AC Milan scores against Marriot Hotels

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The football club from Milan filed its logo in 2013 in the European Union for various products and services, among which class 43. However, the application in class 43 finds resistance, from AC Hotels, not the most usual opponent for AC Milan.

The AC-element is the most dominant element of AC Hotels and they have to keep AC-trademarks away in class 43, the most important class for AC Hotels. Besides their logo and the wordmark AC HOTELS BY MARRIOTT, their best weapon is the wordmark AC.

But the opposition is rejected. The trademarks are sufficient different. The only corresponding element is AC. According to EUIPO, “the letters AC are negligible elements due to their minuscular size and position in the middle of the other letters in the contested sign, and are not noticeable at first sight, considering also that this complex sign has other visually outstanding elements and, therefore, it is very likely that the letters AC are being disregarded by the relevant public.”

On 19 June 2019, the EU General Court ruled that the EUIPO had been correct in granting registration of the figurative sign that Associazione Calcio Milan SpA (AC Milan) had applied for. [Case T‑28/18].

FERRARI 250 GTO IS A WORK OF ART PROTECTED BY COPYRIGHT .

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The Court of Bologna, Section specialized in business matters, has recently added the protection of copyright to the model of Ferrari, perhaps the best known and most appreciated ever: the 250 GTO.

The number, 250, stands for the displacement of each cylinder in cubic centimetres of the V12 3000 cc engine displacement. GTO stands for "Gran Turismo Omologata". This acronym will not be used for several years until the presentation in 1984 of the Ferrari 288 GTO.

According to the Court, "the personalization of the lines and aesthetic elements have made the Ferrari 250GTO a unique example of its kind, a true automotive icon". "Its artistic value has found objective and generalized recognition in numerous awards and official certificates", in "copious publications" and in the "artistic" reproduction on coins and in the form of "sculptures", periodically exhibited in museums.

The Court has thus issued an order prohibiting the defendant to reproduce the form of the 250 GTO in rendering and in car models.

The resistant company was in fact ready to launch on the market a dozen replicas of the 250 GTO, at a price of about 1 million euros each, which reproduced the legendary model of the '60s.

PEAR TRADEMARK IS NOT CONFUSING WITH APPLE

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The EU Court recently ruled on the visual and conceptual similarity between brands and, reversing the decision of the EUIPO on this point, found that the well-known Apple brand and the Pear brand cannot be confused with each other.

The story takes its cue from the opposition presented by Apple to the application for registration of the European figurative mark 'Pear', filed by Pear Technologies Ltd. Following the acceptance of the opposition, the latter lodged an appeal before the EUIPO, which confirmed but the first decision. Consequently, Pear Technologies challenged the provision before the EU Court which denied the existence of a similarity between the two signs, comparing them both visually and conceptually.

At first the EUIPO Board of Appeal recognized a remote degree of similarity between the two signs, as both represented rounded shapes of a fruit with the related stem / leaf in an identical position but the Court then came to a different conclusion.

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The judge in fact observed that the two signs are visually very different from each other: in fact, they represent two distinct fruits and the one (the Apple brand) constitutes a solid form, while the other (Pear) is a set of separate objects between them; moreover, the element in the upper right corner represents in one case a leaf (Apple) and in the other a stem (Pear); finally, the word element of the Pear brand cannot be underestimated, as it has significant dimensions with respect to the shape, a different color, a particular font and is in capital letters. In conclusion, the judge ruled that the reputation of the earlier sign does not matter in a similarity judgment, and that the marks in question are visually different.

From a conceptual point of view, the Court overturned the conclusions of the Board of Appeal EUIPO, emphasizing that there is conceptual similarity only when two signs evoke images having a similar or identical semantic content.

In the present case, the EUIPO had at first considered that the two marks represented two distinct fruits but that however they were similar for biological characteristics but the court held that the signs in question evoke the idea of a certain fruit, while they recall the general concept of "fruit" only indirectly.

Secondly, he reiterated that, in many states, members of apples and pears are used in proverbs as examples of different things and not comparable, and the possible similarity in size, color or consistency (characteristics that, moreover, share with many others fruits) is however an element that can be perceived by the public only in the context of a very detailed analysis, without considering that it is unlikely to assume that the consumer is aware of their origin from the same family of plants.

Based on these considerations, therefore, the EU Court annulled the decision of the EUIPO Board of Appeal, recognizing the possible influence exercised by the reputation of the earlier trademark.

EBAY JUDGED RESPONSIBLE FOR LATE SCAM REACTION

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For the first time, a judgement by the Court of Milan establishes that eBay must reimburse users for the scams suffered when they buy online.

In the case analysed by the Court of Milan, 150 people had bought cellphones at bargain prices from a user on eBay, that were never delivered.

Some of them had finalized the purchase after the seller had already been reported to eBay by other users.

The judge was the first to correctly apply the law 70 of 2003 on the protection of consumers , according to which the provider assumes the responsibility of damages if the provider does not immediately act after having been informed by user. In this case, eBay took three months to close the scammer's account.

In dozens of previous cases, providers have always been considered not responsible because it was established that users should provide with a formal report, by registered mail. But the judge in Milan assessed that the normal reporting tool provided on the web by eBay itself was sufficient.

For its part, eBay has made it known that it will appeal the judgment and underlines how the judge limited himself to acknowledging the reimbursement but not damages and how he clarified that eBay cannot be considered responsible for the activities of the users.

THE "BREXIT BEER" CASE.

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On January 30, 2019 EUIPO Grand Board of decisions was recently faced with the case of the application of the “Brexit” Trademark. The case concerns the eligibility for registration of the figurative sign “BREXiT” for ‘energy drinks containing caffeine; beer’ in Class 32.

 The application was refused by the examiner for lack of distinctiveness and against public policy as it was pointed out that the relevant public includes all consumers in the EU as they frequently encounter the term through the mass media and the internet.

With respect to the infringement of public policy or to accepted principles of morality the GB found that word ‘Brexit’ denotes a sovereign political decision, that was taken legally and has no negative moral connotations; it is neither an incitement to crime, nor an emblem for terrorism or a byword for sexism or racism. The word alone does not express an opinion. The fact that part of the UK public may have been upset by a controversial decision taken democratically does not constitute an offence. The GB therefore concluded that the sign cannot be deemed to be contrary to the accepted principles of morality, in and of itself, nor when used as a brand for the goods applied for.

Nevertheless, the term was, already at its filing date, so well-known to consumers as the name of an event of a historical and political nature that it would not be associated, prima facie, with specific goods originating from a specific trader. It may only acquire distinctiveness if consumers are sufficiently exposed to it in a trade context. Moreover, the colours and font are unable to divert the attention of the public away from the non-distinctive message conveyed by the word. The background evoking the Union jack accentuates this message. For the above reasons, the GB refused the application and dismissed the appeal.

NIKE'S ATTEMPT TO REGISTER THE WORD FOOTWARE

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Late last month, Nike filed an intent-to-use trademark application for registration with the U.S. Patent and Trademark Office (“USPTO”) for the word “FOOTWARE” – for use in connection with sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices; electronic devices and computer software that allow users to remotely interact with other smart devices for monitoring and controlling automated systems,” among other hardware and software products and services.  

It appears that Nike has tried to extend the registration to class 25 (i.e., the trademark class that covers shoes). Well that is a registration that not even Nike likely would not obtain, because the mark would be deemed descriptive of the products that refer to shoes, and thus, not registerable. 

It appears that Nike will start to brand any smart shoes as FOOTWARE as opposed to FOOTWEAR. Judging by just how famous and powerful its “Just Do It” and swoosh marks are, the new trademark just might catch on, and ultimately, serve to identify Nike’s smart shoes as a whole (and not just their tech components). As for the application, itself, it is currently pending review by the USPTO.

If the company can win over the USPTO on this one (and if the similar proceedings currently underway before the UKIPO are any indication, there’s a chance it will be able to), it might walk away with not just a major win but the beginning of a pretty striking trademark and branding scheme.

EU Trademarks and the Brexit

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The UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.

In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.

There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.

When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.

The full text can be found here.

UNKNOWN BANSKY IS A REGISTERED TRADEMARK.

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The Court of Milan has recently expressed itself on the protection of the works of the street art artist known as Banksy, whose identity is, as many will perhaps know, unknown.

 The case was commenced by Pest Control Office Ltd which is the company that protects the artist's rights. Pest Control Office is also the owner of certain trademarks ("Banksy") but also of the distinctive signs that represent some of his most famous works, such as the little girl with the red balloon and the flower launcher. Pest Control therefore sued 24 Ore Cultura s.r.l. complaining the infringement of its trademark rights by the Sole 24 Ore that organized the exhibition “The art of Banksy. A visual protest ".

 According to Pest Control, the title of the exhibition violated Basnky's rights on the same registered trademark. Likewise the violation would have been perpetrated through the use of images of the little girl with the red balloon and of the flower thrower in the promotional material of the exhibition.

 On one hand, the Court considered the use of the signs in question on the merchandising of the exhibition to be unlawful, as a mere commercial use for the promotion of generic consumer products without relevance to the exhibition, and therefore not considered as a legitimate descriptive use of the other people's brand.

 On the other hand, instead, the Court considered that the use of the Banksy sign and those corresponding to the aforementioned works in the promotional material of the exhibition constitutes a lawful use of the brand of others, having a merely descriptive purpose of the exhibition itself.

 The Court also rejected the defendant's defense based on the fact that the owners of the exposed Banksy works (aliases of the multiples of his street art works sold by him) had expressly granted the defendant also the right to reproduce these works.

 In fact, according to Italian copyright law, "the transfer of one or more copies of the work does not matter, unless otherwise agreed, the transmission of utilization rights, ". In this context, the Court stated that, "Case Law has already made clear for some time that even the photographic reproduction of a figurative work of art in an exhibition catalog represents a form of economic use of the pictorial work and falls within the exclusive right of reproduction reserved to the author ”.

 Notwithstanding the foregoing, the Court ruled that unauthorized reproduction of the works in the catalog also constituted unfair competition to the detriment of the defendant. This case, in fact, requires not only the unlawful conduct, but also that this can actually cause damage to the competitor who complains about the offense.

 Having therefore ascertained that the only offense attributable to the defendant is the use of the appellant's trademarks on merchandising products, the Court inhibited the further marketing of the merchandising products, with the setting of a penalty sentencing of the defendant to pay part of legal fees incurred by the Recurrent.

LETS MEET IN BOSTON! INTA 2019

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INTA is the largest and most influential congress between brand owners and intellectual property (IP) professionals from around the world and across industries. Join us for our 141nd Annual Meeting in Boston, Massachusetts, May 18-22, 2019.

Our team is waiting for you at the 141th Annual INTA Meeting, in Boston 18-22 May 2019. To schedule an appointment, write us at info@tsclex.com

THE DISTINCTIVENESS OF THE "OSCAR" TRADEMARK

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With the approach of the Academy Award better known as "the Oscar" it may seem useful to remember the events related to the brand that bears the name of the well-known film award.

The Oscar was awarded for the first time May 16, 1929 and the nickname was probably attributed by Margaret Herrick, an employee at the Academy of Motion Picture Arts and Sciences, who saw the statuette and said: "It looks just like my Uncle Oscar! "

The Oscar is a registered trademark of the Academy of Motion Picture Arts and Sciences and a few years ago, the Italian Sommelier Association was convicted in court before the Court of Rome guilty of having established the "Oscar of Wine".

In 2016, the Italian Supreme Court confirmed the validity of the Oscar Trademark with reference to the film industry, consequently attributing to the owner, the Academy of Motion Pictures, Arts and Sciences (AMPAS), full rights to its exclusive use.

On the other hand, the Court declared the Oscar trademark lapsed for vulgarization in relation to services of different nature, in this case the services related to education and entertainment in the Class 41 of the Nice Classification. The phenomenon of vulgarization occurs when a brand is no longer used to identify the products of an entrepreneur from those of another entrepreneur but, simply, to identify the product (regardless of who produces it).

The Supreme Court has established that in order to ascertain whether the Oscar trademark is vulgarized is the context in which it is used.

If used to identify an award ceremony the Oscar trademark is fully valid. But, used in other contexts, the term rises to a common word that identifies a prize or an event linked to excellence.

THE DIFFERENCE BETWEEN SIMPLE AND ARTISTIC PHOTOGRAPHY

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Recently the Court of Milan has again expressed itself on the notion of artistic and simple photographs.

The case was brought by a photographer alleging the infringement of the copyright of a photograph entitled "Human Feelings as Drugs", consisting of the production of photographs, prints and posters reproducing medicine vials in various colors, bearing emotional labels "Empathy", "Hope", "Love", "Peace" and "Joy". The artist intended to spread a message of taking "feelings as medicines", so as to "allow the patient an instant reawakening of perception and a reintegration within the vital flow of emotions".

Plaintiff complained an illegal reproduction of his photograph through a series of pendants - matched with necklaces and bracelets - that would have reproduced their own phials, with identical words reproduced on the labels and asked for an injunction, the award of damages and publication of the decision.

The Court stated that in the matter of photographic works, the artistic character presupposes the existence of a creative act as an expression of an intellectual activity compared to the mere material technique. The reproduction of the photographer must transmit a message that is further and different from the objective crystallized representation, consisting in a subjective interpretation suitable to distinguish a work among other analogous ones having the same representation. The requirement of the creativity of the photographic work exists whenever the author has not limited himself to a reproduction of reality, but has inserted into the picture his own imagination, taste, and sensitivity, so as to transmit his emotions.

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With respect to photography, the artistic nature of reproduction can be inferred regardless of the subject reproduced.

In the case under examination, the Court has excluded the artistic nature of the images, since it is impossible to recognize precisely those aspects of originality and creativity that are necessary for recognizing full protection under Italian Copyright Law. Plaintiff did not indicate the manner in which the photograph was shot or a selection of lights or even specific doses of light and dark tones.

The Court also dwelt on the further infringement of copyright as an overall artistic work excluding the plagiarism of the defendant as it found that the comparison between the two works highlighted certain important differences between the two artistic works.

THE NEW EU REGULATION ON GEOBLOCKING

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On 3 December 2018 Regulation (EU) 2018/302 entered into force intruducing measures to prevent geographical blocking and other forms of discrimination of customers based on nationality, place of residence or place of establishment within the internal market .

This is an important measure that contributes to the creation of the Digital Single Market that will support the development of cross-border e-commerce by breaking down unjustified geographical blocks, put in place by some suppliers of goods and services, which can give rise to discriminatory commercial practices.

In particular, the owners of e-commerce sites:

1. will have to remove any unjustified blocks, based on nationality, in order to allow users access to theri website;

2. redirect to another website must be authorized by the User by express consent to redirect;

3. purchase forms (telematic order forms) must give the possibility to send the order to all Users of another Member State.

Furthermore, companies will not be able to apply discriminatory prices to consumers:

• in the sale of goods to be delivered in a Member State where the merchant offers the shipment or which is collected in a specific place agreed with the customer;

• in the sale of electronically supplied services, such as cloud computing;

• in the sale of services that consumers receive in the place where the merchant operates, including staying in a hotel, renting a car or participating in a sporting event.

However, the regulation does not provide for the harmonization of prices at Community level and consequently traders will remain free to set prices, provided they are non-discriminatory.

It is important that Consumers and Companies are aware of their rights, their duties and the limits of the Regulation, which intends to contribute to improving the market without impacting or burdening operators by creating fair access conditions.

THE TRADEMARK CASE OF "THE PIZZERIA DA MICHELE"

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Recently, the specialized IP section of the Court of Naples dealt with the case of the heirs of Michele Condurro, founder of the Pizzeria “Da Michele” and who claimed rights on the homonymous brand.

 Michele Condurro founded the pizzeria that carries his name located in the popular Forcella neighborhood in Naples back in 1870 and over the years his pizza has become so famous that it was also mentioned by Julia Roberts in the movie Eat, Pray love.

 Recently, the heirs of Michele Condurro have been discussing the right to use the "Da Michele" brand that has become the object of contention by a branch of the family that claimed the right to use it for the opening of several branches in Italy and all 'abroad.

 Similar cases have occurred with the pizza maker Gino Sorbillo and is also happening with the brand SaldeRiso, which sees the award-winning confectioner Salvatore de Riso in court against his brother.

 The case started back in 2016 after the registration of the trademark and Internet domains, in for the recognition and exclusive use of the name "Da Michele".

 Finally, the Court ruled that the exclusive right to use the name throughout the country and internationally belongs to the Condurro heirs who manage the original Pizzeria Da Michele based in Forcella and has imposed the removal of signs, domains and trademarks. The ruling has finally recognized that the patronymic has specific individualizing function, which has been strengthened over time by maintaining a high quality standard, giving rise to a famous trademark and the rights to use the brand must be granted to the person who first adopted and used it.

CONSOB HALTS AN ITALIAN ICO FOR THE FIRST TIME.

 

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Consob the Italian stock exchange regulatory board halts the first ICO, ( initial currency offering). The ICO was launched by the English company, Togacoin Ltd, with the aim of financing the construction of a multi-activity data center, focused mainly on cryptocurrency mining, flanked by "secondary hosting activities, web application development and electricity sales, which will make it possible to differentiate investments ".

 The Authority has a well-founded suspicion about the promotion of a public offer of financial products in violation of the laws and regulations on the matter ", and resolved for the suspension of offer for Italian Ressidents.  Considering that the company's website and Ico's whitepaper are in Italian, Consob argued that the 'offer' is addressed to the Italian public "and" presents the characteristics of a public offer of financial products. "This, however, according to Italian Law, requires publication of the prospectus, subject to communication and approval by the Authority. But "in relation to the activity carried out by Togacoin Ltd - as stated in the Bulletin - the prior notification to Consob has not been disclosed or the information prospectus for publication has never been sent.

ARBRE MAGIQUE FILES A CLAIM AGAINST BALENCIAGA.

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New legal issues for Balenciaga. The fashion house owned by continues to make people argue about the choice to take inspiration from 'pop' consumer products for their creations. After the luxury versions of the Ikea bag, Balenciaga, who is headed by designer Demna Gvasalia proposed this time a pine-shaped key ring that seems inspired by the famous Arbre Magique car perfumes . The Balenciaga key ring is on sale at 195 euros in light blue, pink, green and black and is made of soft calf leather, while the car perfume costs around two euros.

Car-Freshner Corporation and Julius Sämann Ltd, owner of the Arbre Magique products, has thus decided to sue the Kiering for not asking permission to use the famous colored pine, as they did other brands by starting a cooperation.

The famous stylized tree has already been adopted by other companies producing goods different from perfume diffusers, including Anya Hindmarch, but always in agreement with the right holders.


THE PURPLE (RAIN) COLOR TRADEMARK.

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An many might know, Pantone is an American company that deals mainly with technologies for graphics, color cataloging and color identification systems.

In August 2017 Pantone deposited a new color called Purple One, “Love Symbol # 2” in homage to the late Prince Rogers Nelson known to most as simply "Prince" who died in 2016 at only 59 years.

Pantone's marketing operation followed the recent restored edition of the film Purple Rain, whose soundtrack was actually composed by Prince in 1984.

After these recent events, Paisley Park Enterprises the company that holds the of the late Prince, has filed with the USPTO (the US patent and trademark office) a color mark consisting of a particular shade of purple.

Perhaps not everyone knows that among the signs that can be registered as a trademark, the Industrial Property Code also includes combinations or shades of color, if these are suitable for distinguishing the products or services between competitors.

Today, colors and color combinations are, by now, increasingly used by companies to identify their products in the market; it is no coincidence that we often refer to the "blue" Tiffany or the bright "red" of the soles of the Louboutin shoes.

Italian and Eu Courts tend to exclude the registration of pure colors or shades of colors; the principle was already affirmed in 2003, by the Court of Justice of the European Union, in the "Libertel" case concerning the use of the orange color for telecommunications services.

More recently, the Court of Milan has stipulated that the registration of a specific color mark may be allowed only if it does not unduly restrict the availability of colors for the other parties that offer products or services of the same type as those applied for in the registration application.

As for Prince's filing, this will be examined by the USPTO and then published in the bulletin, thus giving the opportunity to other parties who believe that the trademark registration will be damaged by the opportunity to oppose it.

CONDE NAST SUES BLACK VOGUE FOR TRADEMARK INFRINGMENT

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Vogue Magazine (Conde Nast USA's Advance Publications Parent Company) recently sued the Black Vogue brand for trademark infringement. Advance Publications, filed a complaint in front of the federal court in New York against the designer Nareasha Willis for selling some garments bearing the brand "Black Vogue" without authorization. According to Advance Publications, in fact, Willis would be using a brand (Black Vogue) which is easily confusing by name and graphics, with the most famous "Vogue" by Condé Nast.

In recent months, Willis has already tried to register the Black Vogue brand, but received a refusal by the US Patent and Trademark Office, as confusingly with the Vogue brands already registered by Advance Publications.

ITALY ADOPTS THE DECREE TO THE GDPR

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The expected legislative decree for the adaptation of the national legislation to the General Data Protection Regulation (GDPR) was finally published.

The Legislative Decree 10 August 2018, n. 101 - issued in implementation of Article 13 of the 2016-2017 European Delegation Act (Law 25 October 2017, 163) - is aimed at harmonizing the Privacy Code with European legislation, which became fully operational as of 25 May.

The Privacy Code is not completely repealed (as assumed in the first formulation of the decree) but remains in force, with the changes aimed at harmonizing it with the principles set out in the General Data Protection Regulation, first of all to that of accountability.

The provision provides that the Privacy Guarantor establishes simplified procedures for the fulfillment of the obligations of the data controller with regard to micro, small and medium-sized enterprises.

The provisions of the Privacy Guarantor continue to apply, as compatible with the GDPR and with the same decree.

For the first eight months from the date of entry into force of the decree, the Privacy Guarantor must take into account, for the application of administrative sanctions and in so far as it is compatible with the provisions of the GDPR, the first application phase of the provisions sanctions.

THE COURT OF ROME ON THE MONITORING DUTIES OF SOCIAL MEDIA.

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A recent decision by the Court of Rome established that social media platforms such as Facebook  have no duty to monitor the legitimacy of the contents published, but they are obliged to carry out a subsequent control in case  a user's reports the posting of defamatory content. In its decision, the Court analyzed the possible obligation to remove content from a provider: one wonders, in essence, if, faced with a user's grievance asocial media must proceed without delay or any other investigations to the immediate removal of potential unlawful content. The answer according to the Court of Rome is negative. There is no duty of a preventive monitoring of published contents since the only duty that is burdened and a social media is a subsequent check on a certain content, following the reporting of an unlawful post.
In the opinion of the Court of Rome, therefore, a reported abuse of defamatory content gives rise to an immediate assessment of the reported contents, but an ex parte removal obligation arises only where a manifest and evident illegal nature of the contents appear.
All in all, it is a shareable decision, because on the one hand contemplates the need to make the online service operator responsible, but, on the other hand, it does not attribute a social media with the role of censor.