ITALY: Amendments to the Italian trademarks rules, with particular reference to agreements concerning the use of trademarks.

Marco Venturello | ITALY | 2019-11-18

Marco Venturello

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Such Legislative Decree amended the Industrial Property Code (Legislative Decree no. 30/2015).

Among other amendments such as:

– the abolishment of the requirement of “graphical representation” for trademarks, giving therefore the right to apply for the registration of unconventional trademarks;

– the introduction of the certificate trademarks besides the collective trademarks;

– the fact that also specific preparatory acts, such as putting the trademark on labels not yet incorporated in the relevant products, are considered counterfeiting.

There is a specific news for agreements concerning the use of the trademark, introduced by the following new article of the Industrial Property Code:

Art. 122-bis. Legitimation of the licensee in counterfeiting action.

1. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a trademark only if its owner consents thereto. However, the holder of an exclusive licence may bring such proceedings if the owner of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period of time.

2. The licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the owner of the trademark.

3. The rules under paragraphs 1 and 2 apply to the legal entities authorized to the use of collective trademarks according to article 11.

A few comments on this new article of law:

– these rules are consistent with those of article 25 no. 3 of Regulation (EU) no. 1001/2017 on the European Union Trademarks, therefore the interpretations given in the past to such article of the EU Regulation can be useful for the future interpretation of the new article introduced in the Italian Property Code;

– the opening of the article by the expression “without prejudice of the provisions of the licensing contract” gives room to different contractual arrangements, stating explicitly that the rules contained in the article of law can be derogated. In other words, the parties to a licence agreement are free to depart from these default rules;

– since a trademark licence is contained in the franchising agreements, it could be inferred that these rules apply not only to licensees in the strict meaning of the word but also to franchising agreements. This broad interpretation must be checked with the future jurisprudence.

Always in the framework of the news concerning distinctive signs, it is worth mentioning that on April 30, 2019 the Law Decree no. 34 was issued concerning also trademarks and legal protection of the “made in Italy”. Also such decree, which was converted in Law no. 58 of June 28, 2019, amended the Industrial Property Code (Legislative decree no. 30/2015).

The main news are (i) article 11-ter on the “historical trademarks of national interest” and (ii) on the purpose of protecting the “Italian sounding”, the legislator at article 10 extends the prohibition concerning the fact of being considered non-registrable as trademarks to those signs that consist in words or images damaging the reputation of the Italian State. The definition of “Italian sounding” is given at article 144, par. 1-bis: the “Italian sounding” practices are those which are aimed to the false evocation of the products’ Italian origin.


Marco Venturello, IDI Member

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