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ITALY: An Introduction to Intellectual Property

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Intellectual Property as a Key Asset of the New “Made in Italy” Paradigm

The Made in Italy Law of 27 December 2023, No 206.

On 11 January 2024, the new Made in Italy Law entered into force, introducing new rules aimed at promoting national products and at enhancing Italian cultural heritage. The first comprehensive law on Made in Italy dated back to 2009. A proper global strategy for a significant improvement of Made in Italy requires a complex set of policies, from education to targeted investments. In this frame, intellectual property (IP) may play a pivotal role and the new Made in Italy Law includes it as a pillar of the new strategy, with some specific provisions which deserve to be analysed.

Strengthened protection against infringement and criminal law

One of the main advancements of the Made in Italy Law related to IP is the tightening of criminal measures against counterfeiting activities. In particular, Article 517 of Italian Criminal Code has been amended and its scope extended to include the mere detention of counterfeited goods, for the purpose of the offer for sale. Before the reform, the criminal proviso only sanctioned the offer for sale and the putting into circulation of counterfeited goods. As a consequence, the fight against the entire infringing chain will be more effective.

Moreover, through the amendment of Article 260 of the Italian Criminal Procedure Code, the Parliament has extended the cases of destruction of counterfeited goods, in the frame of seizures. In this connection, the authority may proceed to the destruction upon request of the offended person and the requirements for carrying out the destruction of counterfeited goods are now less strict. In any case, if the storage of the goods is absolutely necessary for the continuation of the investigation, the judicial authority shall issue a motivated order accordingly.

Furthermore, the Made in Italy Law has also tightened the fines for the purchase of counterfeited goods, increasing them from EUR100 to EUR300 and the laws provides for the creation of dedicated training programmes for judges and legal practitioners on anti-counterfeiting.

Digital creators and copyright ownership  

A second significant intervention of the Parliament relates to digital creators and influencers. In particular, the Made in Italy Law provides for a legal definition of digital creators, who are identified as “artists who develop original works with high digital content”. The large definition may include influencers and key players of the Made in Italy strategy, promoting online Italian food and wine, cultural heritage and tourism.

The Ministry of Culture will soon issue a decree, establishing a dedicated section of the Register of Protected Creations, for the works of digital creators. Therefore, the Parliament has further clarified that digital works are eligible for copyright protection and the filing of the works before the Register will give evidence of a creation date, thus constituting important temporal evidence for challenging copyright infringers.

The analysed legislative intervention does not imply a revolution in the approach taken towards the phenomenon of digital creators, but it constitutes a significant first step in setting clear rules on the protection of online creativity, a world in constant evolution.

Historical trade marks  

An effective promotion of Made in Italy requires the development and spread of geographical indications and trade marks, which function as ambassadors for Italy in global markets. Concerning trade marks, Article 7 of the Made in Italy Law establishes that the Italian Ministry of Made in Italy may become owner of trade marks characterised by a strong national interest, provided that the owner of the historical trade mark (registered or continuously used for more than 50 years) ceases its activity without transferring the ownership of the distinctive sign. This rule aims to avoid the disappearance of famous trade marks representing Made in Italy abroad and to promote the recovery of production within the national territory.

Moreover, the Ministry is also entitled to file trade mark applications consisting in distinctive signs corresponding to trade mark registrations not used for more than five years. 

While lawmakers’ intentions to preserve national production and protect historical trade marks is clear, from an IP perspective, despite the aims of the reform, there could be a direct conflict with Article 24 of the Italian Industrial Property Code, which regulates the revocation of trade marks for non-use. Indeed, under the Italian Industrial Property Code, the owner of a registration that is likely to be revoked for non-use is always free to restart the use of the sign. In similar cases, lacking a prior ruling acknowledging the cancellation of the trade mark, the registration has to be considered fully valid. Therefore, the use of abandoned distinctive signs by the Ministry may blatantly conflict with the faculty of the trade mark owner to restart the use of the sign. Furthermore, the detailed monitoring of the market necessary to verify the effective lack of use of a sign may cause some difficulties and even create conflicts with trade mark owners.

Cultural heritage trade marks and domain names  

In line with Article 19 of the Italian Industrial Property Code, Article 22 of the Made in Italy Law foresees that cultural institutions are entitled to register trade marks consisting in names and/or graphical representations of cultural heritage goods, in order to promote the image of Italian cultural heritage. Moreover, the new proviso establishes that cultural institutions have the faculty to grant licences, for monetary compensation, as a way to finance the development of museums, foundations and cultural institutions. In particular, the sums paid by the licensees will enter the State budget and will be then destined by the Ministry to specific cultural initiatives.

The new proviso appears to be in line with the more recent trend on cultural heritage issues, according to which museums and cultural institutions are also economic actors, with individual promotional strategies. In this context, the main museums and foundations may become fundamental players in the new Made in Italy strategy, each one with its own approach towards the management of IP rights, but obviously in full compliance with the rules established by the Cultural Heritage Code (Law Decree 22 January 2004, No 42).

The Made in Italy label  

On a final note, the Made in Italy Law provides for the creation of a Made in Italy label, which could be affixed on a voluntary basis on products manufactured in Italy, under the rules of the European Union. A decree of the Ministry will soon identify the graphical logo, its function and the guidelines for its use. In any case, it is worth mentioning that the rules on the Made in Italy label do not apply to products protected by geographical indications, which already have their own mark of quality and origin.

The Made in Italy label will be also an instrument for ensuring the traceability of the manufacturing chain, based on blockchain technology, as ruled by Article 47 of the Made in Italy Law. Thus, the new label is designed both as a promotional tool and as a guarantee for consumers.

In this frame, it is worth mentioning two very recent cases, involving the famous car manufacturers Alfa Romeo (Stellantis) and Xiaomi. The government intervened, requesting Alfa Romeo not to use the Milano designation to characterise its new car, entirely manufactured in Poland. Similarly, Xiaomi had to change the Modena designation for its car, produced in China. The main idea behind these political interventions is that names directly recalling Italy, such as names of Italian cities, shall be used exclusively for products manufactured in Italy, even where the history of a brand is clearly Italian, as in the case of Alfa Romeo, which was founded in Milan in 1910.

Conclusions - between intellectual property and national marketing

The rules analysed above constitute the main provisions of the Made in Italy Law as it relates to intellectual property. The attention the Italian Parliament has paid to this fundamental legal area confirms the broad consensus that IP can actively support the development of Made in Italy, along with the protection of geographical indications. In this frame, IP stands between law and marketing policies, and the investments approved the Made in Italy Law are in line with this positive trend. For instance, the project Voucher 3I - Invest In Innovation has been financed with EUR9 million, aimed at supporting patent innovation within start-ups.

However, as described, the interesting and meritorious spirit of the reform is not always supported by the concrete functioning of the new specific legal provisions, which may sometimes conflict with well-established principles of IP law.