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“Made in Italy” and the Certification Trademark - The Change of Direction as of 01 January 2021

by Dr Mariagiulia Signori & Dr Cecilia Trevisi

Legislative decree no. 15/2019 brought Italian legislation into line with directive EU 2015/2436 and regulation 2015/2424. The main innovations include the reinforcement of the PDO (Protected Designation of Origin)/PGI (Protected Geographic Indication), of the traditional terms for wine (TTV), and the traditional specialities guaranteed (TSG), as well as the introduction of the certification trademarks alongside the collective trademarks.

Only trade associations or public bodies may apply for the new collective trademarks. Applications for certification trademarks can, on the other hand, be made by private individuals and by companies whose main activities include certification, and which are not involved in making products or supplying services included among those subject to certification.

Collective trademarks may be used by enterprises belonging to the organisation which registered the trademark in question, on condition that the products meet all the requirements laid down in the regulations filed along with the trademark application. In this way, the proprietor of the trademark and the party using it continue to be separate entities.

Substantially speaking, the collective trademarks safeguard the products or services from a specific geographic zone, while the certification (or guarantee) trademarks guarantee the quality of those products or services. All the proprietors of collective trademarks which are already registered and currently valid have had the right since 31 December 2020 to be converted to the new type of collective trademark or transformed into certification trademarks.

Draft law no. 34/2019 introduced the historic trademark of national interest, which forms part of the safeguards for the Made in Italy concept, in a reversal of the trend towards marketing products from outside Italy as if they really were Italian.

The function of the collective and certification trademarks, as well as the historic trademark, is the protection of the interests of the enterprises when they make use of their trademarks, whether as a means of distinguishing their products or for other purposes.

Photo: Uwe Rieder

20 July 2021

Mariagiulia Signori

Sofiae - Chartered Accountants & Lawyers, Partner | Lawyer

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