Guerlain vs. EUIPO and the question of distinctiveness
On June 23, 2021, Italy's Ministry for Economic Development adopted the "Lines of strategic intervention on industrial property for the years 2021-2023." The initiative is part of the broader implementation of the National Recovery and Resilience Plan (PNRR) in response to the COVID-19 pandemic.
A prior public consultation conducted by Italy’s Patent and Trademark Office (PTO) allowed the strategic intervention plan to accommodate stakeholders’ inputs, including law firms, universities, not-for-profit associations, companies and other interested parties.
Though the goals of the strategic intervention plan can be described as ambitious, the period of time set out for their achievement is relatively short. By 2023, the Ministry for Economic Development aims to have satisfied five lines of intervention, defined as "challenges":
- Improve Italy’s IP protection system
- Encourage the use and spread of IP, in particular by small and medium-sized enterprises (SMEs)
- Increase knowledge of, and ease of access to, patents
- Guarantee more rigorous enforcement of IP rights (IPRs)
- Strengthen Italy’s role in IP at the international level
In rising to these challenges, the plan seeks to accomplish the following main objectives:
- Amend the Italian IP Code, particularly design law, in light of recent legal trends at the European level (e.g., on the protection of new types of graphic designs such as animated graphical user interfaces, augmented reality and holograms).In addition, trademark law is to be updated to exclude trademarks that could evoke geographical indications (GIs) from registration. This move will bolster the protections afforded to this form of IP – vital to the local economies of many Italian regions.
- Deflate the IP litigation system, chiefly by allowing the UIBM to invite parties to find settlements on the nullity and revocation of trademarks at the administrative level.
- Complete the subscription to the World Intellectual Property Organization’s (WIPO) Digital Access Service (DAS). This system enables priority and similar documents to be provided to participating trademark offices without the need to obtain and send certified paper copies of an application.
- Study a new telematic support infrastructure for the management of all IP applications and registrations. This network, based on the most advanced data processing technologies, is to be capable of both integrating existing systems and databases and enriching them with new and more advanced user support services. Along similar lines, the plan promises the continuance of the UIBM’s current electronic filing system with the addition of facilitating textual searches of documents included in the national database.
- Update anti-counterfeiting legislation to simplify the assessment, storage, confiscation and destruction of counterfeit products. The plan commits to prevent and fight counterfeiting and piracy in the longer term by further strengthening the partnership between Italy’s Ministry for Economic Development and law enforcement agencies such as Guardia di Finanza.
- Improve access to economic contributions toward the fees and expenses connected with the obtainment of IP rights. To date, the Ministry for Economic Development’s incentive programs "Brevetti+," "Marchi+" and "Disegni+" have granted over 80 million Euros to Italian companies.
- Continue supporting startups in obtaining patents. Currently, the so-called "Voucher 3i" program subsidizes the costs for verification of patentability services in addition to drafting and filing fees.
- Elevate the standing of the Italian IP sector at the international level. In acknowledging that IP protection policies are of growing geopolitical importance, the strategic intervention plan undertakes several policies.
- Firstly, Italy’s active participation in multilateral dialogues on IP and the cultivation of bilateral partnerships with other IP offices.
- Secondly, Italy’s commitment to supporting the eventual implementation of the Unitary Patent within the European Union.
- Thirdly, Italy will continue to advocate the city of Milan as host to one of the headquarters of the European Patent Court. The plan relies on close coordination between the Ministry for Economic Development and the Ministry for Foreign Affairs and International Cooperation to achieve these international goals. In addition, an alignment of purpose is to be established with the Italian network of embassies and representative offices within international organizations.
From the strategic intervention plan, it is clear that IP is expected to play a key role in facilitating Italy’s recovery in the face of the COVID-19 crisis and fostering a revitalized and emboldened economy, ready to meet the demands of a rapidly changing business environment.
The full text of the strategic intervention plan is available here (in Italian).
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