Trademarks and "Decreto Crescita": the latest updates and new measuresThere are several developments that affect brands among the measures contained in the "Decreto Crescita" 3 September 2019
The "Growth Decree" has contributed to a number of changes to the Industrial Property Code (CPI) containing a series of measures aimed at relaunching the country's economy. Among the various measures introduced by the Decree and subsequently converted – in addition to the innovations in the field of patents and the new rules of the Patent Box in Italy – trademarks have also been the object of several innovations that are listed below.
Historical and national interest marks
With the inclusion of the definition of historical trademark of national interest – pursuant to Article 11-ter of the CPI – and the consequent establishment of a special register at the Italian Patent and Trademark Office – pursuant to Article 185-bis of the CPI – it is possible to obtain the registration of the title in the special register for the owners or licensees of trademarks that respect certain specific characteristics such as:
- title registered for at least fifty years or for which it is possible to demonstrate the same continuous use
- the owners of these trademarks have a production activity located in the Italian territory
The owners of historical trademarks registered in the Register can both use the special logo "Historical trademark of national interest" for commercial purposes, and also access the Fund established by the Ministry of Economic Development (MiSE) – which has been allocated an initial fund of 30 million euros for 2020 – in order to safeguard employment levels and the continuation of production activities within the national territory.
The obbligations of a company that decides to register in the special Register have also been specified: if the company decides to close down its main production site due to the cessation of activities or relocation outside the national territory, it will be obliged to notify the MiSE of all the information requested. In any case, the company, after initially informing the MiSE, will be obliged to update it every 3 months on the identification of potential buyers and related proposals received. Violation of these information obligations will result in the application of an administrative sanction ranging from €5,000 to €50,000.
Italian Sounding: practices aimed at false evocation of the Italian origin of products
Another important innovation provided by the Growth Decree and recently converted into law is aimed at protecting the originality of Italian products sold abroad: the so-called Italian Sounding.
Italian Sounding is, in fact, the phenomenon attributable to a misleading use – for products made abroad – of brands, signs, references, images, colors and names that evoke Italy, with the aim of promoting and marketing these products by unfairly competing in the market and, inevitably, gaining a competitive advantage over the competition.
Following the conversion into law in the CPI, some new articles relating to the practices of Italian Sounding have been added, defined as "practices aimed at the false evocation of the Italian origin of products" and are the subject of the activities of the National Anti-Counterfeiting Council.
In fact, a 50% subsidy for the legal costs incurred to protect Italian products affected abroad by this phenomenon has been introduced. The beneficiaries will be the protection consortia which – together with the collective organizations of companies operating in foreign markets – will also be able to benefit from the extension of this measure also to the costs linked to the implementation of communication campaigns aimed at allowing the recognition of the Italian product.
Finally, a ban has been added on the registration of the names of states and other local authorities, of signs that can be traced back to the armed forces and the police, as well as of trademarks that are detrimental to the image.