Author: Dr. Giovanna Del Bene
In recent years, Italy introduced the so-called “historical trademark of national interest.”
Owners or exclusive licensees of trademarks registered for at least fifty years, or those for which continuous use for at least fifty years can be demonstrated (so-called “de facto trademarks”), used for the commercialization of products or services produced by a national enterprise historically connected to the national territory, can apply for registration in the register of nationally significant historical trademarks.
Upon registration in the special register, they gain the right to use the “Nationally Significant Historical Trademark” logo for commercial and promotional purposes.
This logo, which does not constitute an industrial property title, can be placed alongside the registered trademark without altering its representation and can be used only for the products and services associated with the registered trademark.
The registration has an unlimited duration, does not require renewal, and may be canceled at the request of the owner or licensee by filing a specific renunciation request, which must follow the same procedure as the registration application.
On July 3, 2024, the Ministry of Enterprises and Made in Italy, in implementation of Law No. 206/2023 “Made in Italy,” adopted a Ministerial Decree establishing the criteria and procedures for succession in ownership and subsequent use by the Ministry to ensure its protection and continuity.
An enterprise holding or licensing a trademark registered for at least 50 years, or an unregistered trademark with demonstrable continuous use for at least 50 years, intending to permanently cease production of the product identified by the trademark, must notify the State of the cessation project at least six months before the actual cessation.
The Italian State may then express its intention to assume ownership of the trademark.
In this case, the enterprise will transfer the trademark to the State free of charge, with a specific deed or even by a declaration of transfer, subject to registration with the Italian Patent and Trademark Office.
The Ministerial Decree also provides the possibility for the State to request the forfeiture of a trademark from the Italian Patent and Trademark Office if it presumes that the trademark has not been used for at least five years and it holds particular national interest or value. Should the forfeiture be confirmed due to non-use, the State may file a registration application in its name with the Italian Patent and Trademark Office.
An institutional website will publish a list of trademarks for which the State has acquired ownership, ensuring the availability of these trademarks to potentially interested economic operators.
Domestic or foreign enterprises wishing to invest in Italy or relocate their production activities from abroad to Italy may declare their interest in using one or more State-owned trademarks and can submit a request outlining the relevant project information, with particular emphasis on employment impacts.
Upon a favorable outcome of the assessment, the trademark will be made available to the enterprise through a free license agreement for a period not less than ten years, renewable. In any case, the license agreement will automatically terminate, even before its expiry date, if the enterprise ceases operations or relocates production facilities outside national borders. During the licensing period, all costs associated with trademark management, including renewal fees, are borne by the licensee enterprise.