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.

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 into national law of EU Trademark Directive No. 2015/2436 as well as of the EU Trademark Regulation No. 2015/2424, now consolidated into EU Trademark Regulation No. 2017/1001.

The Italian Industrial Property Code will therefore undergo significant amendments, most of which introduced by the above EU trademark laws.

Noteworthy changes include:

• abolition of the graphic representation requirement for trademarks which will allow the filing of trademarks also in formats not previously accepted, provided that the trademark’s representation permits the Office and the public to define the object of the protection applied for;
• prohibition of registration for trademarks consisting exclusively in the shape of the product is extended to other features either deriving from the nature of the product, or necessary to obtain a specific technical result or to give a substantial value to the product;
• certification trademarks are introduced in addition to collective trademarks;
• 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.- or with traditional mentions of wines and guaranteed traditional specialities, or with plant variety denominations inasmuch as they are  protected under EU law or international agreements to which the EU is a party;
• opposition procedure against the registration of new trademark applications is extended to cases in which the opponent’s prior mark enjoys a reputation, or it is a well-known mark according to Article 6 bis of the Paris Convention, or the opponent’s right consists of a geographical denomination or indication of origin;
• the exclusive right of the trademark holder is extended to placing the trademark on packaging, tags, authentication items or similar objects or devices or offering them for sale or importing/exporting them, if there is a risk that they could be used in violation of the trademark owner’s rights;
• it will be possible to apply customs procedures for the seizure of counterfeit goods in mere transit,  unless the person detaining the goods can prove that the trademark owner has no right to prevent the marketing of the goods in the country of final destination;
• it will be possible to institute actions before the Italian Patent and Trademark Office for nullity or revocation of trademark registrations – but this will require a further decree to be enacted; note that the  deadline set by the European Directive for implementation of said procedures is 14 January 2023.

Implementation of provisions on Unitary Patent and Unified Patent Court

The second decree introduces changes into Italian law necessary to implement European Union provisions 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.

In parallel, the decree introduces provisions necessary to apply the Unified Patent Court Agreement, establishing 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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