Italian Law on Trade Marks

The implementation of the EC Directive on Trade Marks means that Italian law is now more in line with the modern concept of the trade mark.

The recent amendments to the Italian law on trade and service marks (effected by Legislative Decree, 4th December 1992, no. 480, introduced in implementation of the EC First Directive on Trade Marks of 21st December 1988) represent a significant renewal of the law on this subject. In implementing the EC Directive the Italian legislator opted to take the opportunity to introduce a number of changes which go beyond those strictly required by the Directive, and which should have considerable effect in practice. Rather than introduce a completely new law, the decision was taken to amend the existing law on the subject, (which dated back to 1942) together with a number of the provisions of the civil code relating thereto.

The most significant changes introduced can be summarised as follows:
1) Greater protection introduced for well-known marks - The new law has extended the existing right of a proprietor of a validly registered trade or service mark to prohibit third parties from using an identical or similar mark in relation to the same or associated products or services, to also cover products and services which are not associated, where the mark in question enjoys a particular reputation in Italy, or where such use by a third party would enable them to obtain an unjustifiable benefit from the reputation of the mark or where such use could prejudice the same. Obviously at this stage a number of doubts exist as to how the existence of "reputation" in relation to a mark is to be determined.
2) Introduction of the principle of free transfer of the mark - Previously, an effective transfer of a mark had to be accompanied by a transfer of the business, or at least the branch of the business to which the trade or service mark related. This restriction has now been removed by the amended law and the mark will be "freely transferable", subject to certain conditions, aimed at protecting the public, which state that such transfer must not result in the public being deceived as to the nature of the product or the service. In certain situations therefore, it may be possible to effect a transfer in relation to only a part of the products/services covered by the registration.
Similar flexibility has been introduced in relation to the licensing of registered marks. Subject to certain restrictions as to the products covered and to the same conditions regarding protection of the public, licences are no longer required to be exclusive, and may relate to only a part of the products or the services for which the mark is registered. The licence may also relate to only part of the geographical area covered by the registration.
At the same time, the proprietor's protection against a licensee who breaches the terms of the licence granted has been strengthened, in that the proprietor will be able to bring an action for infringement of his mark in addition to the usual rights for breach of contract.
3) Legislative recognition of the fact that a trade mark acquires validity or is strengthened by its use
- This means that where a mark has been registered and used in good faith for an uninterrupted period of five years, the proprietor of a previously registered mark which is the same or similar will no longer be able to have the mark declared void. As a consequence, proprietors of existing registered marks would be advised to keep registrations in relation to the same or similar products under observation, or risk losing their exclusive rights in respect of that mark.
4) Possibility for parties to become proprietors of marks other than in the course of trade
- Previously, registration as proprietor of a trade mark was restricted to businesses carrying out a trade ("imprenditori"). This restriction has now been removed and registration is therefore also open to a party who does not intend to use the mark directly for their own products and who merely intends to grant a third party the right to use the mark. This would arguably permit, for example, an advertising agency to register a mark at an early stage in the launch of a client's new product, and where appropriate transfer the mark to the client at a later stage.
5) The reduction of the duration of the registration from 20 to 10 years
- A registration will now have effect for the shorter period of ten years, after which the registration can be indefinitely renewed for further ten-year periods. Where minor alterations have been made to the mark in the meantime, it will be possible to file a modified version of the mark on renewal.
6) The following will now be registrable as trade marks: letters, numbers, sounds, combinations and shades of colours, in addition to the shape or form of a product or of its packaging.
7) New regulations relating to collective Trade Marks.
- An important amendment has been made to the existing law in relation to so-called "collective" trade-marks, i.e. those which under the former law were reserved to legally recognised associations and bodies which guaranteed the origin, the nature or the quality of a particular product of businesses which belonged to that body or association. This reservation has now been abolished, meaning that it is no longer necessary for there to be a connection between the proprietor and the parties who are given authorisation to use such collective mark. A party seeking registration of a collective mark is now merely required to file a copy of the regulations with which users of the mark will be required to comply. Failure by the registered proprietor to check and enforce compliance with those regulations by authorised users may be punished by deletion of the registration, thereby also penalising all those using the mark on their products.

This amendment to the law will therefore enable all those parties who did not previously fall within the categories authorised by law to register a collective mark, to officially carry out the function of guaranteeing the quality or origin of a product.

Practical Pointer
- The recent legislation gives well-known marks increased protection, including outside the areas where they have traditionally been applied, and simplifies the registration, licensing and transfer of marks in general.