Italy: Reform of trademark law

The starting point
On 23 March 2019, a significant reform of the European Community trademark law took effect (legislative regulation no. 15 dated 20 February 2019 for implementation of Directive (EU) 2015/2436), by means of which a series of significant changes is introduced for trademark holders.

The content of the reform
Among the various innovations, the following aspects have practical significance:

  1. The introduction of the so-called “certificate mark” (warranty mark), by means of which the origin, the nature or quality of specific products or services is certified, provided, that the applicant does not supply the goods and services that are in question.
  2. Change of rules concerning the persons authorised to request collective trademarks; stock corporations are now expressly excluded, after not previously being explicitly regulated.
  3. Abolition of the obligation to graphic representability of the mark. The signs can be presented in any form considered suitable using the available technology, in so far as the presentation is clear, permanent and easily accessible. It is also possible to use mixed forms of images and sounds as well as theoretically also odours; in addition, moving marks and multimedia marks or holograms are conceivable. Therefore, the registration application must also contain the reproduction instead of the “representation”.
  4. Registration is prohibited for those signs whose form and other properties come directly from the nature of the product. Excluded from registration are signs concerning (i) the protection of the source and geographic information; (ii) the protection of traditional references for wines and (iii) the protection of protected traditional specialities. Finally, such signs that evoke misleading ideas are excluded from registration as marks.

In addition, the reform contains (i) new regulations with regard to the capacity of the licensee to sue to assert trademark violations, (ii) the introduction of an administrative procedure for the expiration and nullity of marks before the Italian trademark and patent office without instituting court proceedings, which was mandatory in the previous legal situation, (iii) in procedural terms changes to the burden of proof so that in the future in the context of annulment due to lack of use by the trademark holder, a corresponding use must be proven.

The Regulation contains more detailed transitional rules for holders of existing marks for adaptation to the new rules. After the transitional period of 1 year, there is thus a risk of trademark loss for the holders of pre-existing national collective marks with a lack of conversion of their own signs into a collective trademark according to the new rules or certificate mark.

The comprehensive reform of trademark law leads to a series of benefits for companies by adapting the national rules to the specifications applicable within the EU and introducing new instruments to combat counterfeits. In particular, the elimination of the obligation to provide graphic representability opens up entirely new possibilities in the course of technological progress.

Author: Alice Dossi