The Industrial Property Code has recently been reformed by Legislative Decree 131/2010, which was enacted on September 2 2010. The legislative decree:
- harmonises the code with changes introduced by the European Patent Convention (eg, by adding provisions on the validation of European patents);
- harmonises the code with changes to Italian legislation since the code's entry into force in 2005 (eg, by adding a comprehensive framework for biotech inventions); and
- strengthens the protection of IP rights by making it easier to shorten the litigation process or avoid it entirely (eg, by allowing a party to ask the judge to arrange an official technical consultation before the commencement of a lawsuit.)
2. Section 19(3)
The legislative decree has replaced Section 19(3) of the code with a new version. This now provides that the state and Italy's regions, districts (or provinces) and municipalities - which, under the code, are all designated as forms of 'territorial authority' - can register trademarks incorporating designs or graphics that relate to one or more monuments, significant buildings or natural features in a specific geographical area.
Section 19(3) goes on to state that revenue from the economic exploitation of such a trademark, including revenue from licensing and merchandising, must be used to finance the territorial authority's institutional activities or to pay its debts.
3. Brands incorporating monuments or natural features
Even before the amendment to Section 19(3), territorial authorities were entitled to register all forms of trademark, including those incorporating monuments or natural features. What, then, is the purpose of the amendment? Is it merely an invitation to territorial authorities to register such marks (and a specification of the use of the resulting revenue)? Does it imply that only territorial authorities can register trademarks with such elements? Does it mean that in the event of a dispute, the rights of a territorial authority take precedence over those of a private party?
The final text of the provision does not exclusively reserve the registration of monuments and natural features to territorial authorities, although it could be argued that this was the original intention. At present, a private person or enterprise can register a trademark containing a monument or natural feature, as there is no explicit restriction on them doing so. Thus, in the event of a dispute between a municipality and a private party about confusing or similar trademarks, the rules regarding counterfeiting apply.
The new provision raises another question: if a monument or natural feature 'becomes' a trademark, must authorization be sought from the trademark owner before the monument or feature can appear in a film, an advertisement or a television programme?
Fortunately for many media companies, the answer is no. A monument or a natural feature is not considered the property of a private owner of a trademark that includes an image of the monument or feature in question. For example, the use in a film of a specific trademark incorporating an image of the Colosseum in Rome is subject to the authorisation of the trademark owner. However, use of an image of the monument itself is subject only to authorisation from the Ministry of Cultural Heritage in specific cases.
4. More registrations by territorial authorities and 'promotion or recommendation' trademarks
The economic significance of cultural heritage brands is increasing. In August 2010 the Monza Chamber of Commerce estimated the value of some of the most important brands in Italy, taking into account the level of public awareness and the commercial value of the images associated with them. The study estimated the following values:
- The Colosseum - €91 billion;
- The Vatican Museum - €90 billion;
- Milan Cathedral - €82 billion;
- Pompeii - €20 billion;
- Saint Mark's, Venice - €16 billion; and
- The Uffizi Gallery, Florence - €12 billion.
A growing number of cities and other territorial authorities are registering trademarks to promote tourism or cultural initiatives. For example, Venice has launched a new logo, comprising a 'V' and the image of a winged lion (the traditional image of Saint Mark), which is intended for commercial merchandising and licensing. A similar initiative has been launched in Rome, with a symbol that incorporates the Capitoline Wolf suckling Romulus and Remus, the city's mythical founders. The province of Lecce has registered the trademark SALENTO D'AMARE for licensing to tourism companies in the area.
The increase in registrations by territorial authorities is linked to new forms of trademark use. Trademarks can identify a product or a service - including a cultural or tourism service - which is normally provided by the trademark owner. In a landmark Italian case involving the trademark ELLE - owned by the well-known French magazine publisher - and its licensing to cosmetics producers, a trademark 'for promotion or recommendation' was defined as a “collective trademark for services”.1
Recently, this form of trademark has been used for promotional purposes. It is generally licensed by the owner to other companies for use with different products, as a kind of quality mark.
Thus, services that are offered in the tourism and culture sector and are linked to a specific geographical area are often identified by a unique quality trademark, which is registered by a district or municipality. This is the case for many trademarks connected to tourism, and the private or public companies that act as licensees are typically required to meet quality standards.
5. Monument or natural feature trademarks registered by private entities
Territorial authorities and a large number of private companies have incorporated the names of monuments into their brands. For example, the database of the Italian Patent and Trademark Authority (Ufficio Italiano Brevetti e Marchi) includes:
- CIRCO MASSIMO for circus activities;
- COLOSSEO ROMA for food;
- a Colosseum image for heat accumulators and air conditioners;
- COLOSSEO and an Italian tricolour badge for paper and cardboard and goods made from these materials; and
- COLOSSEO for Sardinian cheese.
However, a database search reveals no Colosseum image trademarks registered to the City of Rome, although it has registered other trademarks, such as the 'SPQR'2 emblem with the words 'Città di Roma' and the city's colours, gold and red.
Although the city authorities have not registered a trademark incorporating the Colosseum, this does not prevent them from legally using such a mark. The use by public authorities of their monuments in the course of normal public activity is always lawful. Use in an advertisement or a film, for example, is subject to authorisation by the relevant ministry.
However, problems could arise with respect to merchandising and related commercial activity, in which the territorial authority could be considered to be competing with private companies that use similar trademarks, some of which may have been registered before the authorities' mark. In such cases, general trademark rules apply, as Article 19 confers no special rights on territorial authorities. Therefore, counterfeiting and infringement disputes between private parties and public authorities will be determined by the principles of prior registration and use.
Unless the legislature amends the law, it appears that the general rules of trademark law will apply to disputes involving similar marks registered by a territorial authority and a private company or individual, where both marks incorporate the same name or image of the same monument. Thus, if the trademarks relate to the same products or services, the priority principle will apply and the territorial authority will not have an advantage by virtue of its public status.