The New Italian Certification Mark
The main function of the certification mark – also called “hallmark” by the EU Directive 2015/2436 of December 16th 2015 about company trademarks, later implemented by the legislative decree n. 15/2019 – is to guarantee the conformity of certified products and services according to specific standards established by the trademark owner (for example with regards to the material, the manufacturing proceeding or the service performance, the quality, precision or other characteristics).
Before the above-mentioned legislative news, the Italian law system already acknowledged the institution of the so-called “collective mark”. In absence of the specific “certification mark” category, which was already known by foreign jurisdictions but not in Italy, the “collective mark” typology actually included both the collective mark as strictly intended, having a predominant function of quality guarantee, and the collective mark with a certification purpose.
With the recent amendment of the Industrial Property Code (IPC), the “certification mark” obtained an autonomous recognition. We will analyse hereby the peculiar features of this new type of trademark.
- The ownership
Article 11-bis of IPC establishes that certification marks can be requested by “individuals or legal entities, including institutions, authorities and bodies accredited under current certification legislation to ensure the origin, nature or quality of certain products or services, […]”.
This text – maybe not that clear – has been subject to a double interpretation, so that Italian certification marks can be requested by:
- only individuals or legal entities accredited to certify products and services or
- any individual or legal entity and institutions (central, regional or local administrations), besides the above-mentioned accredited bodies.
According to the first interpretation, drawn up in the explanatory report accompanying the draft legislative decree, the Italian system of certification marks would be available only for a specific category of subjects, that is to say those accredited to the certification activity who should guarantee a greater control upon certified products and services. On the contrary, the second interpretation, drawn up by the Italian Patents and Trademarks Office (UIBM), seems to be providing less protection as it considers – as established at a European level – that it is not necessary to be previously accredited for certification activities in order to be the owner of a certification mark. In the current framework, taking into account that this second interpretation comes from the Office in charge of granting trademark registrations, it is unlikely that an application for a certification mark filed by a subject who is not accredited to certify products or services is refused for this reason.
Anyways, the certification mark owner should better stay neutral with regards to the user of such mark. In other words, the trademark owner shouldn’t be involved in activities regarding the supply of certified products or services. The neutrality requirement, which can be applied also at a European level, appears intrinsic in the very essence of the certification mark: according to the law, the owner actually becomes the supervisor entity verifying that the certified standard is respected by all users, so cannot use the trademark for the same products or services he/she certifies.
- Use of the mark
As widely known, in order to avoid revocation, a trademark should be used actually and effectively within 5 years from its registration. About this, art. 24.1 ter IPC established that the trademark is considered to be used when such exploitation is made by legitimate subjects.
- Regulations of use and subjects entitled to use certification marks
Just like collective marks, certification marks also require the adoption (and filing) of regulations of use that – among others – should mention the people entitled to use the trademark, the products and services certified, the conditions of use, the characteristics that should be met in order to make use of the trademark, the verification procedures of such characteristics and the penalties provided for non-compliance .
With regards to subjects entitled to use certification marks, the provision appears rather ambiguous, leaving room for interpretative doubts. In particular, the question arises as to how much we should be specific when identifying such subjects. It is surely unlikely that it is necessary to mention their names. More probably, such requirement could be met by indicating the following, as requested by the guidelines of European certification marks: (i) any subject respecting the requested standards for certification or (ii) a specific category of people. In this regard, it’s worth clarifying that the guidelines, in case one chooses to indicate a specific category of people, require that the regulations mention the objective criteria determining whether such subjects are authorized to use the certification mark. In absence of further specifications by the Italian legislation and any other guidelines or newsletter by the UIBM, the matter is still open and will be probably outlined in detail with the consolidation of a filing practice.
- Designation of geographical origin of certified products and services
Contrary to what established for “individual” marks, which cannot entail signs or indications designating the geographical origin of products or services on the market, for Italian certification marks, as well as for collective marks, there is no such prohibition. This provision differs substantially from the analogous European regulation which clearly establishes that certification marks cannot entail indications designating the geographical origin on the market (in fact, several European trademark registration applications have been refused for this reason).
It is possible that the Italian law decided to move away from the reference European framework in order to provide Italian economic operators with another tool to protect the excellence of the national primary sector. However, it is necessary to specify that such exception is submitted under the UIBM’s examination which can refuse the registration if it deems that granting such signs or geographical indications might be potentially harmful to similar activities within the same region. Even in this cases, there is no fixed practice to be analysed in order to understand if and when the UIBM employs such supervision function.
Anyways, the new article points out that the registration of a geographical name as a certification mark does not authorize its owner to prevent third parties from using such name on the market, as long as such use is in compliance with professional fairness principles.
- Obligation of conversion of pre-reform collective marks into new collective or certification marks
Lastly, it’s worth highlighting that art. 33 of the legislative decree n. 15 of February 20th 2019 clearly establishes that within March 23rd 2020, owners of national collective marks registered in compliance with the old regulation can submit another application […] to convert the sign into a collective or certification mark, in compliance with the new regulation and that in case of lacking conversion the mark will be revoked starting from the provided deadline. The procedure for conversion of the above-mentioned collective marks is regulated by the circular 607 regarding temporary provisions for the conversion of signs into collective or certification marks.
Such law, not coming from the EU Directive 2015/2436, was probably introduced in the Italian system in order to clarify which marks – among those filed in the past as “collective marks” – should stay as they are and which ones should be qualified as “certification marks” instead. Therefore, within March 23rd 2020, the number of certification marks should increase, at least following the conversion of some trademarks previously filed as “collective”. We hope that such institution becomes more widespread over time, in order to achieve a better consumer’s protection, too.
 Art. 11- bis IPC.
 Art. 4 legislative decree n. 15 of February 20th 2019.
 Comment to art. 4 of the explanatory report of the government act n. 55.
 Circular 605 of 2019 issued by UIBM.
 All requirements to be respected by regulations of use are included in art. 157 clause 1ter of IPC.
 Art. 14 c.2 lett. c) IPC introduced a new reason for revocation, in case when the trademark owner doesn’t take reasonably suitable measures to prevent a use of the trademark which is not complying with the regulation.
 This would entail the necessity to amend the regulation every time that the entitled subjects change.
 Art. 13.1.b) IPC.
 Art. 11-bis c.4, IPC.