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The development of the project to harmonize the national regulations of European Union countries governing trademarks continues to be a main driver of change in the trademark sector in Europe. Italy’s trademark sector, like that of all EU Member States, is facing a new (r)evolution: the implementation of Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trade marks and the adaptation of national legislations to the provisions of Regulation (EU) 2015/2424, which amended the Regulation on the European Union trade mark.

On the 20th of November 2018, the Italian Council of Ministers met to approve the legislative decree prepared by the Ministry of Economic Development, with which Italy fulfils its obligations to amend trademark law as provided for by Directive 2015/2436. As is well known, the Directive brings in mainly the following changes:

– over the next seven years, Member States will have to introduce new administrative procedures as an alternative to legal proceedings for the revocation or declaration of invalidity of trademarks;

– the extension of existing cases of trademark rights and the extension of protection to new types of trademarks, with the abolition of the requirement of mere graphic representability;

– the introduction of absolute grounds for refusal to register trademarks in the case of conflict with designations of origin and geographical indications (PDOs/PGIs), regardless of the sector to which they pertain (wines, spirits, agricultural products, etc.), as well as the provision of special grounds for refusal of registration in the event of conflicts with protected traditional terms relating to wines (TTs) and traditional specialities guaranteed (TSGs) protected by Union legislation.

Regrettably, the issue related to alternative administrative procedures for revocation and cancellation has not yet been addressed; it may be assumed that the Italian Government intends to use all the time made available by Directive 2015/2436 (until 2023) in an attempt to identify an operational platform that would allow the Italian Patent and Trademark Office to tackle the huge increase in activity that will result from these new procedures. All remaining aspects have been implemented, including the issues related to the fight against counterfeiting: the Legislative Decree prepared by the Italian Ministry of Economic Development in fact extends the possibility of applying border seizure measures against counterfeit goods even in cases of mere transit. Such measures were previously provided for only in the presence of evidence that the suspect goods would have been marketed in Europe.

© BUGNION S.p.A. – May 2019