Posted by Laura Ercoli on Thursday November 29th, 2018

Italy finalises implementation of EU Trademark reform package and Unified Patent Court Agreement

The Italian government has issued two legislative decrees that finalise the implementation into national law of the so-called EU Trademark reform package, of EU provisions on the unitary patent and of the Unified Patent Court Agreement.

Brevetto unitario Italia

The Italian government’s Council of Ministers of 20 November 2018 approved two legislative decrees concerning intellectual property rights. Both decrees will come into force after publication in the Italian Official Journal.

Implementation of EU trademark reforms

The first decree concerns the implementation of EU Trademark Regulation No. 2015/2424  as well as of Regulation (EU) 2017/1001 on the Trademark of the European Union  concerning the so-called EU trademark reform package.

Noteworthy changes include:

  • abolition of the graphic representation requirement for trademarks; introduction of registrability for new kinds of trademarks, and for filing of trademarks in formats not previously accepted by national systems (for instance, signs consisting of a combination of images and sounds);
  • prohibition of registration for shape of products is extended to other product features: trademarks will not be registered, or if registered may be cancelled, if the sign consists exclusively in the shape or in other features deriving from the nature of the product;
  • absolute grounds for refusal of trademark registration apply in case of conflict with denominations of origin and geographical indications, whatever the kind of product (wines, spirits, agricultural or food products etc.); special reasons for refusing trademark registration can apply in case of conflicts with traditional mentions of wines and guaranteed traditional specialities protected under European Union law;
  • stronger protection for trademarks enjoying a reputation in a member State is introduced, as well as the right for holders of such trademarks to act pre-emptively against any unjustified use of the trademark causing undue advantage, or putting the trademark’s distinctive character or reputation at risk;
  • it will be possible to apply customs procedures for the seizure of counterfeit goods in a wider range of cases, including mere transit – the procedure could formerly be applied only if elements were found to suspect that the goods would be marketed in Europe;
  • prohibition of performing acts in preparation of counterfeiting.

Implementation of provisions on Unitary Patent and Unified Patent Court

The second decree introduces changes into Italian law necessary to implement European Union laws on the unitary patent as well as the Unified Patent Court Agreement.

Several articles of the Italian Industrial Property Code are amended essentially with regard to the introduction of unitary patent protection (the so-called European patent with “unitary effect”) in member states participating in the enhanced cooperation.

Besides introducing provisions on the European patent, the decree introduces a common jurisdiction for all participating countries with exclusive competence on actions for infringement, counterfeiting, revocation, declaration of nullity or non-infringement of European patents with or without unitary effect, as well as for related provisional and cautionary measures, counterclaims and actions for damages, including actions relating to supplementary protection certificates (SPCs) granted on the basis of a European patent.

Transitory and final measures are introduced to ensure the application of Italian law in proceedings concerning the Italian portion of a European patent that are pending at the date of entry into force of the Unified Patent Court Agreement, as well as in proceedings that are brought, after entry into force of the agreement, before Italian courts under the transitory regime.


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