The recent Italian trademark reforms: between Europe and homeland nostalgia

Some important reforms have recently concerned our Code of Industrial Property.

First, the Italian legislator has implemented Trademark Directive 2015/2436/EU (previous comments on this blog about this Directive here and here) adopting Legislative Decree No. 15 of February 20, 2019 (text here; some comments here and here).

The Legislative Decree at issue came into force on March 23, 2019 and introduced in our Code of Industrial Property some important amendments, among which:

  • Abolishment of the “graphic” representation requirement of signs registrable as trademark. It can be now registered as trademark any sign which is distinctive and capable of being represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the relevant proprietor. As a result, this provision has expanded the scope of the signs eligible to be registered as trademark, such as signs composed both of images and sounds.

The Italian PTO has technically adjusted its online filing platform with a view to allowing users to file applications for signs represented also in not graphic manners by means of .mp3 and .mp4 files, as explained in Circular of the Ministry of Economic Development No. 605 of March 29, 2019 (here).

  • Extension of shape marks’ absolute grounds of refusal to signs consisting of “another characteristic of the goods”. Given the abolishment of the “graphic” representation requirement, this provision aims at preventing that the registration of unconventional marks may confer on the relevant proprietor exclusive rights on characteristics of the goods with a technical function, substantial value or resulting from the nature of the goods, such as a colour or a sound. 
  • Additional grounds for opposition: (i) earlier reputed mark; (ii) earlier well-known mark under Article 6-bis of Paris Convention for the Protection of Industrial Property; (iii) earlier designation of origin or geographical indication or earlier application for designation of origin or geographical indication.

The implementing Legislative Decree does not provide any transitional provision on the applicability of these new grounds of opposition. In particular, it is not clear whether or not the ground of reputation applies to oppositions proceedings against trademark applications filed/published before the entry into force of the Decree at issue.

Although there would be room to maintain that an opposition may be grounded on reputation irrespective of the date of filing/publication of the contested application in light of the fact that the relevant younger mark could be considered invalid on the basis of the same ground, the issue remains questionable. What is certain is that this law uncertainty is detrimental to trademark rights enforcement.

  • Introduction of administrative invalidity/revocation actions before the Italian PTO. These actions are not immediately available. We shall wait for the relevant Ministry of Economic Development implementing regulation for they to come into force (as known, Member States have until January 14, 2023 to implement the actions at issue in their national laws).
  • Introduction of certification marks. Any natural or legal person, including institutions, authorities and bodies having law requirements to guarantee the origin, nature or quality of certain products or services may apply for the registration of a sign as certification mark provided that it does not carry out any business involving the supply of products or services of the kind certified.

Unlikely the EU certification mark, the national certification mark may consist in signs or indications which may serve, in trade, to designate the geographical origin of the goods or services certified. The Italian PTO may refuse registration to such mark where it may cause situations of unjustified privilege or prejudice the development of similar initiatives whatsoever in the same area. The certification mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such geographical signs or indications, provided that third party uses them in accordance with honest practices in industrial or commercial matters.

The implementing Legislative Decree has provided for a transitional period of one year as from its entry into force for the conversion of the collective marks filed/registered under the previous law into collective or certification marks governed by the new law subject to their revocation.

***

Second, the Italian legislator has adopted Legislative Decree No. 34/2019, the so called “Decreto Crescita”, converted into law, with amendments, by Law No. 100 of June 28, 2019 (text here), including, among others, amendments to our Code of Industrial Property (some comments here and here).

The “Decreto Crescita” has introduced a new category of mark under Article 11 ter of our Code: the “historic mark of national interest”. This is a sign that has been registered/used as mark for at least fifty years in relation to products/services of a national undertaking of excellence which has been historically linked with the national territory. Any proprietor or licensor of this kind of mark may apply for its recordal in the newly established special register of “historic mark of national interest”. This recordal entitles these subjects to use the new public logo “historic mark of national interest” in their marketing and promotional activities.

The identification of this new kind of mark seems to be not easy in the practice. Proving continuous use of a mark for at least fifty years is certainly too burdensome for a proprietor or licensor; moreover, the legal requirements of “excellence” of the relevant undertaking and its historic link with our country seems to imply a discretional rather than a legal assessment.

The legislator has also introduced some economic measures related to this new mark.

The proprietor or licensor of a mark recorded in the above-mentioned new register or that anyway meets the legal requirements provided by Article 11 ter that intends to close its Italian production site for (i) cessation of its activity or (ii) delocalization of the same outside the national territory, both implying a collective redundancy, shall inform of this the Ministry of Economic Development as well as of, among others, the possible actions to find new buyers and the chances for employees to launch a takeover bid or to recover the assets anyway. As a result, the Ministry shall initiate formal proceedings aimed at determining appropriate public interventions into the venture capital of the relevant undertakings through the newly established economic “Fund for the safeguard of historic mark of national interest”.

These new economic measures – that in the wording of the law are meant to safeguard the “historic mark of national interest” as well as the employment levels and the continuation of business in Italy – do actually introduce a new procedure of management of business crisis involving public institutions and funds, which arises some concerns under EU competition law and the free movement of goods and capitals principles. Moreover, the fact that any subject that meets the (uncertain) legal requirements provided by Article 11 ter irrespective of the recordal of its mark in the register of “historic mark of national interest” is subject to this procedure is particularly worrisome: it seems to leave room for ex-officio economic public interventions clearly not in line with our constitutional law.

Finally, it is worth mentioning also the new provisions that prohibit the registration of signs linked with the police as well as of words, pictures or signs detrimental to the image or reputation of Italy. It seems that these new provisions follow a demagogic political purpose rather than a reasoned trademark legislative policy. As a matter of fact, their application in the practice seems to be rather limited, since our Code of Industrial Property already prohibits the registration of signs that have a public interest or that are contrary to law, public policy or accepted principle of morality without mentioning any national interest.

***

The latest step of this package of reforms is the Italian Minister of Economic Development’s Decree of January 10, 2020 (text here), which has established the modalities for recording thehistoric mark of national interest” in the new special register and has instituted the following official logo (press release here; a comment here).

marchiostorico

In conclusion, the recent Italian trademark reforms seem to follow two different directions: the harmonization of our Code of Industrial Property with EU trademark law on one side and an approach that uses the mark as a tool for the political purpose of promoting a generic national interest on the other side.

Ilaria Carrino

| Italian Minister of Economic Development’s Decree of January 10, 2020 | Legislative Decree No. 34/2019 (“Decreto Crescita”), converted into law, with amendments, by Law No. 100 of June 28, 2019 | Circular of the Ministry of Economic Development No. 605 of March 29, 2019 | Italian Legislative Decree No. 15 of February 20, 2019 |

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