Opinions
Hot news on Italian trademarks of particular national interest and value: handy summary of the operational provisions.
Finally, on November 6, 2024, the decree of the Ministry of Enterprises and Made in Italy (‘MIMIT’) containing the operational provisions concerning the procedures for the protection of trademarks of particular national interest and value have been published on the Italian Official Gazette, n. 266.
As explained in our latest article, the implementing decree of July, 3rd outlined the criteria and procedures for the transfer of ownership and subsequent use of trademarks of particular national interest and significance, in line with the provisions of the so-called Law of Made in Italy (Law no. 206/2023).
We have prepared a handy summary that gathers all the relevant information.
Termination Project for Italian companies ceasing operation.
The company holding or licensing a trademark registered for at least 50 years, or a trademark not registered but for which continuous use can be demonstrated for at least 50 years, that intends to permanently cease the production of the product identified by said trademark:
- must notify the General Directorate of the termination project at least 6 months before the actual cessation. Under Article 1 of the new decree, the termination project must be drafted using this form. To date, there are no penalties for failure to notify such a project.
- The project must be submitted to the General Directorate for Industrial Policy, Industrial Conversion and Crisis, Innovation, SMEs and Made in Italy (‘DGIND’) via certified email (PEC) to this address: DGIND@pec.mimit.gov.it.
- The DGIND, within 3 months of receiving the project, will communicate the results of its assessment to the company, verifying the trademark’s compliance with the requirements related to its national interest and significance to the PEC address indicated in the aforementioned form. Failure to respond by the DGIND within the 3-month period will be considered as a lack of interest in taking over the ownership of the trademark.
- In the event that the DGIND expresses interest in taking over the trademark, it will immediately begin working with the company, which will transfer the trademark to the Ministry free of charge, through an official deed prepared in accordance with current regulations. This may include a transfer declaration or proof of transfer signed by the assignor and the General Directorate, listing the rights subject to the transfer.
- Following the transfer, the General Directorate will file the application for registration with the Italian Patent and Trademark Office (UIBM) to record the change of ownership of the trademark.
Request for trademark use by a company intending to invest in or relocate its production units to Italy.
The company, whether domestic or foreign, intending to invest or transfer its production activities to Italy, and interested in using one or more published trademarks of national interest and value:
- can submit a specific request using this form.
- The request must be sent to the Investment Facilitation Unit (‘UMASI’) at the PEC address umasi@pec.mise.gov.it.
- MIMIT verifies the compliance of the licensee company with the obligations set forth by the Ministerial Decree of July, 3rd and the licensing agreement. Specifically, Article 5, paragraph 7states that the trademark licensing agreement is terminated if the licensee company ceases its activities or relocates its production facilities outside Italy.
- The licensee company is required to submit a biannual report on its compliance with these requirements. This latter must be sent to Office I, ‘General Affairs. Business Support Office’ of UMASI, at the following PEC address umasi@pec.mise.gov.it.
- UMASI may also conduct on-site inspections at the licensee company’s production facilities within the national territory.
Stay tuned on its (side) effects!
This national regulatory intervention continues to reaffirm widespread concerns regarding the potential distortion of competition, the conflict with European regulations on revocation for non-use, and the unnecessary costs that would burden the public administration at the expense of us citizens. As always, we recommend that our readers continue to follow us to monitor the outcome of these topics.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Valentina D’Adda, Trainee
E: v.dadda@nmlex.it
T.: +39 026575181
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