http://ipkitten.blogspot.com/2023/09/italy-strengthens-protection-of-pdos.html
Italy strengthens protection of PDOs and PGIs
On 23 August 2023, several amendments to the Italian Industrial Property Code
(IPC) entered
into force. The Law no. 102 dated 24 July 2023 is part of Italy’s National
Recovery and Resilience Plan. The reform of the IPC is aimed at strengthening
Italy’s competitiveness through a more efficient protection of IPRs.
Among the main changes, there is the
strengthening of protection of PDOs and PGIs with the introduction (in Art. 14
of the IPC) of the ban on the registration of trade marks that evoke, usurp or
imitate PDOs and PGIs protected under state or European Union law and International
Agreements to which Italy or the European Union are parties.
The new wording of Art. 14 of the IPC
The new wording of Article 14(1)(b) IPC is as follows (informal
translation by the author):
“14. Lawfulness and third-party rights.
1. The following shall not be registered
as trademarks:
a) signs that are contrary to the
law, public policy or accepted principles of public morality;
b) signs that can mislead the
public, in particular as to the geographical origin, nature or quality of the
goods or services, as
well as signs which evoke, usurp or imitate geographical indications and
designations of origin protected under national or European Union law,
including international agreements to which Italy or the European Union is a
party;
c) signs whose use would represent
an infringement of another party’s copyright or industrial property rights, or
of other third party’s exclusive rights.”
Back in 2009, Art. 14 Paragraph 1, c-bis) IPC was already reviewed by prohibiting
the registration of signs in accordance with the European Union legislation and
International Agreements protecting PDOs and PGIs.
Comment
With this new provision the absolute grounds
for refusal of trade mark registration are broadened to include goods and/or
services not strictly protected by PDOs and PGIs, thus confirming the nature of
PDOs and PGIs as instruments of public policy and as collective rights of
agricultural operators.
The Italian Patent and Trademark Office (UIBM) will now play an important
role in preventing the registration of trade marks that include a PDO/PGI or an
evocative term thereof, together with the role of the Courts (see IPKat here on the recent Cacio Romano case). It
should be noted that, in the event that the UIBM does not issue a refusal
order, the Consortium in charge of protecting the PDO or PGI or, if this has
not yet been established, the Ministry of Agriculture, Food
Sovereignty and Forestry are also entitled to file an opposition (Article 177, paragraph 1, letter
d-bis IPC) as
well as nullity actions (Article
184-bis, paragraph 3, letter a) IPC) before the UIBM.
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).