Hailed by many of us as a long-awaited tool and received more cautiously by others, the “historical trade mark of national interest” has certainly aroused a lot of attention.
Introduced with the D.L. 30 April 2019 n. 34 (Growth Decree) converted into the law of 28 June 2019 n. 58, which in article 31 has provided the addition of art. 11-ter in the Italian Industrial Property Code by introducing – for the first time in Italy – the “historical trade mark of national interest”.
This is a category of Trade Marks which has not been seen before in Italian law and is not very easy to identify: in popular imagination these are the brands that have been part of the history of Italy, actually only trade marks that have been registered and continually renewed (before the Italian Patent and Trademark Office) for at least 50 years and trade marks that have been in use for at least 50 years, can apply for this special status, this aspect is crucial given continual registration/use has to be proven.
But that’s not all, these trade marks must also have been registered or used for the marketing of products or services made in a national factory of excellence, historically linked to the Italian territory.
The Special Register of Historical Trade Marks of National Interest was therefore established before the Italian Patent and Trademark Office, and historical Italian trade marks can be registered at the request of the owner (or the exclusive licensee).
Few brands will be able to access the Register – in fact at present there are only 13 registered trade marks – but this is also one of the aims: to make this new category exclusive to the few amongst all the registered or used trademarks which have an historical value closely associated to their Italian territory and promote its “Welfare”.
Furthermore, the “Historical Trade mark of National Interest” trade mark has been established by decree of the Minister of Economic Development, and the companies registered in the above register will be able to use it for commercial and promotional purposes.
This trade mark may be placed side by side with the company trade mark, registered in the special register, but only for the products which the latter refers to.
In any case, it is not unlikely to assume that this kind of promotion could have a certain appeal for the Italian consumer and beyond!
For the lucky companies that have the privilege of owning a trade mark that falls into this category, there are also advantages of an economic nature. The aim is the enhancement of historical brands in business crises.
In fact, for this purpose, the “Fund for the protection of Historical Trade marks of national interest” was established before the Ministry of Economic Development.
Undoubtedly, the registration in the Special Register of Historical Trade marks of National Interest offers a lot of advantages, but equally the duties imposed on the owners are heavy: only time will tell if the Register of Historical Trade marks offers a real advantage to Italian companies.
For more information, please contact Elena Brioschi:
T: +39 0287 398 550