Posted by Società Italiana Brevetti on Monday January 26th, 2015

Italy and San Marino, new rules on recognition of IP rights


Starting 23 December 2014 rules on mutual recognition between Italy and the Republic of San Marino of patents, trademarks, models and designs are no longer applicable to intellectual property rights obtained through international procedures but only to those obtained through a national filing in one of the two states.

A major change has taken place concerning the mutual recognition of intellectual property rights between Italy and the Republic of San Marino, an independent city-state in central Italy (see map): as from 23 December 2014 mutual recognition applies only to trademarks, patents, designs and models registered or granted on the grounds of national applications, meaning applications filed with the Italian Patent and Trademark Office or with the Patent and Trademarks Office of the Republic of San Marino.

Mutual recognition therefore no longer applies to patents, trademarks, designs and models obtained through international procedures (Madrid Agreement, European Patent Convention, Patent Cooperation Treaty, The Hague Agreement).

The change is due to the ratification on 23 December 2014 of the exchange of notes between Italy and San Marino concerning the interpretation of Article 43 of the Convention on friendship and good neighbourly relations of 1939 regarding patents and trademarks. According to the new interpretation of such article, mutual recognition applies exclusively to intellectual property rights filed directly with the national office of one of the two states.

The new interpretation is necessary in consideration of changes to the legislative framework in which the 1939 agreement was set. At the time, only Italy had national laws on the protection of patents, models, and trademarks, so the agreement applied only to rights obtained in Italy that could thus be recognised also in San Marino.

Meanwhile, San Marino has adopted its own laws on the protection of intellectual property rights, which are very similar but not identical to Italian ones. San Marino has also joined the main international conventions on intellectual property rights, including the Patent Cooperation Treaty, the European Patent Convention and the Madrid Protocol concerning the registration of trademarks.

Given the new situation, the two states deemed it necessary to limit the benefits of the 1939 agreement only to rights arising from national filing procedures, while letting the recognition of European patents or international trademarks take place in each country through the procedures provided by the international treaties of which both countries are members.

What to do to ensure protection in Italy and San Marino

European patent holders must now validate their patent separately in each of the two states. Likewise, holders of international trademark or design registrations must now request protection in each state.

Please contact us for any further information you might need in connection with the above matter, and for assistance in checking and protecting your intellectual property rights in view of the changes in relations between Italy and San Marino.

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