Made in Italy and Italian Sounding: new safeguards coming from the Growth decree
The Growth decree, among other provisions, introduces greater protection Made in Italy in particular, for the category of historic brands of national interest, granted starting from 50 years or used for at least 50 years. The decree also provides incentives for the filing of trademarks and patents and for measures on Italian Sounding - a phenomenon linked to the non-EU market - that mainly concerns the Italian agri-food sector and that consists in the use of packaging, linguistic references, tradition, geographical indications and brand names recalling Italy with the aim to achieve the value and the quality of the Italian products.
After a first approval on April 4 and a second one on April 23, the Growth Decree 30 April 2019 no. 34 (Decreto Crescita) on "Urgent measures for economic growth and for the resolution of specific crisis situations", has eventually been published on the Italian Official Gazette No. 100 dated April 30 and entered into force on May 1, 2019.
The Growth Decree shall be further converted into law within 60 days, i.e. within 30 June after being allocated to the Budget and Finance Committees.
Among other provisions aimed at boosting the national economic growth, it is interesting to note that Chapter III is dedicated to the protection of Made in Italy, including measures to fight the Italian Sounding phenomenon. More precisely, two provisions concern these issues: article 31 and article 32.
The first one introduces the category of the historical trademarks of National interest including trademarks granted as of 50 years or for those effectively used for at least 50 years in the commercialization of goods and services by a national manufacturing company of excellence and historically connected to the national territory.
The second provision focuses on Italian Sounding and on incentives to the filing of trademarks and patents. Yet, it must be underlined that the first draft included more substantial measures, which have been reshaped in the new version. Articles 32, however, includes some interesting news.
The "Italian Sounding" is a phenomenon - related to the extra EU market - mainly affecting the Italian agri-food sector where Italy has a unique collection of products as concerns to quality and variety. It consists in the use of packaging, linguistic references, tradition, geographical indications and brand names recalling Italy with the aim to achieve the value and the quality of the Italian products.
The average consumer who is about to purchase an "Italian sounding" product may be confused by the actual origin of the product and often cannot distinguish the original one from the imitation.
The worldwide annual turnover of the Italian Sounding is impressive: about 54 billion euros per year, which means 147 million euros per day.
This phenomenon causes a great loss to the Italian economy, and it also damages both the producers of real Italian products and consumers worldwide. To prevent and to stop this activity Italian companies might need to take legal action ,but this is not an easy path to follow, also in terms of costs.
Therefore, article 32 is aimed at helping the Italian enterprises operating in foreign markets by granting a tax incentive of 50% of the costs incurred in connection to legal proceedings of goods affected by the Italian sounding phenomenon. The article provides for limitations as well: up to a maximum annual amount of €30,000 per beneficiary, within a general annual plafond of €1,5 million starting from the current year.
Moreover, applications for the tax incentive benefit are handled in chronological order.
Furthermore, art. 10 (coats of arms) of the Italian Industrial Property Code - hereinafter IIPC - will be modified by adding paragraph 1-bis which prevents the registration of words, logos or signs detrimental to the image or reputation of Italy.
Furthermore, the Decree confirms that the National Anti-counterfeiting Council which modifies its name into National Anti-Counterfeiting and Italian Sounding Council will continue to have the power to contrast the Italian sounding phenomenon.
Innovative start-ups are granted the Voucher 3I "Investing in Innovation" to support the valorization of innovation process during the three-year period 2019-2021.
The 3I voucher can be used by start-up companies for the following professional activities: opinion on the patentability of inventions and prior art searches, drafting and filing patents with the Italian Patent and Trademark Office and extension of national patents.
Furthermore, Article 32 paragraph 11 introduces a sort of master plan, to be compiled by the Italian PTO, in order to allow enterprises to organize their development strategies with regard to intellectual property rights with a better understanding of the availability of incentive measures. Particular attention is given to start-ups and youth enterprises including "making the necessary changes to make the measures eligible within the interventions that can be co-financed by the European Union".
The Decree provides also incentives for trade associations up to a million euros per year, in order to promote the collective trademarks or the certification trademarks in foreign markets, with the aim of enhancing the Italian quality and educating foreign consumers to recognize true Italian products. The Ministry of Economic Development is supposed to supervise the activity of collective /certification trademark owners eligible for incentives and to monitor the proper use of the trademarks and the fulfillment of the controls on the relevant regulations.
A final provision introduced by article 32 is the possibility, for owners of an international patent application (PCT) designating Italy to directly enter into national phase bypassing EPO. To this end, article 55 of the Italian Industrial Property Code will be amended as follows:
"An international application filed pursuant to the Patent Cooperation Treaty, ratified by Law No. 260 of 26 May 1978, and containing the designation or election of Italy, independently of the designation of European patent organization, is equivalent to a patent or utility model application filed in Italy on the same date, and produces its effects provided that a request of opening the national phase of granting is applied for within 30 months from the date of filing or if priority has been claimed, from the earliest priority date according to art. 160 bis,".
Of course art. 160-bis has to be added. And in particular, we mention that for the opening of the national phase of the PCT is mandatory to file an Italian translation of the international application.
No doubt the Decree provides for remarkable news, but the urgency mentioned in its title should be read in light of two aspects: first, as anticipated, the Decree must be converted into law by June 30, and second, the definition of detailed rules on the criteria and scope of the Decree is left to a number of further future provisions, such as ministerial decrees. As a result, those "urgent measures" won't be fully effective before some months.