A further step Italy takes towards the complete realization of the EU Directive 2015/2436 about the adjustment of member countries’ trademarks regulations
 Considering law n. 42 of the EU Directive n. 2015/2436
The Legislative Decree n. 15/2019 will become effective on March 23rd and entails important amendments to the current Industrial Property Code. This represents another fundamental step forward towards an Italian legislation regarding trademarks, also harmonized with the other EU countries. After the Legislative Decree n. 30/2005, which reformed the whole matter of industrial property with the creation of the Industrial Property Code, Italy started to work again on its internal legislation, thus essentially reducing the regulatory gap with EU trademarks, currently governed by the EU Regulation 2017/1001.
With the Legislative Decree n. 15/2019 the so-called “trademark package” of the Directive has been entirely implemented, with the following main innovations:
- Abolition of the graphic representation as an essential requirement for the registration of a trademark. This foreshadows the introduction of new types of trademarks (the so-called “non conventional trademarks”) that – according to the explanatory report on the draft legislative decree – will be defined as a secondary issue on the national level through the implementing regulation of the Industrial Property Code.
- Exclusion from registration as trademarks of those signs protected by designations of origin, geographical indications , traditional terms for wines, traditional specialities guaranteed and names of plant varieties.
- Introduction of a new type of certification mark, created in order to allow accredited subjects according to the existing certification legislation to guarantee the origin, nature and quality of specific products and services.
- Reform of collective trademarks. In this regard, there is a transitional provision which allows until March 23rd 2020 to request the conversion of collective trademarks registered according to the current legislation into “new collective trademarks” or certification marks. If trademark owners fail to request such conversion, their trademark will be revoked.
- Extension of those rights granted with the trademark registration, with particular reference to well-known marks, to the activities the trademark owner can forbid to third parties and to the suspension of counterfeit goods coming from non-EU countries, even when they are in transit towards an EU country.
- Introduction of new reasons to file oppositions , such as (i) earlier well-known trademark, even when it covers different products or services; (ii) earlier trademark with reputation according to art. 6-bis of Paris Convention; (iii) designation of origin or geographical indication.
- Introduction of the administrative procedure of invalidity or revocation at UIBM as an alternative to judicial procedures. These new administrative procedures will become effective 30 days after the publication of the Minister of Economic Development’s decree establishing its application. In this regard, it’s worth recalling that art. 54 of the Directive 2015/2436 sets on January 14th 2023 the deadline to adjust to such amendment.
- Detailed regulation of the proceeding before the Board of Appeal according to articles 16, 17 and 18 amending and integrating the previous legislative framework which used to govern this set of rules roughly. This amendment aims at overrunning the interpretative and applicative difficulties still to be solved in appeals against UIBM’s decisions.
- Introduction of several procedural amendments, such as (i) the legitimation of the licensee to promote a counterfeiting action; (ii) the right of the defendant in a counterfeiting action to request to the trademark owner a proof of use of the same during the 5 years before the action was initiated; (iii) the inversion of the burden of proof in non-use revocation actions.
Lastly, it has to be pointed out that art. 35 of the Legislative Decree 15/2019 provides that the Ministry of Economic Development can adopt possible new implementing provisions regarding matters which are not subject to the saving clause nor governed by existing regulations.
Considering the number of amendments included and their extent, we shall comment the most relevant news in other follow-up articles.