The implementation of that part of the ‘2019 Growth Decree’ that provided for the establishment of the new register of ‘Historic Marks of National Interest‘ is finally operational. (1) News to follow.
Historical marks of national interest, Mi.S.E. decree 7.4.20
The decree 27.2.20 of Mi.S.E. (Ministry of Economic Development), in the Official Gazette 7.4.20, implements the Growth Decree 2019 by indicating how to register ‘Historic Marks of National Interest’. (2)
Applications can be submitted to the UIBM from 16.4.20, exclusively electronically, with payment of stamp duty in the amount of 15 euros (Art. 2). Attached to the applications must be:
– for registered trademarks, the record of the first filing in Italy (or the less recent renewal record), the reproduction of the trademark specimen as well as all documentation pertaining to any changes (limitations or partial surrender) of the registrations on the protected goods and/or services,
– for unregistered trademarks, the reproduction of the trademark specimen and documentation (pursuant to Legislative Decree 30/05, Art. 178.4 and DM 33/10, Art. 53.4), demonstrating actual and continuous use for at least 50 years. Specifying the goods and services to which they refer, according to the Nice International Classification. Such documentation may consist of the submission of packaging samples, labels, price lists, catalogs, invoices, shipping or export documents, photographs, newspaper advertisements, written statements and ‘similar means‘ (Art. 3).
The Italian ‘Historic Brand‘
The UIBM (Italian Patent and Trademark Office), upon receipt of the applications, verifies the fulfillment of the established conditions and the evidentiary suitability of the attached documents. With authority to notify relief and assign a 20-day period for document supplementation and in any other cases deemed necessary. The investigation must be completed within 60 days in the case of registered trademarks and 180 days in the case of unregistered trademarks (DM 27.2.20, Article 4).
If the application is granted , UIBM allows the applicant to make promotional use of the ‘Historic Mark‘ recognition mark below.
The special register of historical trademarks of national interest is published at www.uibm.gov.it and can be consulted on the database of industrial property deposits and titles of the UIBM, which ensures that it is constantly updated (Art. 7).
Registration in the registry is unlimited in duration, is not subject to renewal, and the holder may request cancellation at any time. Deletion is subject to the same screening procedures, with no certainty for now about its automatic acceptance.
Mandatory notification of closure or relocation
The enterprise owner or licensee of trademarks registered in the newly established special register-if it intends to close its original (or otherwise main) production site in order to cease operations or relocate it abroad, resulting in collective redundancies-is under a duty to notify the Ministry of Economic Development of the information relating thereto.
Following the above notification, the MiSE initiates the process to identify possible interventions, drawing on resources from the new ‘Fund for the Protection of Historic Marks of National Interest’ where appropriate. With the aim of safeguarding employment levels and the continuation of production activities in the country.
Violation of the above reporting requirements will result in administrative penalties ranging from €5,000 to €50,000.
SME Guarantee Fund
SMEs that own or license the historic brand name can also access allocations from the ‘Guarantee Fund for Small and Medium Enterprises‘ for projects to enhance their brand name. The terms of access to this fund have not yet been determined.
Dario Dongo, Domenico de Simone, Giovanni Orsoni
Notes
(1) Growth Decree, DL. 30.4.19 No. 34, converted with some amendments into Law 28.6.19, No. 58. ‘Urgent measures for economic growth and the resolution of specific crisis situations‘
(2) MiSE Decree 27.2.20, General Directorate for Industrial Property Protection, Italian Patent and Trademark Office. ‘Application procedures for registration in the special register of historical trademarks of national interest‘ (20A01963). In OJ General Series 7.4.20, no. 92
Active lawyer in the field of intellectual property since 1972, he is a founding partner of De Simone & Partners Spa and De Simone Law Firm. Former president of the European Communities Trademark Association (ECTA), he follows all areas related to the economic exploitation of intellectual property rights.
Double-qualified lawyer in Italy and the UK, active in the field of intellectual property since 2005. He has worked in London, Venice, Milan and Rome, with a particular focus on trademarks, copyright, domain names, and design.
Dario Dongo, lawyer and journalist, PhD in international food law, founder of WIISE (FARE - GIFT - Food Times) and Égalité.
