Recent changes to the Intellectual Property Law in Italy

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IP RIGHTS IN ITALY

Recent changes to the Intellectual Property Law in Italy

Important changes occurred in Italy with regard to the regulation of patents, trademarks, trade secrets and other Intellectual Property Rights (collectively referred to as “IPR”) in the period 2018 – 2019. Such changes have been implemented by means of amendments to the Italian IP Code, Legislative decree 10 February 2005, no. 30 (hereinafter referred to as

“IP Code”).

1. Trade secrets

Due to national differences in trade secret laws, the European Union issued the Directive (EU) no. 2016/943 in order to approximate the legislations of the Member States on trade secrets. Italy implemented the provisions of the EU Directive by means of legislative decree 11 May 2018, no. 63.

The legislative decree amended certain provisions on trade secrets of the Italian IP Code.

The main amendments are set out at articles 98 and 99 IP Code. In particular, the added articles 99-bis and 99-ter specify that the acquisition, use or disclosure of trade secrets as well as the production, offer or trade of products which infringe trade secrets are illegal not only if one knew, but also if one ought to know according to the circumstances of the case, that the trade secret had an illicit provenance.

2. Trademarks

Italy has also implemented the provisions of the EU Directive no. 2015/2436 on approximation of legislation of the Member States of the European Union on trademarks, by means of Legislative decree no. 15/2019 dated 23 March 2019.

The legislative decree amended various provisions of the Italian IP Code on trademarks comprising, among the others, the following:

(i) A trademark can now be registered in Italy even if it cannot be graphically represented,

provided that it is represented in the register in a clear and precise manner in order to allow

the public to determine the object of the protection granted to the owner. This amendment

Pag. 2 makes easier to file sound trademarks, olfactory trademarks, motion trademarks, or other non-conventional trademarks.

(ii) The former “Collective trademark” (a trademark used to guarantee quality of goods) is now replaced by the new “Collective trademark” (a new trademark used for the purposes of an association) and the “Certification trademark” (a new trademark used to guarantee quality of goods). All existing Collective Trademarks must be converted into the new Collective Trademark, or the New Certification Trademark, within 23 March 2020 to avoid cancellation.

(iii) In the event of an action taken by a third party against the owner for revocation of a trademark due to lack of use, the trademark owner (namely, the defendant instead of the plaintiff) shall have the burden of proofing genuine use of the trademark in commerce, as an exception to the general rule on burden of proof.

(iv) A licensee is legitimated to take action against counterfeiters of the trademark according to the provisions of the trademark license agreement; provided that an exclusive licensee shall always have the right to take action if the trademark owner fails to do so.

(v) An important change will refer to the introduction of the administrative proceeding for trademark nullity and trademark revocation. However, this change did not yet come into force because it is still necessary to enact an implementing decree. According to the EU Directive, this change should come into force in the Member States of the European Union before 14 January 2023. Currently, in Italy, nullity or revocation actions must be taken before the Law Courts, whereas when the new procedure will come into force they could be taken before the Italian Patent and Trademark Office.

3. Patents

The Legislative Decree dated 19 February 2019, no. 18 amended the Italian IP Code with regard to, inter alia, Unitary Patent.

As known, traditional European Patent provides for a unified filing and grant procedure

which, upon national validations, generates a bundle of national patents; new concept of

Unitary Patent provides a single European Patent which will not require national validations

and it is valid for all EU countries.

Pag. 3 Italy already ratified the Unitary Patent by means of law dated 3 November 2016, no. 214.

Now, by means of legislative decree no. 18, Italy adopted the necessary measure to enforce the Unitary Patents as soon as it will come into force.

Other amendments to the IP Code refers to the experimental exception.

Furthermore, the Decree Law dated 30 April 2019, no. 34 proposed some amendments to Article 55 of the Italian IP Code. As a result of this amendment, an international patent application filed under the Patent Cooperation Treaty (PCT) may indicate directly Italy as a designated or an elected office by filing a specific form and fulfilling translation requirements.

Accordingly, it will be considered as the equivalent of a regular national filing, regardless of whether the European Patent Office (EPO) is indicated as a designated or an elected office.

However, the provisional nature of Decree Law 34/2019 leaves room for further developments of its legal text.

MARCO FARALDI CLAUDIO COSTA

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