News in trademarks regulation
Starting from March 23th, 2019 comes into force the Legislative Decree that makes several important changes and additions to the Code of industrial property, in implementation of the Harmonization Directive (EU) 2015/2436.
In particular, with regards to the trademark filing procedure, the requirement of graphic representation is now abolished, which makes possible registration of non-traditional trademarks (therefore, olfactory or light marks may also become susceptible to registration), as long as it is possible to determine with clarity and exactness the object of the protection requested by the owner.
The Legislative Decree introduces the discipline of certification trademarks: the new regulatory provision gives the possibility to natural or legal persons, including institutions, authorities and accredited bodies to guarantee the origin, nature or quality of certain products or services , to obtain registration for specific trademarks as certification marks, provided that the named subjects do not carry out an activity that involves the supply of products or services of the certified type.
Further modifications concern the distribution of the burden of proof in the action for revocation: the burden of proof of use of the trademark falls to the owner and no longer to a person who claims that the trademark is not used.
Furthermore, concerning the entitlement of licensee to claim the trademark infringement, the decree provides that, without prejudice to the clauses of the license agreement, licensee can initiate an action to claim infringement of a trademark only with the consent of the owner of the same. The holder of an exclusive license may, however, initiate such action if the owner of the trademark does not initiate an action for infringement within an appropriate time. The licensee will also be able to intervene in the infringement action initiated by the trademark owner to obtain compensation for damage suffered by the letter.
News will also concern the action of prescription and nullity of the trademarks: according to new regulation, in fact, these actions may not be proceeded if, on request having the same object, same constitutive facts and between the same parties, a decision has been pronounced by the Italian Office patents and trademarks or proceedings are pending before the same Office.
Finally, other important changes concern the prohibition of registration of signs which form is imposed by the nature of the product itself, the regulation of the subjects entitled to request the registration of a collective trademark, the effects of the renewal of the registration, the discipline of trademark renewal rights.