New Italian law for the implementation of EU acts and directives: proposed amendments to the Italian IP Code on trademarks and on the implementation of the Unitary Patent package

21 November 2017

With the Law no. 163 of 25 October 2017, published on the Italian Official Gazette on 6 November 2017, the Italian Parliament delegates the Government to implement in Italy several EU directives and other EU acts.

The delegation of legislative powers covers IP matters, specifically trademarks and patents, the latter in view of the Unitary Patent system.

In particular, Article 3 provides that the Italian Government, through legislative decrees to be issued in a year time, should align and coordinate the in force rules on trademarks with the relevant other Member States' set of legislation, as well as with the one at present regulating EU trademarks.

The law provides the following principles to be adopted by the Government:

  • adjusting the rules in the Italian IP Code i) to Directive (EU) no. 2436/2015 on approximation of the laws of the Member States relating to trademarks and ii) to Regulation (EU) no. 2424/2015, expressly repealing the overcome rules – which, for example, would imply that the overcoming of the graphical representation requirement would apply also to Italian trademarks;
  • safeguarding the possibility of ratifying the Directive (EU) no. 2436/2015 also through regulations;
  • foreseeing all cases where a trademark shall not be registered or, if registered, shall be declared invalid or revoked, moreover foreseeing that in case of litigation (both judicial and administrative), if non-use is raised as defense in infringement proceedings, the proprietor of the earlier trademark shall furnish proof of the genuine use in connection with the goods or services in respect of which it is registered and which are cited as justification for the action;
  • foreseeing the right for the proprietor of the trademark to prohibit the use of a sign for purposes different from the ones of distinguishing products or services;
  • adjusting the rules on collective marks, foreseeing that they could also constitute signs or indications which may serve, in trade, to designate the geographical origin of the goods or services;
  • foreseeing the possibility of registering guarantee or certification marks, that is to say trademarks capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified;
  • foreseeing an efficient and expeditious administrative procedure before Italian Patent and Trademark Office for the revocation or declaration of invalidity of a trade mark;
  • adjusting the provisions regulating the appeal procedure with Commissione dei Ricorsi of the Italian Patent and Trademark Office.

Therefore we will face - very soon - one of the most important revolutions of the Italian trademark system. Just to quote some expected novelty, the new rules would imply the overcoming of the graphical representation requirement, the introduction of "new" categories of trademarks and the possibility for the proprietor of the trademark to prohibit preparatory acts in relation to the use of packaging or other means.

Even more revolutionary for the Italian system will be the possibility to obtain the declaration of invalidity/revocation of a trademark before an administrative authority and not only before the Civil IP Courts.

With specific reference to patents, Article 4 provides that the Italian Government, through legislative decrees to be issued in a year time, should align and coordinate the current rules on patents with the set of legislation regulating the Unitary Patent and the Unified Patent Court.

The Government in doing so should follow these principles:

  • adjusting the rules of the Italian IP Code to the rules of Regulation (EU) no. 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, repealing expressly the overcome rules;
  • coordinating the rules of the Italian IP Code to the rules of the Unified Patent Court Agreement;
  • guaranteeing the possibility to adopt  rules enacting the quoted Regulation (EU) no. 1257/2012;
  • foreseeing that for European patents for which an application for unitary effect is sought and later rejected, revoked or withdrawn, the deadlines for filing the Italian translation of the European patents runs from the date of receipt of the communication of the final act of rejection or revocation of the Unitary effect or the date of receipt of the withdrawal application by the EPO;
  • foreseeing that the rules on the pre-eminence of the European patent in the event of cumulative protection with the National patent should apply also where the Unitary effect is granted to the European patent.
It is noteworthy the optimistic deadline (i.e. within twelve months) for the Italian Government to issue legislative decrees implementing the Unitary Patent Package, in consideration of the slowing down of the ratification process of the new patent system; it shows however the awareness of Italy to the UP system and the intention (after the initial doubts) of being in stand to perform a quick start of the system.