Deadline postponed to 31 December 2020 for converting Italian collective trademarks applied for or registered before 23 March 2019 into collective or certification marks as defined by new rules.

Holders of Italian collective trademarks applied for or registered before 23 March 2019 have time until 31 December 2020 to file for the conversion of the mark into a collective or certification mark as defined by rules introduced in 2019.

The deadline for the conversion, previously set at 23 March 2020, has now been postponed to 31 December 2020 by Italian law decree No. 16/2019, confirmed by Law No. 8/2020 of 28 February 2020.

The distinction between collective trademark and certification trademark was introduced pursuant to the implementation in Italy of EU Trademark Directive 2015/2436; previously, collective marks and certification marks were both registered as collective marks under Italian law.

Failure to file for conversion by 31 December 2020 of a collective mark applied for or registered before 23 March 2019 will result in cancellation of the registration.

Collective and certification marks: the new definitions

In brief, this is how collective and certification marks are defined under the new rules:

collective marks are characterised not by their function but by ownership, which is reserved for trade associations of manufacturers, providers of services or dealers, as well as for legal persons under public law (excluding businesses organised in the form of limited companies). The owner of a collective mark may grant its use to manufacturers and dealers;

certification marks certify the origin, nature or quality of certain products or services. The following are eligible to be holders of a certification mark: physical and legal persons, including institutions, authorities and bodies accredited under certification laws to guarantee the origin, the nature or the quality of certain products or services – upon condition that they do not carry out commercial activities involving the supplying of products or services of the kind they certify.

For both collective and certification marks, the application for registration requires the filing of a regulation on the use of the mark which must include certain data and elements, among which the conditions for use of the mark.