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Surprising new developments in the Italian trademark law

Massimo Cimoli / February 18, 2020
Surprising new developments in the Italian trademark law

The so-called 'Growth Decree' (Decree-Law 34 of April 30, 2019, as approved by Parliament, with amendments, as Law 58 of June 28, 2019) has introduced a new trademark category. 

Marchi Storici (historical trademarks, Italian) refer to historical trademarks which can be registered in a dedicated registry before the Italian Patent and Trademark Office (UIBM) if they meet the following definition: "Italian trademarks registered or used for at least 50 years for the marketing of products or services made by an Italian production company of excellence, historically connected to the Italian territory." Trademark owners that intend to "close the original or main production site" for the "termination of the activity or the delocalization of the same outside the national territory" must notify the Ministry of Economic Development of their intentions, under penalty of administrative fines ranging from €5,000 to €50,000. The ministry then "starts the procedure," aiming at stopping or avoiding the termination or delocalization of the production.

Legislative background: the Pernigotti case

A Turkish company bought this historical Italian trademark for chocolate and wanted to close the factory, even though it was profitable, to continue the production of Pernigotti chocolate in Turkey. This was seen by the public opinion as a misleading and unfair strategy by the foreign company. The new legislation intends to stop these instances even though the text of the new law attracted numerous criticisms. Two existing provisions: art.23(4) and art. 14(2) (b) of the Italian Industrial Property can be seen as tools to prevent Italian consumers from being misled.

Art. 23(4) reads as follows: "...in any case, from the transfer and licensing of the trademark, the public of consumers should not be misled concerning those features of the products or services that are essential to the public's perception." Article 14(2)(b) provides for the lapse of a trademark which: "…has become capable of misleading the public, in particular with regard to the nature, quality or origin of the goods or services, due to the manner and context in which it is used by the owner or with its approval, for the goods or services for which it is registered." 

The Historical Trademark provisions will increase the enforceability of the above articles, which were rarely applied by the Italian courts. In a few weeks, UIBM will issue an implementing regulation "Circolare Ministeriale" in which all the practical provisions and taxes will be clarified. It will be indicated the date in which the Office will start to receive historical trademark applications from 50 years old registered or used trademark proprietors. 

Whether you are a trademark owner or an implementer, Dennemeyer can provide you with expert legal advice on Marchi Storici and will keep you informed about the developments of this new type of trademarks.

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