Author: Tiziana Pacini

Legislative Decree no. 15/2019 of 20 February, entitled “Implementation of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, and for the adaptation of national legislation to the provisions of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending the Regulation on the Community trade mark”, was published in the Official Gazette no. 57 of 8 March 2019. Entry into force of the decree: 23/03/2019.

Various amendments were introduced to the Italian Industrial Property Code (Legislative Decree no. 30/2015), including:

  1. Abolition of the requirement of graphic representability of a trade mark. The abolition of this requirement allows for the possibility of registering trade marks also using other forms of representation. Therefore, new types of trade marks can be registered, such as, for example, sound trade marks, motion marks and holograms, provided that they are 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 proprietor.
  2. Extension of the prohibition against the registration of signs resulting from the nature of the goods themselves. Signs consisting of the shape, or another characteristic, which results from the nature of the goods themselves, or which is necessary to obtain a technical result, or which gives substantial value to the goods, cannot be registered as a trade mark.
  3. Amendments to the rules concerning who may apply for the registration of a collective mark. The legislation now identifies those who may obtain registration of the marks in question, namely, legal persons governed by public law, associations of manufacturers, producers, suppliers of services or traders, with the exclusion of the companies specified in Book V, Title V, Chapters V to VII of the Italian Civil Code, i.e. companies limited by shares (S.p.A.), limited partnerships (S.A.S.) and limited liability companies (S.r.l.), which have the option of licencing the use of collective marks to producers or traders. A provision has been introduced whereby any person whose goods or services originate in the geographical area indicated in the collective mark has the right both to use the mark and to become a member of the association which is the proprietor of the mark, provided that the person fulfils all the requirements set forth in the regulations governing its use.
  4. Introduction of rules for certification marks. The new Article 11-bis authorizes natural or legal persons, including institutions, authorities and accredited bodies, to guarantee the origin, nature or quality of certain goods or services, and to obtain the registration of certification marks, provided that they do not engage in a business involving the supply of goods or services of the kind certified. It is accepted that a certification mark may consist of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. In such a case, the Italian Patent and Trade Mark Office can refuse registration, based on a reasoned decision, when the marks applied for may create situations of unjustified privilege or in any case prejudice the development of other analogous initiatives in the region. In this regard, the Office may seek the opinion of any competent or interested public authorities, associations and bodies. The registration of a certification mark consisting of a geographical name does not authorize the proprietor to prohibit third parties from using the name itself in the course of trade, provided that they use it in accordance with principles of professional integrity. Notwithstanding specific provisions, certification marks are subject to all of the other provisions regarding individual trade marks.
  5. Prohibition against the registration of signs related to the protection of designations of origin and geographical indications. Absolute grounds for refusal of registration have been introduced with respect to signs likely to deceive the public as to the type of mark concerned. Moreover, other absolute grounds for refusal of registration have been introduced in relation to signs in conflict with the protection of the PDO and PGI marks, the protected traditional terms relating to wines and traditional specialities guaranteed and in conflict with European and national plant variety names. These absolute grounds for refusal of registration have also been included among the grounds for opposition to registration and the grounds for applying for a declaration of invalidity, within the framework of the new rules on the revocation and invalidity of registered trade marks.
  6. Taking effect of the renewal of registration. Renewal of registration takes effect from the day following the date on which the previous registration expires. The application for renewal must be filed within the twelve months preceding the last day of the month of expiry of the current ten-year period.
  7. Additional rules regarding the rights afforded by the registration of a trade mark. The new provisions are intended to enable trade mark owners to combat counterfeiting more effectively, with particular reference to acts preparatory to counterfeiting and counterfeit goods in transit in the State. In fact, the proprietor of a registered trade mark has the right to prohibit third parties, unless he has given his consent, from using in their business activity a sign that is identical with, or similar to, his own trade mark for goods or services, even if not similar in kind, if the registered trade mark has a reputation in the State and where use of that sign, even for purposes other than that of distinguishing goods and services, without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. Furthermore, the proprietor of the trade mark can also prohibit third parties from affixing the sign on packaging, labels, tags, security or authenticity features or devices or components thereof or any other means to which the mark may be affixed, and from offering or placing on the market, or stocking for such purposes, or importing or exporting such means bearing the trade mark, where the risk exists that they could be used in activities constituting an infringement of the proprietor’s rights. Moreover, the proprietor can now prevent third parties from bringing goods, in the course of trade, into Italy without being released for free circulation there, where such goods, including packaging, come from third countries outside the EU and bear, without authorization, a sign which is identical with the trade mark or which cannot be distinguished from it in its essential aspects and the goods fall within the scope of protection of the trade mark, unless during the proceedings to determine whether the trade mark has been infringed, evidence is provided by the declarant or the holder of the goods that the proprietor of the trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.
  8. Introduction of systematic rules for administrative procedures relating to revocation and invalidity. A specific section has been introduced into the Industrial Property Code, section II-bis, with nine articles, 184-bis to 184-decies, which lay down rules for proceedings involving the revocation and invalidity of registered trade marks. The first one provides detailed guidelines for filing an application for revocation or a declaration of invalidity, without prejudice, in any case, to the right to bring action before a judicial authority. The persons entitled to apply, identified in the next Article 184-ter, may submit a written reasoned application, accompanied with the relevant documents, including the agent appointment document, where applicable, to the Italian Patent and Trade Mark Office. The subject of the application must be the assessment of the revocation or a declaration of invalidity of a registered trade mark on grounds that are specifically identified. In particular, an application for a declaration of invalidity of a trade mark may be requested if: the trade mark should not have been registered because it does not comply with the requirements provided for; the trade mark should not have been registered because of the existence of an earlier right; the application for registration of the trade mark was filed by an agent or representative of the proprietor without the latter’s authorization or without a justified reason. Article 184-quater lays down rules for the examination procedure in respect of applications for revocation or a declaration of invalidity and the related decisions. Article 184-quinquies lays down rules regarding evidence of use. Article 184-sexies contains provisions regarding the erga omnes effect and the effective date of the revocation or declaration of invalidity; it provides, in particular, that the revocation or invalidity, even partial, of a trade mark registration is effective vis-à-vis everyone, when it has been thus declared in a final decision of the Italian Patent and Trade Mark Office. Article 184-septies lists additional cases, besides the one provided for in Article 184-bis, of suspension of the invalidity or revocation procedure. Article 184-octies provides for the termination of the invalidity or revocation procedure. Article 184-nonies establishes that the aforesaid rules will enter into force thirty days after the date of publication of the decree of the Ministry of Economic Development which sets guidelines for their application. Finally, Article 184-decies provides that the decision whereby the Italian Patent and Trade Mark Office declares the invalidity or revocation procedure to be inadmissible or closed, or upholds, even partially, or rejects the application, is to be communicated to the parties, who may file an appeal with the Board of Appeal.