In-depth analysis of the news introduced by the legislative decree n. 15/2019

The Legislative Decree 15/2019, in force in Italy since the 23rd of March 2019, introduces some important innovations in the field of trademarks.

These changes, in fact, have the purpose of integrating and expanding the Italian Industrial Property Code, in order to adapt it to the provisions of the EU Directive 2015/2436 on the approximation of the laws of the Member States relating to trademarks, as well as to the regulation EU 2015/2424 in the matter of community trademark.

As anticipated, the Legislative Decree statues the overcoming of the requirement of trademark’s graphic representation at the time of filing (art. 7 CPI).

The legislator admits the protection of new types of trademarks, such as sound, olfactory or luminous trademarks, but they have to be suitable to be reproduced in an easy and accessible way to the competent authorities and to describe precisely the object of protection, using the technologies available today.

Furthermore, the new article 9 CPI provides that not just the form, but also any other “characteristic” that gives a substantial value to the product, or that is necessary to achieve a technical result or that is imposed by the nature of the product, can not be registered as a trademark.

The Italian legislator proceeds to harmonize the Italian law to the European Directive in relation to collective trademarks. Infact, only legal person such as public bodies or trade associations are legitimate in obtaining the registration of a collective trademark. Individuals and companies, such as joint stock companies or limited liability companies, are excluded. Furthermore, it is specified that the regulation governing use has to be attached to the registration application, in accordance with Art. 157, par.1 bis of CPI, which specifies the requirements and the information that must necessary be contained in the regulation governing use. Lastly, the new text of article 11 CPI provides that, in the geographical area related to the collective trademark, anyone can use the trademark and also become a member of the trade association that owns the trademark, provided that he/she respects all the requirements imposed by the regulation governing use.

The new article 11 bis CPI introduces the “certification trademark”, that has the purpose to certify and guarantee specific characteristics of products or services, such as the origin, the quality and the nature. Also in this case, the regulation governing use has to be attached to the registration application, in compliance with the provisions of article 157, par. 1 ter CPI. Also, paragraph 4 of the same article affirms the possibility of registering signs or indication that may be used to designate the geographical origin of the products/services, as a certification trademark, notwithstanding the general principle of distinctive capacity of article 13 CPI.

Also the article 14 CPI, relating to the “rights of third parties”, is innovated by the introduction of new types of signs excluded from registration. Among these are signs relating to the protection of designations of origin and geographical indications, signs relating to the protection of traditional expressions for wine, signs of trational specialities guaranteed and signs which consist or contain representations of plant varieties, as well as the signs that are prone to deceive the public about the type of trademark.

The following article 15 CPI provides that the effects of the renewal of the registration take effect not from the expiry date of the previous registration, but from the day after the expiry date of the previous registration.

Regarding the rights of the trademark’s owner, the Legislative Decree 15/2019 reinforce these rights providing that the owner of a renowned trademark can prohibit the use by third parties of an identical or similar trademark in relation to identical, similar or non related products, also for different purposes than the typical distinctive one. Moreover, the owner of the trademark can also prevent third parties from carrying out all those preparatory activities for the trade of counterfeit goods, such as the signing of tags, labels and packages. In this way the legislator wants to fight counterfeiting more effectively.

Another important innovation is the introduction, through the new article 122 CPI, of an administrative procedure alternative to the procedure before the national judicial authority. This procedure allows to act for the nullity and the cancellation for non use of a trademark with a faster procedure. However, it’s not possible to proceed if a procedure on the same object and for the same facts and between the same parties is in progress or already concluded before the national judge.

The new article 122 bis CPI provides the possibility also for the licensee of a trademark to start the counterfeitinf action, provided that he/she has to be the exclusive licensee and has to already have put in default the owner. Otherwise, the same licensee will be legitimised to act only with the consent of the owner of the trademark.

Lastly, the CPI introduce also new procedural provisions about the Appeals Commision against the UIBM measures that totally or partially reject an application, which refuse the transcription or that prevent the recognition a right.