The application of that part of the '2019 growth decree' that provided for the establishment of is finally operational new register of the ‘Historic Brands of National Interest’. (1) The following news.
Historic brands of national interest, Mi.S.E. decree 7.4.20
The 27.2.20 decree of Mi.S.E. (Ministry of Economic Development), in Official Gazette 7.4.20, implements the 2019 growth decree indicating the registration methods in the register of ‘Historic brands of national interest’. (2)
Applications can be submitted to UIBM from 16.4.20, exclusively online, with payment of a stamp duty of 15 euros (art. 2). The applications must be accompanied by:
– for registered trademarks, the minutes of first filing in Italy (or the oldest renewal minutes), the reproduction of the trademark sample as well as all documentation relating to any changes (limitations or partial waivers) of registrations on the protected products and/or services,
– for unregistered trademarks, the reproduction of the trademark sample and the documentation (pursuant to legislative decree 30/05, art. 178.4 and Ministerial Decree 33/10, art. 53.4), demonstrating effective and continuous use for at least 50 years. Specifying the products and services to which they refer, according to the international Nice classification. Such documentation may consist of the presentation of packaging samples, labels, price lists, catalogs, invoices, shipping documents or export, photographs, newspaper advertisements, written statements and ‘similar means’ (art. 3).
The ‘Historic Trademark’ Italian
The UIBM (Italian Patent and Trademark Office), following receipt of applications, verifies compliance with the established conditions and the evidentiary suitability of the attached documents. It has the power to communicate an observation and assign a 20-day deadline for documentary integration and in any other case deemed necessary. The investigation must be concluded within 60 days for registered trademarks, and within 180 days in the case of unregistered trademarks (Ministerial Decree 27.2.20, Article 4).
In case of acceptance of the application, UIBM allows the applicant promotional use of the recognition mark ‘Historic Trademark’ as reported below.
The special register of historic trademarks of national interest is published on the website www.uibm.gov.it and can be consulted on the UIBM’s database of industrial property deposits and titles, which ensures its constant updating (art. 7).
Registration in the register is of unlimited duration, is not subject to renewal and the holder can request its cancellation at any time. Cancellation is subject to the same examination procedures, without certainty for now about its automatic acceptance.
Mandatory notification of closure or relocation
The company holder or licensee of trademarks registered in the newly established special register – if it intends to close the original (or main) production site to cease operations or to relocate it abroad, with consequent collective redundancies – has the duty to notify the Ministry of Economic Development of the relevant information.
Following the notification mentioned above, the MiSE initiates the process to identify possible interventions, drawing where appropriate on the resources of the new ‘Fund for the protection of Historic Trademarks of National Interest’. With the aim of safeguarding employment levels and the continuation of productive activity on the national territory.
The violation of the obligations of notification indicated above entails the application of administrative sanctions from € 5,000 to € 50,000.
Guarantee fund for SMEs
SMEs owners or licensees of the historic brand can also access the appropriations of the ‘Guarantee fund for small and medium enterprises’, for projects to enhance their own brand. The access procedures to this fund have not yet been established.
Dario Dongo, Domenico de Simone, Giovanni Orsoni
Note
(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 for the resolution of specific crisis situations’
(2) MiSE Decree 27.2.20, Directorate-General for the Protection of Industrial Property, Italian Patent and Trademark Office. ‘Application procedures for registration in the special register of historic trademarks of national interest’ (20A01963). Published in the Official Gazette General Series 7.4.20, no. 92
Lawyer active 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.
Lawyer double-qualified 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.
