Restyling the Italian Industrial Property Code – how will trademark owners be affected?

Changes to the Italian Industrial Property Code entered into force this year as a result of the new EU Trademarks Directive (2015/2436). Italian Legislative Decree 15 (20 February 2019) was published in the Official Gazette on 8 March 2019 and entered into force on 23 March 2019. It amends existing provisions in the Industrial Property Code and adds new ones, with the aim of reinforcing the protection of trademark owners’ rights and harmonising the IP laws of EU member states. The European Commission believes that this will create better competition for European businesses in the global market.

Abolition of the graphic representation requirement

The requirement to include a graphic representation when registering a trademark has been repealed. It is now possible to register marks that cannot be represented graphically although they should be capable of being described in the register, with the description clearly and precisely showing the subject matter of protection.

Extension of the prohibition to register signs based on the nature of goods themselves

It is no longer possible to obtain registration for signs that consist of the shape or other characteristics resulting from the nature of the goods, nor is it necessary to obtain a technical result or give a substantial value to the goods.

Collective marks

The law now identifies more clearly which subjects may obtain registration for collective marks. It lists legal entities governed by public law and 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”. This exclusion affects joint-stock companies, limited partnerships and limited liability companies. A new provision has also been introduced to avoid potential discrimination. Any entity or individual whose goods or services originate in the geographical area indicated in the collective mark has the right both to use it and to become a member of the association that controls its use, with a duty to comply with the association’s bylaws and regulations.

Certification marks

A new Article 11-bis has been inserted, which regulates certification marks. These must show that that the designated goods or services have certain characteristics relating to materials, quality of goods or services or manufacturing processes, among others.

Conversion of old collective marks into new collective or certification marks

An effect of the new law is that old collective marks that were registered under the previous law can be converted into new collective or certification marks. Article 33 of the Legislative Decree gives owners of such marks until 23 March 2020 to apply for a conversion. If they do not apply by this date, their marks will be removed from the register.

New bars to registration

Article 14 of the Industrial Property Code has been amended to include new bars to registration. In particular, it is now not possible to register signs that are identical to – or confusingly similar with – appellations of origin, geographical indications, traditional designations for wines and other products and names of registered plant varieties.

Extended protection for well-known marks 

According to the new version of Article 20(1)c, the owner of a registered trademark “enjoying reputation in the State” has the right to forbid third parties from using a sign which is identical or confusingly similar with its registered trademark, even when the use is non-commercial (ie, does not refer to specific goods or services).

Pre-infringement acts

Trademark owners’ rights have been reinforced by the explicit prohibition of the so-called preparatory acts for infringement. According to Article 20(2), trademark owners now have the right to prohibit third parties from affixing a sign to packaging, labels, tags, security or authentication devices or components thereof or anywhere else where confusion may be likely.

Infringement actions by the licensee

New Article 122-bis modifies the provisions that allow a licensee to act against an infringement of the licensed trademark. Normally, and unless the licence agreement provides otherwise, the licensee can act with the consent of the licensor only. However, an exclusive licensee may now give the licensor a reasonable period of notice in which it must take action and act in its place if the licensor fails to do so. Licensees are also authorised to intervene in actions filed by licensors and add their own claims for damages.

Nullity and cancellation actions

Section II-bis has been added into the Industrial Property Code, aiming at regulating (Articles 184-bis to 184-decies) proceedings for obtaining a declaration of nullity or cancellation due to non-use of a trademark. Alternatively, owners will still have the opportunity to start a court case under Article 120. However, the new provisions on administrative proceedings will come into force 30 days after a regulation is published, which has not yet happened.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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