May 26, 2020

Italy introduces historical trademarks of national interest

Italy has introduced a brand new trademark category, advertised in the "Growth Decree" published on April 7, 2020.

The introduction makes way for the already registered trademarks to be added into a newly established database and recognized as historical trademarks of national interest, so long as they have been used in relation to the marketing of products or services, specifically manufactured by or originating in an Italian “company of excellence historically connected to the Italian territory” for a minimum of 50 years and have been timely renewed. Status of a historical trademark can also be assigned to unregistered trademarks if they have been used uninterruptedly for the same minimum of 50 years which can be proved by evidence of such use. The Italian IP Office (UIBM) started accepting applications of this nature on April 16, 2020, exclusively in electronic form.

Applications based upon registered marks will be examined within 60 days, whilst those founded on unregistered marks will be examined within 180 days. Once granted, a historical trademark is not subject to renewals or term limitations. In addition, owners of historical trademarks will be able to use a special logo demonstrating its historical relevance in their marketing.

The establishment of historical trademarks aims to preserve the reputation of Italian brands internationally and prevent dislocation of production sites outside of Italy. Should trademark owners intend to close the production or move it out of Italy, they must first notify the Ministry of Economic Development under paying a fine ranging from EUR 5000 to EUR 50000.

The historical trademark is a step forward for the growth of the Italian economic brand value. Despite having been implemented separately from any COVID-19 strategy, the move will hopefully encourage Italian manufacturers to keep their production and jobs in the country and will, therefore, assist with mitigating the impact of COVID-19 on the economy in the longer term. A further step to soften the blow from COVID-19 has been taken by Italy, whereby any intellectual property titles due to expire between January 31, 2020, and July 31, 2020, will be extended for 90 days of validity.

Author: Danielle Carvey