Historic trademarks of national interest, registry and protections in the 'growth decree'

The ‘growth decree’, decree law 30.4.19 no. 34, introduced the foundations for a system of protection and support of historic trademarks of national interest. With a good memory of the recent Pernigotti case and many other relocation dramas of the ‘Made in Italy’ agri-food sector. (1)

Well-known trademarks and historic trademarks, the French example

The so-called ‘well-known trademarks’  already receive extended protection in Italy, under the Industrial Property Code (CPI). Whereby their holders are guaranteed the right to prohibit third parties from using identical or similar signs even on products or services different from those on which the trademark is registered. (2) Thus, for example, Campari can exercise exclusivity against those who try to copy its trademark on clothing items, even though the protection is rooted in alcoholic beverages. (3)

The 'historic trademark of national interest’ is a new institution, an important reform in the Industrial Property Protection Code. Undoubtedly inspired by the French legislator who – with the ‘loi Florange’ of 2014 – explicitly aims to ‘reconquérir l’économie réelle’, that is to reclaim the real economy. (4) The former empire of the Sun King indeed offers excellent examples on how to stimulate the national economy through specific regulations. Among many, we are very fond of the mandatory indication of the origin of meat in restaurants.

The measures adopted to protect the distinctive signs of national interest, in France as in Italy, aim to protect current and concrete collective interests. The protection of an intangible heritage – the names and historical signs of Italian entrepreneurship – serves to discourage the delocalization of productions associated with it. A phenomenon unfortunately widespread in the 'fallen nobility' of the Italian industrial class. It is also essential to protect characteristic names from risk of 'vulgarization', which prejudices any possibility of their protection.

The historic trademark in the 'growth decree'

'Protection of Made in Italy’, Chapter III of the so-called 'growth decree', articles 31 and 32. (5) The exclusive holders or licensees of company trademarks registered for at least fifty years – or for which it is possible to demonstrate continuous use for at least fifty years – used to market products or services produced by a productive company of excellence, historically connected to the national territory, may obtain the registration of the trademark in the 'register of historic trademarks of national interest'.

The 'register of historic trademarks of national interest' is established at the Italian Patent and Trademark Office (UIBM). Registration, upon request of the trademark holder or licensee, will also allow the use of a specific logo identifying historicity. (6) This logo will have to be prepared by a specific decree of the Ministry of Economic Development, where the criteria for the use and enhancement of historic trademarks of national interest will be illustrated.

Historic trademarks, safeguarding and enhancement measures

A 'fund for the protection of historic trademarks of national interest' is established in the same 'growth decree'. (7) With the dual objective of promoting the continuation in Italy of productive activities and safeguarding employment levels. The fund will intervene in the risk capital of companies holding or licensing a trademark registered in the special register that are in crisis situations.

The interventions  they must be carried out in compliance with European rules on State aid, based on an interministerial decree that will establish the management criteria of the fund. In favor of only the companies holding or licensing the ‘brand’ registered in the special register intending to close the original production site (or anyway the main one), due to termination of activity or its relocation outside the national territory, with consequent risks of collective dismissal.

The companies  that intend to access aid must submit a series of information to the Ministry of Economic Development. In particular:

a) economic, financial or technical reasons of the closure or relocation project,

b) actions aimed at reducing employment impacts through exit incentives, early retirements, redeployment of employees within the group,

c) actions to be taken to find new buyers,

d) opportunities for employees to submit a public purchase offer and any other possibility of recovery of the ‘assets’ by them.

The Ministry of Economic Development – after receiving the information – initiates the procedure to evaluate the interventions to be carried out, in order to safeguard national production. Beneficiary companies that fail to send the required communications are subject to an administrative fine ranging from 5,000 to 50,000 euros.

Trademarks of national interest, other legislative proposals

The trademarks of national interest are the subject of three other new legislative proposals, currently under review by the competent Committees at the Chamber of Deputies. In particular, two bills (ddl) are noted:

– bill 1518 proposes to insert into the Industrial Property Code a new hypothesis of forfeiture of trademarks registered before 1.1.1969, if the holder ceases the manufacture of the product in the Municipality where it was registered at the date of trademark registration, (8)

– bill 1631 introduces the notion of ‘national historic trademarks of high territorial value’, proposing again the same criteria previously adopted in the ‘growth decree’. (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 main path to follow

It is doubted the compatibility of the above-mentioned measures with European and international rules on trademark protection is doubted. Their effectiveness with respect to declared purposes is also doubted. Particularly considering the numerous cases where industrial and logistical development needs have led the owners of historic trademarks to transfer production sites to municipalities different from the original ones. Registration in the special register, moreover, is not mandatory nor does it bind trademark owners to maintain production in Italy.

It is essential  rather to introduce the obligation, at the European level, to indicate on the label the location of the production plant and other information related to the origin of the products and their raw materials, as has been stated for years on this site. Label transparency is indeed the main way to allow global consumers to distinguish the true ‘Made in Italy’ from the 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 delocalization of ‘Made in Italy’ agri-food, see the article  https://ilfattoalimentare.it/sede-dello-stabilimento-etichetta.html

(2) Cf. Code for the protection of industrial property, legislative decree 30/05, art. 20.1.c

(3) This level of protection is in fact superfluous for industrial giants like Campari or Barilla, who invest significant resources to protect their trademarks by registering them in every class of goods and services and in every geographical context. It is instead useful for those thousands of companies, including SMEs, not equally organized on the intellectual property front.

(4) Law No. 2014-384 of March 29, 2014

(5) Cf. Decree Law 30.4.19 no. 34, ‘Urgent measures for economic growth and for the resolution of specific crisis situations',    https://www.gazzettaufficiale.it/atto/serie_generale/caricaDettaglioAtto/originario;jsessionid=jzAPPJw1mwZ8ehh5X58O0Q__.ntc-as2-guri2b?atto.dataPubblicazioneGazzetta=2019-04-30&atto.codiceRedazionale=19G00043&elenco30giorni=false

(6) The application for registration in the new register must be submitted pursuant to Legislative Decree 30/05, Article 185 bis

(7) Cf. Industrial Property Code, new Article 185 ter. Introduced by DL 30/19, art. 1.1.b (‘Enhancement of historical trademarks in business crises’)

(8) Chamber of Deputies, bill no. 1518 (Fornaro, Bersani, Epifani), ‘Amendment to Article 24 of the Industrial Property Code, Legislative Decree 10.2.05, no. 30, concerning the protection 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) Chamber of Deputies, bill no. 1631 (Molinari et al.), ‘Provisions concerning the protection of national historical trademarks of high territorial value',    http://documenti.camera.it/leg18/pdl/pdf/leg.18.pdl.camera.1631.18PDL0049560.pdf