Historical marks: Italy tries to introduce an enhanced protection
The Growth Decree establishes that owners and licensees of "historic marks of national interest" may request their registration in a special register, managed by the Italian Patent and Trademark Office. The inclusion in the register of historical trademarks entails the obligation, in the event of dismissal or relocation of the manufacturing site outside the national territory, to provide the Ministry of Economic Development with an articulated series of information. The violation of these information obligations is punished with a fine. What advantages are connected to the registration?
In occasion of a recent crisis that involved a famous Italian chocolate and praline manufacturer, acquired by a foreign company planning to relocate production abroad, the Italian government stated the need to intervene in favor of the so-called "historical marks".
They are, according to the government, an expression of the Italian tradition and as such deserve a particular protection, which could involve, in the original plans, even the forfeiture of the trademark registration in the event of company relocation outside Italy.
This raw approach was subsequently revised and refined, also to align it to international treaties and to EU laws and regulations, and eventually resulted in the current text of the Article 31 of Law Decree No. 34 of April 30th, 2019, the so called “Growth Decree”, in force since May 1st, 2019.
Said provision establishes the "historic marks of national interest", i.e. the "trademarks registered for at least fifty years or for which it is possible to demonstrate continuous use for at least fifty years, used in connection with the marketing of products or services made in a national manufacturing company of excellence, historically connected to the national territory ”.
Owners and licensees of trademarks with these requirements may request their registration in a special register, managed by the Italian Patent and Trademark Office, acquiring the right to use the special badge of "Historic mark of national interest". According to the notes accompanying the law, said badge is deemed to have an "impact on consumer choices, adequately highlighting the historicity of Italian brands".
The owners and licensees of historic marks can access a fund catered to small and medium-sized enterprises and, more important, to a special "Fund for the protection of historical brands of national interest", established for the purpose of "safeguarding the employment levels and the continuation of productive activity on the national territory", with an initial endowment of 30 million Euros.
The inclusion in the register of historical trademarks of national interest entails the obligation, in the event of dismissal or relocation of the manufacturing site outside the national territory, with consequent collective dismissal of workers, to provide the Ministry of Economic Development with an articulated series of information, aimed at allowing the intervention of the administration and access to the resources of the Fund. The violation of these information obligations is punished with a fine.
The future will tell us whether the advantages connected to the registration, which is voluntary, in the register of historical marks (use of the badge; access to the Fund) will be sufficient to compensate for the related burdens (disclosure obligations; intervention by the Ministry in dismissal or relocation operations).
For sure any M&A deal involving historical marks will require some additional due diligence, in particular when the deal contemplates some restructuring or other activities which may affect the company operations and their localization.
Evaluations like these may play against the decision to register a brand as an historical mark, making the new provision far less effective than expected by the Italian government.
This is however a minor issue: trademarks and brands were fully capable to survive and evolve without the need of imaginative registers or badges created by anxious lawmakers. Those measures bring however an actual risk: historic marks of national interest could become less appealing to investors, in particular foreign ones, due to the extra burdens, requirements and limitations they bring with them.
It would be an unfortunate outcome if the measures introduced with the “Growth Decree” and aimed to protect historical marks end up hindering their growth in the larger international market.