On July 3, 2024, the Italian Ministry of Enterprise and Made in Italy issued a decree on historical trademarks of national interest in implementation of Article 7, paragraph 5 of Law No. 206/2023 on Made in Italy.
Initially, it is important to highlight that “historical trademarks of national interest” refer to those marks “registered for at least 50 years or actually used continuously for over 50 years (even if not registered), which enjoy significant notoriety and have been used for the commercialization of products or services produced by an excellent national production company linked to the national territory”.
The specific purpose of the aforementioned decree is to ensure the protection, prevent the extinction, and guarantee the continuity of use (through the Ministry itself) of these signs of particular interest, if their owners no longer have an interest – or are no longer able – to use them.
The decree of July 3 was followed by a decree of October 28, which defined the operational provisions relating to the Ministry’s intervention procedures on these brands.
The operations are essentially two.
Assignment of the trademark to the Ministry in the event of cessation of activity
If the owner (or licensee) of a registered trademark or in use for at least 50 years decides to definitively cease its activity (represented by the trademark in question), it may notify this intention to the Ministry’s General Directorate through a project of cessation of activity at least 6 months before the actual closure. The request must be drawn up according to a specific format, attached to the Ministerial Decree of October 28, 2024.
The General Directorate will then, within the following three months, carry out an investigative activity to verify that the trademark in question falls within the category of signs of particular interest and national value and will communicate, if necessary, its willingness to succeed to the ownership of the trademark itself.
The assignment of the sign to the Ministry will be free of charge, and it will be up to the Ministry itself to proceed with the registration of the assignment with the Italian Patent and Trademark Office.
Filing of a trademark application no longer in use
Following an independent assessment, if the Ministry considers that a certain trademark of particular interest and national value has not been used for at least 5 years, it may file a declaration of nullity for non-use with the UIBM Office. If the action in question leads to a decision to ascertain the nullity, the Ministry itself will have the right to file a new application for registration of the same trademark.
Once the ownership of the sign has been acquired following one of the two operations indicated above, the General Directorate of the Ministry will publish on its institutional website the list of trademarks of which it has become the owner, so that any companies interested in investing in Italy or transferring their production activities to our country can submit a request for their interest in using one or more of these trademarks (the request to use the trademark must be formulated according to the format attached to the Ministerial Decree of October 28, 2024).
The Ministry will then publish, also on its institutional website, the expression of interest received, thus giving the possibility to other potential competitors to express the same interest within the following 30 days. The Ministry will then choose to whom to assign the use of the trademark on the basis of a series of criteria, namely: investment, employment effects, reference sector, location and timing of the investment.
Once the choice has been made, a free license contract will be drawn up for a period of not less than 10 years with the selected company. If the company in question prematurely ceases its activity or moves its production facilities outside the national territory, the license will be automatically terminated.
Tania Giampieri