On 8 March 2019 Legislative Decree no. 15 of 20 February 2019 entitled “Implementation of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States relating to trademarks, and adjustment of the national legislation to the provisions of the Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending the Regulation on the EU trademark” was published on the Official Gazette.
The Decree, which establishes the amendment of some provisions of the Industrial Property Code and the introduction of new provisions, will enter into force on 23 March 2019 and will introduce relevant changes in the present trademark regulation.
The goal pursued is that of strengthening the protection of the trademarks proprietors’ rights, as well as to take an important step towards a more complete harmonization of the European legislations regarding IP law, which is essential in order to guarantee greater competitiveness in the global market for European companies.
Below is an overview of the most important amendments.
Abolition of the requirement of the graphic representation of the trademark.
The graphic representation of the trademark, provided as a requirement for the registration by art. 7 of the Industrial Property Code, is abolished. Therefore, from now on, it will be possible to register trademarks not capable of being represented from a graphic point of view, provided that they are capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Art. 11 bis is introduced in order to regulate the so-called “certification trademarks”, i.e. the trademarks whose role is to certify that the products or services distinguished by them respect specific features regarding, for instance, the materials, the quality, the manufacturing process or the procedure for the performance of the services.
New grounds for refusal.
Art. 14 of the Industrial Property Code is amended with the introduction of new grounds for refusal. In particular, trademarks shall not be registered if they are in contrast with designations of origin, geographical indications, traditional terms for wine and traditional specialties guaranteed. Likewise, trademarks which consist of or reproduce in their essential elements an earlier plant variety denomination, shall not be registered.
Trademarks having reputation.
The protection of trademarks having reputation is strengthened. Indeed, art. 20, para. 1, lett. c) of the Industrial Property Code is amended in a way that establishes the right of the proprietor of a registered trademark having reputation to prevent third parties from using, in the course of trade, a sign identical or similar to the registered trademark, if the sign without due cause takes unfair advantage of or is detrimental to the distinctive character or the repute of the trademark, even when the sign is used for purposes other than that of distinguishing products and services.
Preparatory acts for counterfeiting.
Par. 2 of art. 20 of the Industrial Property Code introduces the right of the proprietor of a registered trademark to prohibit third parties from affixing the sign to the packaging, labels, tags, security or authenticity devices or components thereof or on other means to which the trademark may be affixed or to offer, to put on the market, stock them for such purposes, import or export such means bearing the sign, when there is a risk that they may be used in activities constituting infringement of the proprietor’s rights. The exclusive rights of the proprietor of the registered trademark are therefore strengthened thanks to the introduction of the prohibition of the so-called preparatory acts for counterfeiting.
Legitimacy of the licensee.
The legitimacy of the licensee to bring proceedings for infringement is regulated through the introduction in the Industrial Property Code of art. 122 bis. More precisely, without prejudice to the provisions of the license agreement, the licensee may bring proceedings for infringement of the licensed trademark only if its proprietor consents thereto. However, the holder of an exclusive license may bring such proceedings if the proprietor of the trademark, after formal notice, does not himself bring infringement proceedings within an appropriate period. In any case, the licensee shall, for the purpose of obtaining compensation for the damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the trademark.
Administrative proceedings for the revocation and declaration of invalidity of registered trademarks.
Proceedings for the revocation and declaration of invalidity of registered trademarks before the Italian Office of Trademarks and Patents are regulated by Section II bis, art. 184 bis- 184 decies, of the Industrial Property Code. This is an absolute innovation aimed at simplifying the revocation or the achievement of the declaration of invalidity thanks to the recourse to the administrative procedure and without any prejudice to the right to act before the competent Court according to art. 120 of the same Code. The coordination between proceedings before the Office and proceedings before the Court is regulated by art. 122, as amended by the Decree under examination.