU, customs enforcement is highly effective:

• EU Regulation 608/2013 on customs enforcement of IP rights: enables rights holders to file Application for Action (AFA) with Italian Customs (Agenzia delle Dogane e dei Monopoli);
• AFA scope: covers EU-wide customs intervention against infringing goods at all entry points;
• Detention procedure: customs authorities detain suspected counterfeit goods, notify rights holder, who has time to take action;
• Simplified destruction procedure: for many cases, detained goods can be destroyed without full court proceedings, with the importer’s tacit or express consent;
• Mass procedures: customs enforcement can address large-volume counterfeit shipments efficiently.

Customs enforcement is particularly relevant for luxury brands, pharmaceuticals, electronics, and fashion — sectors targeted by international counterfeiting networks. Italy is one of the most active EU customs jurisdictions for trademark enforcement.

Online enforcement: AGCOM and platforms

Online trademark infringement engages a parallel enforcement framework:

• AGCOM (Autorità per le Garanzie nelle Comunicazioni): administrative procedures for content takedown, with rapid response for online IP infringement;
• DSA (Regulation 2022/2065): notice-and-action mechanisms for illegal content on online platforms;
• Platform-specific procedures: Amazon Brand Registry, eBay VeRO, Alibaba IPP, Meta Brand Rights Protection — each platform provides specific rights holder enforcement mechanisms;
• DSM Directive Article 17: content-sharing platform direct liability framework — see our internet intermediary liability guide;
• Piracy Shield: Italian system for rapid blocking of infringing streaming domains.

For Italian famous brands experiencing online counterfeit listings (fake Gucci on marketplaces, counterfeit Ferrari merchandise, fake Prada listings), the combination of platform-specific enforcement plus AGCOM administrative procedures can produce rapid takedown of substantial volumes of infringing listings.

A coordinated enforcement strategy

Effective trademark enforcement typically combines multiple channels:

• Pre-litigation: cease-and-desist letters, mediation attempts, settlement negotiations;
• Urgent measures: rapid civil intervention to stop ongoing harm;
• Customs: Application for Action to block import of infringing goods;
• Online enforcement: platform takedowns and AGCOM proceedings;
• Criminal complaint: in cases of organised counterfeiting or particularly egregious infringement;
• Main civil proceeding: for damages and substantive injunctive relief;
• Settlement: many enforcement actions resolve through structured settlement agreements.

The choice of channel and sequencing depends on the specific circumstances: type of infringement, scale of damage, identity and resources of infringer, geographic reach, and rights holder business objectives.

How DANDI supports trademark owners

DANDI.media supports Italian and international trademark owners on enforcement strategy and execution:

• Cease-and-desist drafting and pre-litigation strategy;
• Urgent measures and preliminary injunctions in Italian specialised IP chambers;
• Main civil proceedings and damages litigation;
• Criminal complaint coordination with Public Prosecutor;
• Customs AFA filing and customs enforcement coordination;
• AGCOM proceedings and platform takedown coordination;
• Cross-border enforcement coordination across EU jurisdictions;
• Settlement negotiation and coexistence agreements.

For consultation, book directly with Avv. Claudia Roggero or Avv. Donato Di Pelino.

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