The ‘growth decree,’ Decree Law No. 30.4.19. 34, introduced the basis for a system of protection and support of historical trademarks of national interest. With good memory of the recent Pernigotti case and so many other dramas of relocation of ‘Made in Italy‘ agribusiness. (1)
Notorious brands and historical brands, the French example
So-called ‘well-known trademarks ‘ already receive extensive protection in Italy, in the Industrial Property Code (IPC). Where their owners are guaranteed the right to prohibit third parties from using identical or similar signs even on goods or services other than those where the trademark registration insists. (2) Thus, for example, Campari can exercise privity against those who try to copy its trademark on articles of clothing, even though the protection is rooted in alcoholic beverages. (3)
The ‘historic mark of national interest‘ is a new institution, a major reform in the Industrial Property Protection Code. No doubt inspired by the French legislature, which – with the 2014 ‘loi Florange‘ – declaredly aims to ‘reconquérir l’économie réelle,’ that is, to recapture the real economy. (4) Indeed, the former empire of the Sun King offers excellent examples of how to stimulate the national economy through appropriate regulations. We hold dear, among many others, themandatory indication of the origin of meat in restaurants.
The measures adopted for the protection of distinctive signs of national interest, in France as in Italy, aspire to protect current and concrete collective interests. The protection of an intangible heritage-the names and historical signs of Italian entrepreneurship-is worth discouraging the relocation of production associated with it. An unfortunately widespread phenomenon in the ‘fallen nobility’ of the Italian industrial class. And it is also essential to protect characteristic names from the risk of ‘vulgarization,’ which undermines any possibility of their protection.
The historical mark in the ‘growth decree’
‘Protection of Made in Italy‘, Chapter III of the so-called ‘Growth Decree’, Articles 31 and 32. (5) Owners or exclusive licensees of trademarks that have been registered for at least fifty years–or for which continuous use can be demonstrated for at least fifty years–used to market products or services made in a manufacturing enterprise of excellence, historically linked to the national territory, may obtain registration of the trademark in the ‘Register of Historic Marks of National Interest‘.
The ‘register of historical trademarks of national interest‘ is established at the Italian Patent and Trademark Office (UIBM). Registration, at the instance of the trademark owner or licensee, will also allow the use of a special logo identifying historicity. (6) Such a logo is to be prepared by a special decree of the Ministry of Economic Development, where the criteria for the use and enhancement of historical trademarks of national interest will be outlined.
Historical trademarks, preservation and enhancement measures
A ‘fund for the protection of historical trademarks of national interest‘ is established in the same ‘growth decree’. (7) With the dual objective of encouraging the continuation of production activities in Italy and safeguarding employment levels. The fund will intervene in the venture capital of enterprises owning or licensing trademarks registered in the special register that are in crisis situations.
Interventions will have to be carried out in compliance with European rules on state aid, based on an interministerial decree that will establish the criteria for managing the fund. In favor only of companies that are owners or licensees of the ‘brands‘ registered in the special register that intend to close the original (or at any rate the main) production site, due to cessation of activity or its relocation outside the national territory, with consequent risks of collective dismissal.
Companies wishing to access aid must submit a set of information to the Ministry of Economic Development. In particular:
(a) economic, financial or technical reasons for the closure or relocation project,
(b) actions aimed at reducing employment impacts through exit incentives, early retirements, relocation of employees within the group,
(c) actions to be taken to find new buyers,
(d) opportunities for employees to make a takeover bid and any other possibilities for the recovery of ‘assets’ by them.
The Ministry of Economic Development-after receiving the information-will initiate the process to assess what needs to be done in order to safeguard domestic production. Beneficiary enterprises that fail to send the required communications are subject to an administrative penalty of 5,000 to 50,000 euros.
Marks of national interest, other proposed legislation
Marks of national interest are the subject of three other new bills now being considered by the relevant committees in the House of Representatives. Of particular note are two bills (ddl):
– ddl 1518 proposes to include in the Industrial Property Code a new hypothesis of forfeiture of trademarks registered before 1.1.1969, if the owner ceases manufacturing the product in the municipality where it was registered on the date of registration of the trademark, (8)
– ddl 1631 introduces the notion of ‘national historic brands of high territorial value,’ re-proposing the same criteria adopted in the ‘growth decree’ in the meantime. (9) With the addition of a provision for forfeiture of rights, in cases of transfer of the production site from the original one.
Origin and ‘Made in’, the high road to follow
The compatibility of the above measures with European and international rules on trademark protection is questioned. And its effectiveness with respect to its stated purposes is questioned. Taking into account, in particular, the not a few cases in which industrial development and logistical needs have led owners of historical brands to relocate production sites to municipalities other than their original ones. Registration in the special register, moreover, is not mandatory nor does it in any case bind trademark owners to maintain production in Italy.
Rather, it is imperative to introduce a European-wide requirement to indicate on the label the location of the production plant and other information about the origin of products and their raw materials, as has been stated on this site for years. Transparency on the label is indeed the main way to enable global consumers to distinguish true ‘Made in Italy‘ from so-called ‘Italian sounding‘ and make responsible purchasing choices.
Dario Dongo and Marina De Nobili
Notes
(1) For a brief review of the most famous examples of the relocation of ‘Made in Italy‘ agribusiness, see the article https://ilfattoalimentare.it/sede-dello-stabilimento-etichetta.html
(2) Cf. Industrial Property Protection Code, Leg. 30/05, art. 20.1.c
(3) This level of protection is indeed unnecessary for industrial giants of the caliber of Campari or Barilla, which invest considerable resources to protect their trademarks by registering them on every class of goods and services and in every geographic context. Instead, it is useful for those thousands of enterprises, including SMEs, that are not as organized on the intellectual property front
(4) Loi n° 2014-384 du 29 mars 2014
(5) Cf. DL. 30.4.19 n. 34, ‘Urgent Measures for Economic Growth and Resolution of Specific Crisis Situations‘, https://www.gazzettaufficiale.it/atto/serie_generale/caricaDettaglioAtto/originario;jsessionid=jzAPPJw1mwZ8ehh5X58O0Q__.ntc-as2-guri2b?act.datePublicationGazette=2019-04-30&act.codeRedact=19G00043&list30days=false
(6) The application for registration in the new register must be submitted in accordance with Leg. 30/05, Article 185a
(7) Cf. Industrial Property Code, new Article 185b. Introduced by DL 30/19, Art. 1.1.b (‘Enhancement of historical brands in business crises‘)
(8) House of Representatives, bill no. 1518 (Fornaro, Bersani, Epifani), ‘Amendment to Article 24 of the Industrial Property Code, set forth in Leg. 10.2.05, n. 30, on the preservation of historical trademarks‘, http://www.camera.it/leg18/995sezione=documenti&tipoDoc=lavori_testo_pdl&idLegislatura=18&codice=leg.18.pdl.camera.1518.18PDL0044180&back_to=http://www.camera.it/leg18/126?tab=2-e-leg=18-e-idDocumento=1518-e-sede=-e-tipo=
(9) House of Representatives, bill no. 1631 (Molinari et al.), ‘Provisions Concerning the Protection of National Historic Marks of High Territorial Value,’ http://documenti.camera.it/leg18/pdl/pdf/leg.18.pdl.camera.1631.18PDL0049560.pdf
Dario Dongo, lawyer and journalist, PhD in international food law, founder of WIISE (FARE - GIFT - Food Times) and Égalité.
Graduated in law in Trento, she follows a master's degree in food law at Roma Tre. She is passionate about food and wine, she is between culture and tradition.
