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09 December 2019
Following the implementation of the EU Trademark Directive (2436/2015/EC) by Legislative Decree 15 of 20 February 2019, which has been in force since 23 March 2019, there has been much debate in Italy over how to manage and choose between collective marks, individual multiple-use marks and certification marks (in fact, the latter are entirely new in Italy).
The 'dual' structure of trademarks for protecting products is also new in Italy and covers not just collective marks, but also certification marks. In fact, applicants have three options, considering that individual trademarks:
However, individual trademarks – which may be preferred for not requiring formal adoption when filing a regulation of use, which provides for a system of controls and penalties – must be registered in accordance with the requirements under Article 13 of the Italian Code of Industrial Property (ICIP); in other words, without being able to rely on the 'exceptions' provided for collective and geographical certification marks (which are admitted at the national level, but not provided for at the EU level).
Since the object of the guarantee is the same, under Italian trademark law the distinction between collective and certification marks is linked to essentially application entitlement. Going forward, collective marks will be reserved only for bodies governed by public law and established as associations (excluding profit-making companies) and, in particular, with the obligation of the 'open door' principle, which requires that all producers "whose goods or services come from the geographical area in question" (if the mark is geographical) and "meet all the requirements of the Regulation" be allowed to join the association (and not only the use of the mark).
While the new IP regime offers new opportunities, it also requires a careful review of existing regulations and a case-by-case verification of whether a collective mark can be maintained or whether it must be transformed into a certification mark.
Collective marks (and now certification marks) are an instrument of distinction, designed to be used by their owners for a plurality of independent subjects (hence 'collective'). Their main purpose is to (re)connect products not to an individual rights holder, but rather to a group, thereby informing the public of certain qualities of the marked products for which the group is the guarantor. However, the radical difference with respect to collective marks as conceived and introduced by the Italian legislature in 1942 is their function as form of legal protection.
Under the new system, collective marks are considered tools of communication in the round and protect against not only confusion and deception, but also all of the components of the 'message' that are linked to the mark (eg, information and suggestions communicated via advertising, on which the market value of today's most famous signs is concentrated) and therefore against any form of parasitic linking made through the use of equal or similar signs.
However, as a counterbalance to this extended protection to the components of a mark's message, it is possible to forfeit marks that deceive the public, thus giving trademark owners responsibility for the truthfulness of this message in the public's perception. Italian scholars acknowledge the 'statute of non-deceptiveness' of trademarks and stress that it's rationale means that any differences between the characteristics of goods or services for which it is used should be considered. Further, as this 'message' – including its suggestive components – is significant, trademark owners carry the added burden of complying with the message or modifying it through advertising.
Under the new trademark regime, the relationship between geographical collective marks (and, in Italy, certification marks) and geographical designations has also changed in two respects.
First, the registration of geographical signs as collective and certification marks is permitted beyond the limits provided for individual marks, as expressly provided for under Articles 11 and 11bis of the ICIP; however, Article 11(4) allows the Italian Patent and Trademark Office to refuse the registration of these names as collective marks or certification "when the marks requested may create situations of unjustified privilege, or otherwise prejudice the development of other similar initiatives in the region", with a formula that takes up the old discipline of all geographical signs provided for by the former Italian Trademark Law of 1942.
The monopoly on a geographical name – which its registration as a trademark, whether collective or certification, would entail – appears to be logically incompatible with the fact that the geographical name in question is perceived as a designation of origin. In other words, it communicates to the public a message concerning the quality or reputation of the products distinguished, inasmuch as they come not from a particular undertaking, but from a particular territory: in this case, the pro-competitive rationale that the European Court of Justice has repeatedly emphasised in its interpretation of EU trademark legislation, which requires that such signs remain available to all those operating in the territory.
For this reason, it is now expressly provided that owners of geographical collective marks (and, in Italy, owners of geographical certification marks, despite the fact that EU certification marks cannot guarantee geographical origin) cannot prevent third parties from making use of their geographical name in a manner consistent with professional correctness (Article 11(4) and Article 11bis(4) of the ICIP, which specifies that "in particular, such a mark must not be opposed to a third party entitled to use a geographical name").
Thus, the discipline of collective geographical marks must now be coordinated with that relating to the protection of designations of origin (Articles 29 and 30 of the ICIP and the relevant EU rules, whereby for food products protected designations of origin and protected geographical indications are governed by EU Regulation 1151/2012 and for wine products by EU Regulation 479/2008.
As regards a possible coexistence of the two protections for the same geographical name, the ongoing rapprochement between the rules on designations of origin and trademarks may be invoked, which has occurred both at the level of protection (which for designations of origin is progressively moving towards the increasingly strict protection of the reputation that a name enjoys with the public) and that of the primary importance attributed to a mark's non-deceptiveness, which has always been fundamental for designations of origin and which has now also become the keystone of trademark law, at least in Italy.
This has created a sort of common law of commercial signs, which does not mean uniformity of discipline for signs of different types, but certainly the existence of a common denominator between them. In fact, the possibility that a protected geographical indication may also be the subject of a collective mark seems to be present in EU case law and (as mentioned) is provided for under Italian law, which was born out of EU regulations on designations of origin. Thus, Article 53(16) of Law 128 of 24 April 1998, as replaced by Article 14 of Law 526 of 21 December 1999, expressly admits the possibility that there are "collective marks that identify [protected designations of origin] products and [protected geographical indications] held, as they are registered, by the protection consortia for the exercise of the activities entrusted to them", with the aim of strengthening the protection enjoyed by these designations.
Italy's new regulatory framework resulting from the implementation of the EU Trademark Directive (2436/2015/EC) not only offers food for thought to scholars, but also gives practitioners the opportunity to reflect on how much not only individual brands, but also collective ones (which are increasingly relevant with the doubling of the institute in the two categories of collective brands and certification marks) represent significant value in Italy and why it is necessary to use and protect the best brands, especially in terms of how they can enhance economic development in their different geographical areas.
There are major conflicts of interest between countries – including Italy – that have a rich history of manufacturing products (especially high quality and locally produced agro foods) and those without such a tradition. The latter tend to favour their producers that, taking foreign products as a model, want to use names and symbols that recall the traditions that inspire them (ie, commercial 'towing'), giving rise to the phenomenon for Italian-like products that is known as 'Italian sounding'. This practice is so widespread and perceived as threatening that in 2019, as a result of the so-called 'Growth Decree' (Legislative Decree 34 of 30 April 2019, later converted into Law 58 of 28 June 2019), the Italian National Anti-counterfeiting Council was formally renamed the National Council for the Fight against Counterfeiting and Italian Sounding Terms.
Beyond the purely nominal proclamations and changes, what is certain is that the fight in Italy against such phenomena passes first of all through the wider and more widespread use of collective and certification marks, which the changes to the Industrial Property Code introduced by the 2010 reform (Legislative Decree 131 of 13 August 2010) seem to indicate as the appropriate instrument to allow a legitimate exploitation of the values inherent in 'significant' geographical names, particularly by granting licences.
These provisions – especially Article 19 of the ICIP – codify the possibility for local public bodies to use geographical names and other symbols relating to their territory as tools to:
The potential valorisation of a territory using trademarks, as applied for by the relevant local public body, is even more significant and heralds the creation of virtuous circles – both for the budgets of local public bodies and local economic activities – where the territory is linked to typical production (eg, agri foods and handicrafts), because in this case it is possible to imagine brands aimed at making use of such product's fame to promote the activities of the territory more generally. This entails the use of the brand as a driving force for growth, but at the same time a source of income for local public bodies (eg, through the licence fees and through territorial merchandising). The previous rights of third parties will be safeguarded even though it cannot be excluded that a change in the public's perception could lead to the forfeiture of these earlier trademark rights.
The same can be said about designations of origin and geographical indications, since the existing Italian legislation allows the manufacturers' associations to promote – always with a view to enhancing the value of the territory – an active use of these signs, which involves applying them as trademarks in relation to goods or services that are different from the 'typical' ones for which the protected designations of origin and and protected geographical indications are used, primarily for businesses rooted in the territory, even for tourist purposes.
It should not be forgotten that the primary interest of those parties entitled to use a designation of origin or geographical indication is to promote the sign in question, enhancing its reputation as much as possible (and therefore its value and attractiveness), which is also the case for owners of individual or collective trademarks.
This objective can also be achieved by referring to products or services that are totally different from those for which the name enjoys direct protection (including merchandising), although the main tool for this type of brand enhancement seems to be co-branding to complement territorial brands with those of individual companies through mutual promotion or targeted licensing in order to enhance the territory's reputation on the international markets.
In this way it is possible to imagine synergies between local authorities and business consortia and associations – not forgetting the important role of chambers of commerce, which could act as a link between them – which can open up business opportunities on foreign markets (especially those created by globalisation such as China). Such markets include those where the appeal of typical Italian products (but also of Italy's cultural and environmental wealth and the excellence of a large part of the Italian manufacturing sector) assumes the greatest power of attraction. The decisive element here is the public's perception, which is required to establish whether a sign is protectable and delimit the scope of protection, in full compliance with EU legislation.
These opportunities are also consistent with the emerging harmonisation between exclusivity, competition and contracts by which, according to Italian scholars and case law, protection can be granted only to what is required given that the rules to regulate concrete realities and the justification for them are closely linked to the human experience of said realities (ie, from a 'natural rights' perspective).
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (firstname.lastname@example.org). The IP Law Galli website can be accessed at www.iplawgalli.it.
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