Lexmill | CM

IP & LICENSING

Technology has always been an asset, and IPRs (intellectual property rights) its traditional tools. The digital revolution however is contributing to a new global perspective by amplifying ways, and speed of dissemination of protected works.

We can assist clients in various sector of so called intellectual property law: copyright and related rights, but also patent, design, and trademark law. On the contractual side, we can assist in drafting licensing contracts, as well as other arrangements relating IP, especially in a technological JV context.

Most of the disputes we have dealt with are relating to design law, passing off, and other unfair competition activities, all over the place. The challenges posed by technology development have also added disputes on computer programs, domain names, and use of protected works on the internet, to the picture.

Something we’ve done during the years:

advising Italian dairy producers on using commercial names allegedly infringing competitors’ ones in Germany (1986, ref. 10154001)
a contract for an Italian manufacturer of large amusement rides, granting a license to a Soviet unit (1990, ref. 10063001)
Manufacturing license of a French haute-couture brand (1994, ref. 10322001)
acting for a US corporation protecting in Italy its patented design office furniture (a table) (2000, ref. 10873001)
assisting an Italian chairs manufacturer in defending their design worldwide (2000-09, ref. 10953034)
defense counsel in a lawsuit in Italy on alleged infringement of a bathroom furniture design (2003, ref. 11006001)
a standard contract for development of protected vegetal varieties (apples) (2003, ref. 10841003)
assisting an Italian equipment manufacturer against allegation of stealing industrial secrets (2002, ref. 10762004)
a contract granting a brand license from an adult entertainment US corporation to an Italian knitwear producer (2007, ref. 10398011)
a contract for licensing holograms system for 3D advertising (2008 ref. 21165001)
defense counsel in a civil and criminal cases in Italy concerning industrial patent infringement against Italian nationals and a French corporation (2008, ref. 11136009)
various NDNC agreements in the sub-supplier sector for eyewear industry (2014-15, ref. 21648007

PRODUCT LIABILITY

As more and more jurisdictions are increasingly sharpening their attitude towards ‘dangerous’ products, producers are facing new challenging situations.

We can help our clients in assessing the risks in the markets they trade in (in particular in the US and the EU), and in duly protecting themselves as far as it is legally possible. We often team with risk analysts of independent brokers who may design the most opportune insurance coverage.

During the years, we have dealt with various product liability claims in Italy and abroad, and we are prepared to assist our clients in the most difficult situation as those stemming from casualties, or demanding a return campaign

Something we’ve done during the years:

defense counsel for an amusement ride equipment manufacturer in personnel offence lawsuits started by utilizers in the US (Florida, Delaware) (1989/1991, ref. 10002017)
defense in a product liability case where a US customer claimed damages for lack of due information (she fell out from a wheeled office chair while she was trying to use it as a ladder for hanging some curtains at home) (1992, ref. 10060001)
defense of an Austrian beverage producer in a case brought by a customer who found pieces of glass in his bottle (1999, ref. 10332027)
defense counsel in a lawsuit in Belgium on explosion of an industrial oven during maintenance works, causing destruction of a building (2005, ref. 10964012)
defense counsel in Iowa in a case concerning severe personal injuries occurred to erection staff in the course of erection of a large food processing equipment (2005, ref. 11116001)
defense counsel in a case in Italy concerning casualty occurred during dismantling of a big crane (2007, ref. 19203001)
advising a British multinational that produces gas boilers over a lawsuit in Maine, US regarding damages suffered by final consumers (2010, ref. 21646690)

SALES & WORKS

sales_and_works_1173x786

Commercial sales are the most common international commercial transactions and we may help our clients to operate in a safe environment.

Luckily, the uniform rules of Vienna 1980 Convention on international sales apply most of the times, however many countries still are not part of it (e.g. the United Kingdom), and Vienna does not cover all issues 100%. In addition contracts for works may, or may not fall within the Convention scope. There are also areas, namely the commodities trade, that is traditionally governed by the English law. So the situation is not simple as it would seem at first sight.

In addition of taking care of ad hoc transactions, we have an expertise in drafting general condition & terms, which may apply to a limitless number of business counterparts.

On the dispute side, we have our litigation department operating either in Italy, and abroad; and put into place a cost-effective process for debt recovering.

Just an idea of what we’ve done during the years:

a contract for supply of an extrusion plant in France, with detailed retention of clause clause (1987, ref. 10121002)
ACMI leases and wet leases of A-310 Airbus, and other large civil aircraft (1990-91, ref. 10043001)
an action before a Spanish court on return of molds and alleged defects of chairs and other outdoor furniture (1996, ref. 10371013)
an ICC arbitration for an Argentinean client claiming damages against an Italian bankrupt construction company (1997, ref. 10383009)
a contract for supply of an amusement ride in Austria (1998, ref. 10050016)
contract for supply, erection and commissioning of a large industrial rolling plant in France (2000, ref. 10553066)
standard export sale general terms & conditions for an Italian pottery and china producer (2002, ref. 10432021)
supply and assembling of furniture to a condominium in Dubai (2008, ref. 16541006)
standard purchase general terms & conditions for an Italian kitchen producer (2008, ref. 10508010)
lawsuit in Germany for alleged defect of rubber flooring (2010, ref. 21646727)
customs troubles for exporting a used plant to Iran (2010, ref. 21646565)
actions brought before Italian and Luxembourg courts in re. supply of integrated wall systems for office workspaces (2013, ref. 21647510)
an action in Andorra for recovering the price of furniture and works for arranging a major car brand franchise shop (2013, ref. 21647034)
several contracts for trading in commodities (parts of animals, vegetables, seeds) between South America and the Far East (2015, ref. 21648506)

ADR

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Our basic idea is that disputes are always a risky investment that requires appropriate risk analysis and an extensive exploration of any alternative way to deal with it.

ADR can offer a valuable parallel channels to a litigation in court or before an arbitral tribunal, most of the times, and we make large use of it in accordance with our clients’ whishes. Mediation is, of course, a primary avenue and we are happy to assist our clients in such context, since it is not different from what we normally do, i.e. supporting negotiations.

Most of our lawyers are experienced mediators themselves, so they know about the conflict dynamics in the interaction, and may help the clients in selecting the most opportune mediation center, and mediator.

Something we’ve done during the years:

Assisting an Italian insurance broker in mediating a 32m ITL dispute with a commercial agent (settled after two sessions) (1997, ref. 10483001)
Assisting an Italian sport boots manufacturer in a €1.8m disputes for an US distributor (settled after two mediations) (1998, ref. 10504015)
Assisting an Italian chairs manufacturer in mediating a €50k dispute with a Russian commercial agent (settled after a 3-hour session) (2012, ref. 21647085)
Assisting an Italian company in a dispute with a bank claiming a sum around €500k (still ongoing) (2015, ref. 21648263)
Assisting a UK firm claiming €2m for unpaid works to an Italian main contractor (still ongoing) (2016, ref. 21648551)

MARKETING & DISTRIBUTION

marketing_distribution_1173x786

Distribution contracts (commercial agents, intermediaries, distributors, franchisees, …) may be defined as the speciality of the house. Distribution contract are a sensible components for the success of companies, irrespective they sell goods or services. It is fairly uncommon, in fact, that they succeed in establishing a direct links with oversees customers, and the answer is to have somebody doing it locally for them. Of course, electronic commerce has changed the scenario in the recent decades, however a physical presence is still required in many sectors. As a rules, this kind of contracts consist in long-terms arrangements, so the have to be carefully drafted, taking into consideration not only the starting situation, but any possible development as well, from both factual, and legal point of view. We have no crystal ball, of course, however we think you’re fairly good in that, since we’ve been doing it for 30 years and clients are satisfied.

Something we’ve done during the years:

agency/distribution contract between an Italian manufacturer of incinerators equipment and a Saudi company (1985, ref. 10008005)
action brought before both an Italian court and a German one against a German commercial agent re final termination indemnity (1989, ref. 10013003)
defending an Italian shoes manufacturer before a Californian court in re. damages for contract termination (1997, ref. 10504005)
terminating a contract with a Danish distributor of one of major jeans Italian brands (1999, ref. 10333008)
action brought before an Italian court against a German brewery for an Italian agent claiming commissions (1999, ref. 10664001)
assisting a Swedish start-up operating in the vending machines sector to arrange its Italian distribution network (2008, ref. 21646353)
a dispute before the Aix-en –Provence courts successfully defending in both first instance and appeal an arbitral clause inserted in an agreement with a local commercial agent (2012, ref. 21647133)
distribution contract between an Italian manufacturer of chemicals and its Australian distributor (2015, ref. 21648268)
contract for exclusive-brand store dealership agreement, and flagship store in New York (2015, ref. 21648209)

BANKRUPTCY & RESTRUCTURING

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Sadly, sometimes it’s better to close, or radically change a business instead of keeping on accumulating losses. Bankruptcy laws often offer some safe harbor in this respect.

In particular, we can support our clients in financial distress in organizing an arrangement with creditors, in order to renegotiate their debts and be able to continue to operate.

On the other hand we regularly assist clients in claiming effectively their credit towards debtors on the verge, or in the middle of a bankruptcy, in Italy and abroad.

Something we’ve done during the years:

Successful action in Italy for claiming continuance of a leasing contract worthing in excess of ITL 0.5m, in the event of the lessor’s barnkruptcy (1994, ref. 10318002)
Assisting an Italian transport services company, in negotiating with creditors a total exposure of some €400k (2009, ref. 21846503)
successfully pursueing a bankrupt €65k credit towards a Florida company for kitchen supply (2009, ref. 21646440)
defence counsel of past managers of a bankrupted Italian company on an €7m alleged board director liability (2014, ref. 21848032)
defence counsel for past auditors of a bankrupted Italian company against allegations of professional malpractice exceeding €2.3m (2012, ref. 21646726)
successful action at Le Riunion (France) in recovering a €75k debt against a local bankrupt company (2015, ref. 21646503)

EMPLOYMENT

employment

Employment laws are traditionally rooted in each country traditions. Movement of people across the frontiers has been increasingly creating critical situations.

We can assist our clients, in particular those based in other jurisdictions, in

drafting employment contract with Italian employees, or managers.

We are regularly active in court in employment disputes. In case this occurs abroad, we avail ourselves of reliable local attorneys.

Something we’ve done during the years:

Assisting Italian company in establishing in Germany and hiring managers (2000, ref. 10507001)
Assisting Italian company in hiring extra UE workers for entertainment sector (2000, ref. 11121001)
A mobbing case in beverage sector (2005, ref. 10332073)
Assisting UK corporation establishing in Italy and hiring managers (2007, ref. 19157001)
Assisting an Italian company in hiring employees from a formed acquired company (2008, ref. 21646033)
Intervening as a mediator in a sex harassment case in the workplace (2009, ref. 21646159)
assisting a group of former employees of an Italian in recovering final indemnities (2012, ref. 21647292)
Assisting an Italian top managers in being hired by a California corporation (2015, ref. 21648360)

REAL ESTATE

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Real estates transactions are often lengthy and complex. They move not insignificant amounts of money, and deserve an attentive analysis of local legal technicalities.

We can assist our clients who wish to acquire buildings, or pieces of land, either on lease or freehold, in Italy and abroad, in all legal aspects (contracts, financing, permits, …). Transactions of this kind are governed at large by the laws where real estate lie, the so called ‘lex rei sitae’, so in dealing with properties abroad we liaise with local attorneys. In Italy a public notary’s final intervention is legally needed, and our activity is mainly devoted to preparing the deal, and relevant follow-up.

Something we’ve done during the years

Assisting an Italian company selling a building in Florence to a French company (1992, ref. 10235001)
assisting an Italian developer in a dispute before a Brazilian court. Obtained cancellation of a deed fraudulently transferring local real estate valued €75k (2001-10, ref. 10506002)
various legal opinions released on occasion of a large buying-in and selling-out operations put forwards by a large Italian fashion group in the UK and Ireland (2003-10, ref. 10401026)
various judicial lawsuits in Italy on behalf of an Argentinian longtime expatriate in defense of his family assets exceeding € 1m (2006, ref. 16567001)
a €250k acquisition of a PoS in the main fashion outlet in Slovakia (2003, ref. 10398005)
assisting Italian investors in recovering money (€300k) put into a failed real estate development project in Canary Islands (2007, ref. 19745001)
assisting Italian individual in assessing title of a property in St. Petersburg, Russia (2008, ref. 21321001)
Assisting Russian investors in a € 1,5m acquisition of a farm in Tuscany, with a villa and a large vineyard (2010, ref. 21646494)
assisting Russian investors in €22m acquisition of a palace in Venice for hotel development (2011, ref. 21646809)
assisting Italian investors in recovering money (€150k) put into a failed real estate development project in Brazil (2014, ref. 21648093)
drafting for an Italian Company a contract of leasing regarding a real estate in Mexico (2015, ref. 21648233)
assisting an Italian firm to have his controlled Romanian company purchase some industrial estate (2015, ref. 21648196)

Department

DEBT RECOVERY & DISPUTES

“At the Disputes Department, we deal pathological situations. We can do that in court either in Italy, and abroad thanks to our extensive network of foreign correspondents. Arbitration is common avenue in cross-border disputes and we are familiar with the most utilized arbitral institutions, namely ICC for which we’ve also served as arbitrator. Finally, ADR and mediation in particular is definitely embedded in our practice in order to give our clients a choice to have their disputes resolved in a quick and less expensive way”.

“Al Dipartimento Contenzioso ci occupiamo di situazioni patologiche. Possiamo farlo in tribunale sia in Italia che all’estero grazie alla nostra vasta rete di corrispondenti stranieri. L’arbitrato è un’opzione ricorrente nelle controversie transfrontaliere ed abbiamo familiarità con le istituzioni arbitrali più utilizzate, in particolare l’ICC per la quale abbiamo anche ricoperto il ruolo di arbitri. L’ADR, poi – la mediazione, in particolare – è decisamente integrato nella nostra pratica, per dare ai nostri clienti la possibilità di scegliere di risolvere le loro controversie in modo rapido e meno costoso”.

Reference person:

Alessandra Papa – Head of Disputes Dept.

a.papa[at]lexmill.com
Born in Lecce, Italy (1974)
Law degree – University of Bari (2002)
Admitted to practice, Ordine Avvocati Treviso Bar (2005)

CORPORATE & JV

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We can help our clients in selecting, and starting up their business vehicles in Italy and abroad.

This includes drafting appropriate articles of association and by-laws, as well as any satellite agreements between shareholder or commercial partners.

By having fiscal experts in our working teams, we can help in identify the proper group organization in view of maximize not only efficiency in logistic operations, but also minimizing the overall fiscal impact on it in compliance with local and international tax and antimony-laundering regulations.

A special attention is given to help young entrepreneurs, facing typical concerns relating to starting up a new business. On the litigation side, we have a robust expertise in lawsuits concerning disputes among partners, or relating to the vehicle’s management (e.g. managers’ and directors’ liability).

Something we’ve done during the years:

advising a Chinese producer of automobile components in structuring buy-outs of Italian skilled small-size businesses (2007, ref. 20239002)
assisting a Greek company in creating an Italian limited liability company within the frame of a € 10m JV project (2008, ref. 19405001)
assisting a Swedish manufacturer of hand-washing automatic machines in creating its own Italian subsidiary (2008, ref. 21646105)
assisting an Argentinean multinational in selling part of its food canning business to Italians (2008, ref. 10383020)
assisting an Italian chairs manufacturer in creating its own New York based LLP as a platform for distributing their products in the States (2010, ref. 10953035)
assisting an Italian manager in arranging his participation to a newly created US (California) in radiant panels sector (2015, ref. 21648360)
negotiating renewal of a R&D joint venture between an Italian and an Israeli companies (chemical sector) (2015, ref. 21648353)
assessing an investment project in Angola, regarding implementation of supply chain in fishing sector (2015, ref. 21648236)
assisting an Italian individual for breach of a small Italian company setting up agreement (2015, ref. 21648226)

Department

CONTRACTS & OTHER

“At the Contracts Department, we assist clients in negotiating and finalizing their domestic, and cross-border operations. We are convinced that a good contract cannot provide an umbrella against all bad weather, however it can help not getting too much drenched. Good deal-making is an investment for the future. Also, complex situations, such an investment abroad require a co-ordinated action to have a safety legal net built up; our task is to identify the most opportune way to protect our clients interest”.

“Nel Dipartimento Contratti assistiamo i clienti nella negoziazione e nella finalizzazione delle loro operazioni nazionali e transfrontaliere. Siamo convinti che un buon contratto non può fornire un ombrello contro tutte le intemperie, ma può aiutare a non inzupparsi troppo. Un buon contratto è un investimento per il futuro. Inoltre, situazioni complesse, come un investimento all’estero, richiedono un’azione coordinata per costruire una rete legale di sicurezza; il nostro compito è quello di individuare il modo più opportuno per proteggere gli interessi dei nostri clienti”

Reference person:

Carlo Mosca – Head of Contract Dept.
c.mosca[at]lexmill.com
Born in Treviso, Italy (1957)
Law degree – University of Bologna (1983)
Admitted to practice, Ordine Avvocati Treviso Bar (1983)
LL.M., International Business Law, Queen Mary College, Un. of London (2013)

Carlo Mosca

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Department