Criminal protection of industrial property titles beyond the scope of civil counterfeiting: Article 517-ter of the Italian Criminal Code

The IP Criminal Law Group operating within the AIPPI Italian Group has recently conducted a study into the offence referred to in Article 517-ter of the Italian Criminal Code (“ICC”), which punishes the manufacture and sale of goods in breach of industrial property titles (patents, registered trademarks, registered designs and models,  registered topographies of semiconductor products – Article 2, paragraphs 1, 2, 3 and 5 of the Italian Industrial Property Code – “IIPC”).

With respect to other offences relating to industrial property, Article 517-ter of the ICC extends and broadens criminal protection against acts of infringement that are not merely imitative and therefore do not merely give rise to confusion. Such an extension is of tangible value and can be effectively utilised in practice.

Given the significance of the topic investigated by our Group and the interest it arouses amongst IP experts, the findings of the study were discussed at a conference held on 10 October 2026 at the Milan Palace of Justice, attended by university professors, IP experts and criminal judges.

Article 517-ter was introduced into the ICC by Law No. 99 of 23 July 2009.

As mentioned, Article 517-ter has significantly broadened the scope of criminal protection for industrial property titles, including, but not limited to, the penalties applicable.

Prior to the introduction of Article 517-ter, the entire scope of criminal protection for industrial property rights was provided for by Articles 473, 474 and 517 of the ICC and Article 127 of the IIPC.

Articles 473, 474 and 517 of the ICC penalise the counterfeiting of trade marks and patents and the commercialisation of products bearing trade marks likely to cause confusion and the detriment of public trust.

The abrogated Article 127 of the IIPC penalised the manufacture, sale and industrial use of goods in breach of an industrial property title. The provision was essentially ineffective, due at least in part to the lack of deterrent effect of the penalties imposed.

Article 517-ter goes much further, and herein lies the novelty and importance of the provision, since it targets the usurpation of industrial property titles, whether carried out during the production or marketing phase of the goods, through imitative conduct – even if lacking any confusing effects – or through non-imitative conduct.

It is therefore easy to understand the practical significance of this criminal provision, which goes far beyond the pre-existing offences and offers criminal protection for industrial property titles that is far more comprehensive and effective than in the past.

The existence of a title (patent or registration) constitutes the essential element of the offence. The manufacture of the goods must be carried out in violation of an industrial property title.

Unregistered industrial property rights (such as, for example, de facto trademarks and trade secrets – Article 2, paragraph 4 of the IIPC) and copyright are excluded from protection.

Although the wording of the provision is clear in limiting its scope of application solely to industrial property titles, the Italia Supreme Court, surprisingly, held in a case that the criminal protection provided for in Article 517-ter of the ICC extends to industrial design works intended for mass production (Supreme Court No. 2402/2018).

Article 517-ter states that the existence of the industrial property title must be knowable. Legal scholarship and case law are virtually unanimous in holding that, for the offence to be committed, the formally conclusive act of the procedure establishing the so-called ‘registered’ right – that is the grant of the patent or of the registration – is necessary.

The offence therefore does not arise where the infringement concerns an industrial property right that is still at the application stage. Here, the significant difference from civil protection — which can be invoked well before the grant of the title (Art. 15(2), Art. 38(4), Art. 53(2), Art. 85(2), Art. 93(1) of the IIPC) — is evident.

In the absence of the grant of the title, an objective element of the crime is lacking.

The author of the conduct must be aware that he is treating goods produced in violation of or by usurpation of an industrial property title.

Referring briefly to the conduct that may constitute the offence referred to in Article 517-ter of the ICC, the provision refers both to manufacture or industrial use (paragraph 1) and to importation into the territory of the State, possession for the purpose of sale, and placing on the market for the purpose of making a profit (paragraph 2).

All these acts must relate to “goods produced by misappropriating an industrial property title or in breach of such a title”.

The misappropriation of the title therefore takes place during the manufacture or industrial use of the goods, and the criminal acts relate to the goods thus produced through such misappropriation.

It is worth noting that infringement may occur not only in typical cases of imitating another’s trade mark or manufacturing a product in breach of a patent, but also by a party in a contractual relationship with the holder of the industrial property title. This is the case, for example, of a licensee who manufactures products – albeit “original” ones – in breach of specific contractual provisions (regarding duration, quantities, etc.).

Even at the investigation stage, the judge may, at the request of the public prosecutor, order the seizure of the products obtained through misappropriation as evidence, as well as the seizure of the profits made by the author of the usurpation, including by seeking an equivalent value from the offender’s assets.

Under Article 517-ter of the ICC, the holder of an industrial property title is also protected under criminal law against: (a) imitative conduct that does not give rise to a risk of confusion (such as, for example, parasitic free-riding – see: Supreme Court, 13 July 2021, No. 40312; Supreme Court, 30 November 2016, No. 14812; Court of Appeal of Genoa, 17 October 2014); and (b) any non-imitative conduct concerning goods produced in breach of the rights of the right holder (e.g. in breach of a valid licence agreement – Court of Appeal of Nola, 22 January 2025, No. 2071).

It is precisely in this latter regard that the innovative scope of Article 517-ter of the ICC can be fully appreciated in terms of the extension of criminal protection to scenarios that were certainly not covered by the pre-existing criminal provisions (in particular: Articles 473, 474 and 517 of the ICC).