Posted by Laura Ercoli on Wednesday December 6th, 2017

Italy set to implement EU trademark reform package

A new law empowers the Italian Government to proceed with the implementation into national law of new European Union trademark legislation – the so-called  EU trademark reform package. Which are the main areas of Italian trademark law that will be amended?

Law 163 of 25 October 2017, published in the Italian Official Journal on 6 November 2017, empowers the Italian Government to issue legislation implementing several European Union laws, concerning the so-called EU trademark reform package including Directive EU 2015/2436 to approximate the laws of the Member States relating to trade marks and Regulation EU 2017/1001 on the European Union trade mark.Pacchetto di riforme marchi UE

Article 3 of Law 163/2017 sets forth the following principles and specific guidelines the government must follow in implementing the EU provisions into Italian trademark law:

a) align the provisions of the Industrial Property Code with the provisions of Directive EU 2015/2436 and of Regulation EU 2017/1001 by expressly repealing provisions that are out of date;

b) safeguard the possibility of adopting implementing provisions of Directive EU 2015/2436 also through regulatory acts, including the possible revision of the Implementing Regulation of the Industrial Property Code;

c) provide for the cases in which a trademark must be denied registration or, if registered, must be declared invalid or revoked, with regard both to the signs that may constitute a trademark and to the reasons for revocation, providing in particular that, where use is contested in court or administrative actions or during opposition proceedings the owner of the earlier trademark bears the burden of proving actual use of the mark for the products or services for which it is registered, and on which the action is based, or prove the existence of legitimate reasons for non use;

d) provide for the right to forbid use of a sign for purposes other than that of distinguishing products or services;

e) revise legislation on collective trademarks with the aim of harmonising it with Directive EU 2015/2436, providing that collective trademarks may also consist of geographical indications and introducing coordinating provisions with legislation on guarantee and certification marks;

f) provide for the alignment of national law with Directive (EU) 2015/2436 and with Regulation (EU) 2017/2001 with regard to guarantee or certification marks, and in particular:

  1. provide for the possibility for geographical indications to constitute guarantee or certification marks;
  2. provide that physical or legal persons competent under current laws on certification to certify the products or services for which the trademark is to be registered are eligible to be holders of a guarantee or certification mark, upon condition that the activity of such persons does not involve supplying products or services of the kind that are certified;
  3. provide mandatorily that a regulation on use of the guarantee or certification mark must be filed and any subsequent amendment communicated, under penalty of revocation;
  4. provide conditions for refusal, revocation and invalidity of guarantee or certification marks for reasons other than those listed under articles 4 (Absolute grounds for refusal or invalidity), 19 (Absence of genuine use as ground for revocation) and 20 (Trade mark having become generic or misleading indication as grounds for revocation) of Directive (EU) 2015/2436, where made necessary by the function of said marks and provide in particular that revocation for lack of use be assessed in case of failure to perform adequate checks on use of the trademark on the part of licensees and in case of improper or discriminatory use of the trademark by the trademark holder;


g) provide for a quick and efficient administrative procedure for revocation or declaration of invalidity of a trademark to take place before the Italian Patent and Trademark Office, save for the right of the parties to appeal to the courts;

h) amend and supplement the rules on proceedings before the Board of Appeals against the decisions of the Italian Patent and Trademark Office, for the purpose of guaranteeing overall efficiency and speed, with reference also to appeals against decisions on revocation and invalidity.


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