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12 August 2019
The decree's main innovations include the reinforcement of trademark protection (in particular, the possibility of using cross-border measures and reacting against certain preparatory acts of counterfeiting has been extended to transported goods) and the removal of the anachronistic requirement of graphic representation for the registration of non-conventional trademarks.
Further, by implementing the directive, Italy codified the rule – already applied by Italian judges, as demonstrated in the Bulgari case(1) – according to which trademark protection is extended to non-distinctive uses of an identical or similar sign which could cause a parasitical exploitation or damage the distinctiveness or reputation of the earlier mark. This rule was not required to be adopted under the directive since EU member states were free to include it or not. However, in Italy discriminating between distinctive and non-distinctive uses could have been in violation of the constitutional principle of equality.
In addition, Italy introduced the rules – already provided by the EU Trademark Regulation (2017/1001) – extending trademark protection to the cross-border transit of goods and to preparatory acts of infringement, involving the use of an identical or similar sign to any material, even virtual (the Italian wording is very broad), potentially capable of being used in the marketing of counterfeit goods. A third provision, which was already included in the regulation and is now also present in Italian law, states that a trademark owner can prohibit the use of its mark in dictionaries, encyclopaedias and reference works, including in electronic format (this is an important specification given the development of the Internet), when such use "gives the impression that it constitutes the generic name of the goods or services for which it is registered".
These innovations are of systematic importance. From a market point of view, it cannot be accepted that restrictions are imposed on the activities of economic operators just in case such activities interfere with the interests of rights holders. However, if such interference occurs, trademark protection necessarily comes into operation, whether the use is distinctive or not. This systematic view should be helpful in construing the new rule on the lawful uses of a trademark by others – namely, the rule concerning the use of a trademark to identify or refer to goods or services as those belonging to the owner of that trademark. The coordination between this provision and the prohibition to use an identical or similar sign, even for purposes other than those of distinguishing goods or services, makes it clear that the link between the marks and the detriment caused to the earlier mark continue to set the limits of protection, except in cases where there is a 'due cause' for the use of the sign.
A realistic approach, as well as the equalisation of national trademarks and EU trademarks, are the cornerstones of the provision which now requires that the owner of a trademark must prove that it has been put to genuine use during the past five years, when a period of five years has elapsed since registration and the existence of such genuine use is contested (eg, in an action for revocation). This rule applies the principle of so-called 'proximity of evidence' to trademark matters; trademark owners must bear this carefully in mind, as they have the burden of preserving the evidence of use.
Finally, the Patent and Trademark Office will be called upon to set up an administrative procedure for the revocation and forfeiture of trademarks, which is based substantially on the opposition procedure and is an alternative to a traditional legal action. However, the date of the actual implementation of this system has not yet been set.
Overall, the new rules confirm Italy's leading role in trademark protection. In the fight against infringement, Italian legislation and case law count among the best at the European level, and the Italian Customs Agency is considered as one of the most efficient in Europe. The new rules aim to face business needs with realism and determination.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (firstname.lastname@example.org). The IP Law Galli website can be accessed at www.iplawgalli.it.
(1) For further details please see "Bulgari successfully enforces its selective dealership network following trademark violation".
An earlier version of this article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.
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