Pier Luigi Roncaglia: “China and the Internet are certainly the next challenges”

SIB (Società Italiana Brevetti) is a highly regarded Italian IP boutique with experience in civil and criminal cases. We speak to one of its partners about what lies ahead in the Italian IP landscape.

Posted Monday, May 23rd 2016
Pier Luigi Roncaglia: “China and the Internet are certainly the next challenges”

Leaders League: How would you describe SIB’s DNA?

Pier Luigi Roncaglia: SIB is an Italian IP boutique law firm, exclusively dedicated to contentious and tran­sactional work in the industrial and IP field. The firm was born inside one of the oldest prosecution firms in Italy, called Società Italiana Brevetti. After having been its litigation branch since the '90s, in 2009 we felt pressured by the market to launch the boutique. We started with a strong client base but the decision of going independent helped us acquire new clients. Today we are key partners of pres­tigious names in the fashion and luxury industries. We are also very active in the IT and digital business, representing the IT and entertain­ment giants.

We are very strong in trademark law. Despite the down­turn we constantly grew in terms of work volume, which allowed us to invest in human resources. In 2013 we acquired a new partner, Francesco Rossi, from one of the leading Italian IP firms. We have recently extended our expertise, focusing on privacy and data pro­tection law. Our specialty is a tai­lor-made approach to every kind of case and our equal expertise in both civil and criminal enforcement. Foreign clients appreciate our out of court enforcement activity, which is a very consolidated practice in the firm.


Why is your firm headquartered in Florence?

Indeed, the big IP firms are usually headquartered in Milan or Rome, but I’m originally from Florence, so I was able to attract talent to the city. The brain of our firm is certainly in Florence, but we also have satellite offices in Milan and Rome, and litigate a lot of cases both in Rome and Milan, so in terms of costs and control of every day court work, it is certainly an advantage to have offices in both of the cities. We also have an office in New York, which is more convenient for us in order to visit our U.S. clients.


What are the looming challenges in the world of IP?

I would say China and the Internet are certainly the next challenges, at least for our firm. China has become one of the main markets for our luxury clients, and they need our assistance to enforce their rights there, to educate the public on how to identify genuine products from counterfeits, and to keep online platforms clean. All this work is very important and requires a lot of effort from our side. Actually, two years ago in China we started some very important enforcement programs (both on and offline) on behalf of one of our most important clients in the luxury business, and one of our associates, Riccardo Facchin, is based in Bei­jing.

So far, we have achieved some great results in these areas, but we are certainly still at the beginning of the project. We want to make sure that we are able to offer the same quality of services in China as what we offer in Italy, before make our presence in China official. This is challenging, but we are very happy to have the chance to develop across these frontiers.


Is there a recent legal battle you won, or a significant case you would like to comment on?

We recently won the appeal in the Italian portion of the long-standing and worldwide case between Gucci and Guess. Gucci claimed, inter alia, that Guess willfully put in place a broad parasitic activity of imitation of its products and distinctive signs in order to take free advantage of Gucci’s worldwide reputation. We represent Gucci in Italy, one of the main “battlefields” of this multi-ju­risdiction case. After an unfavorable judgment against Gucci in the first instance, we succeeded in obtaining an important statement of law prin­ciple, in which the Court of Appeals held Guess liable for unfair compe­tition through “parasitism.”

This is one of the very few decisions about parasitic unfair competition that the Court of Milan has given in the last 30 years and is very important to Italian law market. We will see how this case will now be decided by the Supreme Court.