Registration now open for Italian trademarks to denote historical significance

• English

Marchi storici are Italian trademarks specifically intended to denote the national historical significance of culturally relevant brand names and protect them from misappropriation. Created by Italy's Parliament as a provision within Law 58 of 28 June 2019 (the so-called 'Growth Decree'), these new marks have been available for public registration since 16 April 2020.

Italian inventors and rights holders had a great deal on their plate in mid-April, and the particulars of Intellectual Property (IP) law likely were not first in their mind at that time. But now, with COVID-19 under some degree of control and business returning carefully to some level of normal operation, Italians whose brands could be eligible for marchi storici protection should investigate the details of this designation.

Benefits of storici registration

If deemed eligible for marchi storici by the Italian Patent and Trademark Office (UIBM), applicable trademarks will be entered in a dedicated index. This registration is indefinite and does not require periodic renewal. Per the text of the Growth Decree, the storici designation indicates that names, phrases and other trademark-eligible IP bearing such distinction are associated with "products or services made by an Italian production company of excellence, historically connected to the Italian territory," having become associated not merely with Italy's commerce but also with its unique culture.

Criteria for application

Only trademarks registered or used for at least 50 years, for products or services meeting the description detailed above, can be included in applications for marchi storici registration. Registered marks must have been continuously renewed during that period, while those without registration must show proof of "effective and continuous use" for a similar period.

UIBM decides on storici applications for registered trademarks no more than 60 days after their submission, whereas unregistered mark applications have a 180-day examination window. A €15 stamp duty is required when submitting any bid for marchi storici approval.

Legislative background: The Pernigotti case

These issues came to a head in November 2018, when chocolate manufacturer Pergnotti wanted to close its Italian factory in Novi Ligure and move production to Turkey at the behest of its parent company, Toksöz Group. The Italian chocolate-loving public saw this as a misleading and unfair strategy, and Pergnotti wanted to remain in-country.

As an alternative to protecting Pergnotti under amministrazione straordinaria, a process for nationalizing failing Italian businesses that has drawn criticism due to its politicized nature, Parliament drafted legislation to address the issue. Existing provisions of the Italian Industrial Property Code - namely Articles 14(2)(b) and 23(4) - technically prevent Italian consumers from being misled by trademarks, but lawmakers dubbed them insufficient and revised them as part of the Growth Decree.

Trademark owners that intend to "close the original or main production site" for the "termination of the activity or the delocalization of the same outside the national territory" must notify the Ministry of Economic Development of their intentions. Failing to do so may lead to administrative fines ranging from €5,000 to €50,000. The ministry then "starts the procedure," aiming to stop or avoid the production's termination or delocalization. The marchi storici provisions will increase the enforceability of existing IP laws that were rarely applied by the Italian courts.

As it turned out, Pergnotti's headquarters did not move. Toksöz representatives and officials from Italy's Ministry of Labour and Industry agreed in August 2019 to maintain chocolate production at the Novi Ligure facility, while making room for operations by other companies (Emendatori and Gruppo Spes) under the same roof.

Whether you are a trademark owner or an implementer, it is imperative that you keep abreast of new developments in IP law throughout Europe and all over the world. With a global presence and hard-earned reputation for success, Dennemeyer can provide the expert legal advice necessary to protect your inventions, marks and other IP and make sure you stay informed about new developments to pertinent IP law.

Editor’s note: This post was originally published on February 18, 2020, and has been completely revamped and updated for accuracy and comprehensiveness.