Italy: Italy And The Trade Mark Directive

Last Updated: 18 January 1995
Italy managed to implement the European Community Directive 21/12/88 for the harmonisation of the substantive law of validity and infringement of trade marks within the time specified by the Directive - a fact worthy of note. With the entering into force of the Decreto Legge no. 480/92 on 31/12/92 many of the optional as well as the obligatory provisions of the Directive were included in the new legislation which modified or substituted many of the provisions of the preceding trade mark law of 1942.

Changing Role of a Trade Mark
Traditionally, a trade mark in Italy has distinguished a product or service as deriving from a particular source of production. However, one of the innovations to emerge from the legislation is the new role of the trade mark which, on the one hand, is a means of communicating a complex message and, on the other, has a value in itself as an asset. Two provisions that illustrate this point are, firstly, the fact that anyone (not only entrepreneurs) now has the opportunity to register a trade mark with the sole proviso that one merely intends to license its use to others.

Secondly, trade mark protection has been extended to cover all marks that are capable of graphic reproduction, including sounds, colours and colour-tones. Thus, the importance given to the creative aspects of a trade mark in relation to its capacity to promote the image of the business and the product is clearly demonstrated.

The concept of a trade mark as an asset is further strengthened by the removal of the old provision that prevented a trade mark from being assigned to anything other than a business and its enterprise or to a "ramo d'azienda" (a branch of a business). The new law also provides that the opportunity to assign a trade mark only arises in relation to a few products or services for which it has been registered.

"Renowned" Trade Marks
The autonomous importance of the trade mark is also re- inforced in those provisions which introduce the concept of the trade mark which enjoys "rinomanza", or national renown. This right is a consequence of the renown that a trade mark has acquired and, therefore, arises after the person who has acquired it has preserved it in such a way that its fame has become consolidated in the mind of the consumer. No definition for the concept of the "renowned" trade mark exists and so it is for the person who has an interest in so doing to establish that a trade mark has acquired "renown". Further protection is afforded to a "renowned" trade mark by the introduction of the right to prevent others from using a mark similar or identical to your own, even where the products or services relating to the other mark have no affinity with those for which the owner of the trade mark which enjoys renown has registered them. This applies in two situations: first when the unjustified use of that mark would give an undue advantage which derives from the distinctive character or the renown of the trade mark. By way of illustration, this might occur were a manufacturer of tennis shoes to apply the trade mark of a well-known energy drink such as "Gatorade" to his products. Secondly, the owner of a renowned trade mark is afforded protection when the use of another identical or similar mark could damage the distinctive character or renown of the original trade mark.

However, the concept of "renown" seems to be of less importance than that of the "marchio celebre", or celebrated trade mark such as, for example, "Marlboro", "Coca-cola", "Chanel", and "Ford" etc. Although a definition does not exist for renowned trade marks, they could be considered to enjoy a certain consolidated fame, without being world famous as such. For example, in Italy the trade marks of "Alemagna" (trade mark of a Milanese catering business), and of "Borsalino" (trade mark of an Italian company that produces and commercializes hats) could be considered renowned. It should be noted that the concept of a "renowned" trade mark may, however, present problems particularly during the period in which the mark is still acquiring or consolidating its fame and there is a risk of conflict with those who produce goods or services in a different class who may have, independently, registered an identical or similar trade mark. The new legislation provides that a mark which is deposited as a trade mark for a class of products or services at a time when the same trade mark already exists for a different class of products and services and which is renowned is void for lack of novelty.

Another notable change in respect of renowned marks is the fact that a series of signs, symbols, names and, specifically, names of people; signs used in artistic, literary, scientific, political or sporting fields; and the denominations, crests and emblems of organisations that do not have economic purposes, if well-known, can now only be registered as trade marks by those who have the right to them or by those who have obtained the consent of such person. Examples of this kind of sign or emblem are the five rings of the Olympic Games, the Rotary Club's wheel, and the two crossed-keys of St.Peter on the Vatican flag.

Geographic Expressions
The new law prohibits the registration of trade marks which are geographic expressions used as descriptive indications, or used to mislead the public as to the geographic origin of the product. Obviously, the use of a geographic expression in a purely fanciful way is not forbidden since such use is not intended to confuse or mislead consumers as to the geographic origin of the product. No consumer would believe, for example, that Laura Biagiotti's perfumes "Roma" and "Venezia" were produced in Rome and Venice respectively, nor that "Mont Blanc" pens were produced on the slopes of Europe's highest mountain.

Collective Trade Marks
Indications relating to geographic origin cannot be the object of registration as a trade mark unless the geographic origin of a product is the object of a collective trade mark. The owner of a collective trade mark is an organisation which must grant the use of a particular collective trade mark to any entrepreneurs who will then use that mark in addition to their own if their products can meet the quality requirements and if they possess the characteristics required by the constitution of that organisation. Any subject may now be the owner of a collective trade mark, not just an organisation, so that a physical person may become the owner of such a trade mark if he or she intends to guarantee the origin, the nature or the quality of specific products or services.However, the legislation provides that a collective trade mark will lapse if the owner of that trade mark does not exercise sufficient control over the maintenance of quality standards of the products or services in accordance with the provisions specified for the use of that kind of trade mark.

Lapse of Trade Marks
A trade mark will now lapse for lack of use after five years, instead of after three years as provided by the previous legislation. The right to a trade mark will also lapse if it has become the generic denomination of a product or service. This is known as "vulgarisation" of a trade mark and examples of this in Italy are "Premaman" for maternity clothing and "Frigidaire" for refrigerators.

Another provision worth mentioning, although not a novelty in Italy, is the concept of a trade mark that is partially void or lapsed in respect of certain products or services only. The concept of a trade mark that is partially void of partially lapsed allows the mark to survive in relation to products or services that are not afflicted by the conditions that would otherwise cause them to lapse or be void.

A trade mark will also lapse when the mark becomes capable of misleading the public as to the nature, the quality or the origin of products or services as a result of the way in which the trade mark is applied by its owner or by others with the owner's consent to the products or services for which it is registered. Further, a trade mark will lapse if its use becomes illegal, is contrary to public policy or public morality. Thus, the new legislation distinctly emphasises the correct use of trade marks.

Trade Marks and the Form of Products
The previous legislation did not permit the registration as trade marks of figures or marks whose distinctive character was inseparably connected with that of its utility and design. For example, prevailing case law recognised three- dimensional bottles which have a particular aesthetic value, separate from their utility and design, as valid trade marks. The new legislation has eliminated the difficult criterion of "separability" by introducing a provision that the form of a product or the form of the packaging of a product can be the object of a trade mark right. However, it should be stated that the form given to a product as a result of the nature of the product itself or as a result of its function cannot constitute a trade mark, but that in order to do so, the form must add "substantial value to the product".

Miscellaneous Provisions
Finally, it is worth noting that some changes have been made to the legislation regarding the procedure for the registration of a trade mark and the duties of the Italian Trade Mark office. Changes have been made to the rules governing publication of all matters concerning trade mark procedure and some of the terminology and even the name of the office with competence over trade mark matters has been changed - it will now be known as the Ufficio Italiano Brevetti e Marchi instead of the Ufficio Centrale Brevetti.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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