Made in Italy: protection of trademarks of special national interest and value

‘’Made in Italy” is synonymous of high productive and aesthetic quality and represents an added value, in the international market, for different kind of products, from foodstuffs to clothing, automotive and furniture. In recent years, in Italy, a number of initiatives have been taken at the regulatory level to ensure its promotion, valorization and protection.

In 2024 came into force law no. 206/2023, referred to as the ‘New Made in Italy Law’, followed on 3 July 2024 by the related implementing Decree, by which the Ministry of Enterprise and Made in Italy (hereinafter the ‘Ministry’) introduced relevant provisions including the ones related to an official mark attesting the Italian origin of goods, the fight against counterfeiting (in particular in criminal law), and the promotion of the use of blockchain technology to protect production chains.

Among the new measures, there are specific rules for the protection of trademarks – with at least 50 years of registration or use in Italy – of particular national interest and value  (hereinafter “Trademark/s”). The aim of such provisions is to safeguard the heritage represented by Italian trademarks with a long-standing presence on the market, preventing their extinction and guaranteeing their use by companies linked to the Italian territory.

Measures to guarantee the continuity

In order to protect the Trademarks, two distinct possibilities are envisaged

• Notification by companies

The first consists of the takeover by the Ministry of the ownership of Trademarks of companies that will cease their activities. In this regard, the Decree provides that a company owner or licensee of a trademark registered for at least 50 years, or for which it is possible to prove continuous use for at least 50 years, intending to cease its activity definitively, must notify the Ministry in advance of the plan to cease its activity, indicating, in particular, the economic, financial or technical reasons that impose the cessation. Upon receipt of this notification, the Ministry is entitled to take over ownership of the trademark without charge if the trademark has not been assigned for consideration by the owner or licensee company.

This procedure, in particular, is newly implemented, being applicable as of 2 December 2024.

• Revocation for non-use

The second possibility concerns Trademarks suspected of not being used for at least 5 years. In such case, the Ministry may file before the Italian Patent and Trademark Office an application for revocation for non-use and, if the application is granted, proceed with registering the Trademark in its name.

Trademarks of national interest owned by the Ministry will be announced on its Web site https://www.mimit.gov.it/it/impresa/competitivita-e-nuove-imprese/proprieta-industriale/marchi-di-interesse-storico/elenco-marchi.

As of 27 January 2025, one month after the applicability of the procedures at issue in the list are the following:

• INNOCENTI – Application number 302023000141171
• AUTOBIANCHI – Application number 302023000141189

Free licences for Italian or foreign companies wishing to invest in Italy

The Ministry is authorized to use the Trademarks, licensing them exclusively in favor of companies, including foreign ones, that intend to invest in Italy or transfer production activities located abroad to Italy.

In particular, Italian and foreign companies planning to produce in Italy may apply for a licence to use the above-mentioned Trademarks. The application shall contain specific details regarding the planned investment project, with a focus on the employment impact of the same.

Should the Ministry accept the application, the company will be granted a 10-year free licence, renewable on condition that the company maintains production activities within the national borders.

It is to be noted that, in the event that the company interrupts its activities or relocates its plants outside the Italian territory, the licence contract may be terminated immediately.

What’s next?

The recent regulatory measures are aimed, on the one hand, at keeping alive traditional brands that have been used in Italy for many years and, on the other hand, at allowing Italian and foreign companies to benefit from the incentive of free licences, if they decide to produce in Italy.

It will be interesting to monitor the business developments of these provisions in the coming months, in which the list of Trademarks owned by the Ministry will become longer.