Quality and Historical Marks of National Interest: The Italian Case Study
Abstract
:1. Introduction
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- Have distinctive skills: it cannot be limited to words that clarify only the type of activity carried out or product;
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- Be lawful: it cannot be contrary to public order and must not violate the provisions of the law.
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- Different trademark protection systems can be distinguished:
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- International trademarks, administered by the World Intellectual Property Organization (WIPO), confer protection in different countries through the Madrid Convention and its Additional Protocol [6];
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- European Union trademarks, which have general effect in all EU Countries, which do not replace national trademark systems but constitute a parallel and additional legal framework in the territory of the EU Member States [7];
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- National trademarks, registered by the Intellectual Property Offices of the Member States (Ufficio Italiano Brevetti e Marchi—UIBM, for Italy) based on a harmonized system at EU level [7].
2. Trademarks in Europe
2.1. Quality Marks in the EU
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- It must be a sign likely to be represented in the EU trademark register. In addition, such a sign should distinguish goods and services that are certified from others that are not.
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- When submitting a QM application, the type of mark for which the application is made should be indicated very clearly.
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- The QM application must relate to the goods and services certified by the trademark owner.
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- It must include the regulations for using the QM for which the application is made.
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- The declaration that the applicant is not carrying out any activity involving the certified type’s supply of products or services.
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- The characteristics of the products or services to be certified.
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- The conditions of use of the EU certification mark.
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- The holder of the MFF applies the verification and monitoring arrangements.
Geographical Indications (GIs)
3. Trademarks in Italy
3.1. Quality Trademarks in Italy
3.2. Historical Trademarks in Italy
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- The complete data of the company applying for registration and its status.
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- Details of the first registration and subsequent renewals if the trademark is filled.
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- If the trademark is not filed, documentation showing the actual and continuous use of the trademark for at least 50 years specifying the goods (or services) to which it relates. If there is a need to prove the actual use of a trademark, the application for registration is represented by the same documentation.
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- A substitute declaration stating that the trademark for which registration is requested is used for the products’ marketing (or for the provision of services) of a national company of excellence historically linked to the national territory.
4. Conclusions
Author Contributions
Funding
Institutional Review Board Statement
Informed Consent Statement
Data Availability Statement
Conflicts of Interest
References
- Cattaneo, E.; Guerini, C. Assessing the revival potential of brands from the past: How relevant is nostalgia in retro branding strategies? J. Brand Manag. 2012, 19, 680–687. [Google Scholar] [CrossRef]
- George, M. Heritage branding helps in global markets. Mark. News 2004, 4, 1. [Google Scholar]
- Wiedmann, K.P.; Hennigs, N.; Schmidt, S.; Wuestefeld, T. The importance of brand heritage as a key performance drive in marketing management. J. Brand Manag. 2011, 19, 182–194. [Google Scholar] [CrossRef]
- Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14 2017 on the European Union Trademark (Text with EEA Relevance). Available online: http://data.europa.eu/eli/reg/2017/1001/oj (accessed on 7 December 2021).
- EUIPO. European Union Intellectual Property Office. Trademarks Definition. 2021. Available online: https://euipo.europa.eu/ohimportal/it/trade-mark-definition (accessed on 7 December 2021).
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Adopted at Madrid on June 27 1989. Official Journal of the European Union, L 296/22. Available online: https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2003:296:0022:0030:EN:PDF (accessed on 7 December 2021).
- Boydell, N.; Rueter, S.; Ruggiero, P. Court of Justice of the European Union Rules on the Interpretation of Trademark Specifications in IP TRANSLATOR. 2012. Available online: https://www.twobirds.com/en/news/articles/2012/cjeu-rules-in-ip-translator (accessed on 7 December 2021).
- Schwager, A.; Meyer, C. Understanding Customer Experience. Harv. Bus. Rev. 2007, 82, 116. [Google Scholar]
- Keller, K.L. Conceptualizing, measuring, and managing customer-based brand equity. J. Mark. 1993, 57, 1–22. [Google Scholar] [CrossRef]
- Keller, K. Understanding Brands, Branding and Brand Equity. Int. Mark. 2003, 5, 7–20. [Google Scholar] [CrossRef] [Green Version]
- Griffiths, A. Trademarks and quality assurance. In Methods and Perspectives in Intellectual Property; Edward Elgar Publishing: Cheltenham, UK, 2013; pp. 129–150. [Google Scholar]
- Balboni, C. Italy Jurisdiction Report: Historical Trademarks of National Interest. World IP Rev 2020. Available online: https://www.worldipreview.com/contributed-article/italy-jurisdiction-report-historical-trademarks-of-national-interest (accessed on 7 December 2021).
- Official Journal of the European Union. The Treaty on the Functioning of the European Union (TFEU), C. 326/47. Art.118. 2012. Available online: https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:12012E/TXT:en:PDF (accessed on 7 December 2021).
- Regulation (EU) 2015/2424 of the European Parliament and of the Council of December 16 2015 Amending Council Regulation (EC) No 207/2009 on the Community Trademark and Commission Regulation (EC) No 2868/95 Implementing Council Regulation (EC) No 40/94 on the Community Trademark and Repealing Commission Regulation (EC) No 2869/95 on the Fees Payable to the Office for Harmonization in the Internal Market (Trademarks and Designs). Available online: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/legal_reform/regulation_20152424_en.pdf (accessed on 10 December 2021).
- Council Regulation (EC) No 207/2009 of February 26 2009 on the Community Trademark (Codified Version). Available online: http://data.europa.eu/eli/reg/2009/207/oj (accessed on 10 December 2021).
- Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, to Approximate the Laws of the Member States Relating to Trademarks. Available online: http://data.europa.eu/eli/dir/2015/2436/oj (accessed on 10 December 2021).
- WIPO. World Intellectual Property Indicators Report; World Intellectual Property Organization: Geneva, Switzerland, 2021; Available online: https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2021.pdf (accessed on 10 December 2021)ISBN 978-92-805-3329-3.
- TMview—European Union Intellectual Property Network 2021. Available online: https://www.tmdn.org/tmview/#/tmview (accessed on 10 December 2021).
- WIPO. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; World Intellectual Property Organization: Geneva, Switzerland, 2021; Available online: https://www.wipo.int/treaties/en/classification/nice/ (accessed on 11 December 2021).
- EUIPO. European Union Intellectual Property Office. Certification Marks. 2021. Available online: https://euipo.europa.eu/ohimportal/it/certification-marks (accessed on 11 December 2021).
- Kehinde, S.; Basit, A. Trademark and product innovation: The interactive role of quality certification and firm-level attributes. Innov. Dev 2021, 1–41. [Google Scholar] [CrossRef]
- Directive 2006/123/EC of The European Parliament and of The Council of December 12, 2006, on Services in the Internal Market. Available online: http://data.europa.eu/eli/dir/2006/123/oj (accessed on 11 December 2021).
- Najmi, N.; Delfiyanti, D. The Development of Economic Right Principal Implementation of Trademark Right in The Covid-19 Pandemic Era. Int. J. Humanit. Soc. Sci 2021, 3, 47–55. [Google Scholar]
- Guidelines for Examination of European Union Trademarks (European Union Intellectual Property Office (EUIPO)) Part C, Section 6. Proof of Use. 2017. Available online: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_1_2017/Part-C/06-part_c_opposition_section_6_proof_of_use/TC/part_c_opposition_section_6_proof_of_use_tc_en.pdf (accessed on 11 December 2021).
- Griffiths, A. Quality in European Trademark Law. Tech. Intell. Prop. 2013, 11, 621. [Google Scholar]
- Commission Implementing Regulation (EU) 2018/626 of March 05 2018 Laying down Detailed Rules for Implementing Certain Provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union Trademark and Repealing Implementing Regulation (EU) 2017/1431. Available online: http://data.europa.eu/eli/reg_impl/2018/626/oj (accessed on 11 December 2021).
- Council Regulation (EC) No 510/2006 of March 20 2006 on the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs. Available online: http://data.europa.eu/eli/reg/2006/510/oj (accessed on 12 December 2021).
- ISMEA—Qualivita. Rapporto Sulle Produzioni Agroalimentari e Vitivinicole Italiane DOP, IGP e STG; ISMEA: Rome, Italy, 2020; pp. 1–82. ISBN 978-88-96530-51. [Google Scholar]
- Legislative Decree February 20, 2019, No. 15. Implementation of Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16 2015 to Approximate the Laws of the Member States Relating to Trademarks as well as for the Adaptation of National Legislation to the Provisions of Regulation (EU) 2015/2424 of the European Parliament and of the Council of December 16 2015 Amending the Community Trademark Regulation. Available online: https://www.gazzettaufficiale.it/eli/id/2019/03/08/19G00026/sg (accessed on 12 December 2021).
- Decree-Law May 19, 2020, No. 34. Urgent Measures Concerning Health, Support for Work and the Economy, and Social Policies Related to the Epidemiological Emergency from COVID-19. Available online: https://www.gazzettaufficiale.it/eli/id/2020/05/19/20G00052/sg (accessed on 12 December 2021).
- Regulation (EC) No 765/2008 of the European Parliament and of the Council of July 09 2008 Setting Out the requirements for Accreditation and Market Surveillance Relating to the Marketing of Products and Repealing Regulation (EEC) No 339/93 (Text with EEA Relevance). Available online: https://eur-lex.europa.eu/legal-content/EN/txt/?uri=celex%3A32008R0765 (accessed on 12 December 2021).
- Regulation (EC) No 1893/2006 of the European Parliament and of the Council of December 20 2006 Establishing the Statistical Classification of Economic Activities NACE Revision 2 and Amending Council Regulation (EEC) No 3037/90 as well as Certain EC Regulations on Specific Statistical Domains Text with EEA Relevance. Available online: http://data.europa.eu/eli/reg/2006/1893/oj (accessed on 13 December 2021).
- MISE (Ministero dello Sviluppo Economico). List of Quality Marks. 2021. Available online: https://www.mise.gov.it/index.php/it/mercato-e-consumatori/qualita-di-prodotti-e-servizi/marchi-di-qualita/elenco (accessed on 13 December 2021).
- Decree-Law April 30, 2019, No. 34 Urgent Measures for Economic Growth and for the Resolution of Specific Crisis Situations. Available online: https://www.gazzettaufficiale.it/eli/id/2019/04/30/19G00043/sg (accessed on 13 December 2021).
- Regulation (EC) No 450/2008 of the European Parliament and of the Council of April 23 2008 Laying down the Community Customs Code (Modernized Customs Code). Available online: http://data.europa.eu/eli/reg/2008/450/oj (accessed on 14 December 2021).
- MISE. Ministero Dello Sviluppo Economico, Direzione Generale per la Tutela Della Proprietà Industriale—Ufficio Italiano Brevetti e Marchi. Database of the Italian Patent and Trademark Office, Statistics on the Number of Applications for Intellectual Property Rights Filed, Processed and Issued. 2021. Available online: https://statistiche.uibm.gov.it/ (accessed on 13 December 2021).
Individual Brand | Collective Brand | Certification Brand |
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It has the function of distinguishing the production or marketing of products and services by bringing them back to one entrepreneur rather than another. | It indicates that the protected goods or services come from members of an association and can only be used by the latter. | It is an indication that the goods or services meet specific characteristics (e.g., qualities) defined in the regulations of use. |
A natural person or a company can register it. It will also be that person or company to use the trademark and have exclusive rights. | Only associations of manufacturers, producers, service providers or traders, and legal persons under public law (if they have an organization like that of associations) may file a collective mark application. | The holder of a certification mark may not manage an activity involving the supply of goods and services of the certified type (neutrality requirement). |
It cannot describe a product’s characteristics or indicate its geographical origin because it is information about the product that a single company cannot monopolize. | The application must include the rules of use. | Natural persons may also apply for a certification mark. |
- | - | The application must include the rules of use. |
Mandatory Information | Description |
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Name of the applicant | The applicant’s name must be the same as that in the application for the trademark registration |
The declaration that the applicant does not carry out any activity involving the supply of products or services that must be certified with the QM. | The following particulars shall be given: “I hereby declare that I am not carrying out any activity involving the supply of [products] [services] [products and services] subject to certification”. “[Name of applicant] declares that it fulfils the conditions laid down in Article 83(2) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14 2017, on the European Union trademark.” |
Representation of QM | The representation of the mark must be the same as that shown in the application. |
The products or services covered by the QM. | The list of goods and/or services is the same as that provided in the application, referring to the EU community application number. |
The characteristics of the products or services to be QM certified (like the material, the manufacturing process of the products or the provision of services, quality or precision). | The description of the characteristics of the applicant is certifying can be provided using general terms, without indicating in detail all aspects and all technical specifications. The characteristics must be specified and explained clearly, being necessary to allow the target public to understand them clearly and precisely:
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The conditions of use of the EU certification mark, including penalties. |
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Persons authorized to use the QM. |
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The procedures for verifying the characteristics and monitoring the use of the QMs by the certification body. |
|
Geographical Indications | Regulation | Focus |
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Protected Designed Origin (PDO) | REG. 510/06/EC [27] | It is a QM awarded by the EU to those agri-food products whose peculiar quality characteristics are strictly interdependent from the geographical area where the whole production process occurs. Therefore, it is a very restrictive mark of origin that requires that the whole process (production, processing and transformation) be carried out within a well-defined geographical area according to specific rules by law. Thus, the quality or characteristics of the agri-food product are exclusively determined by a particular geographical environment, including natural, human and climatic factors. |
Protected Geographical Indication (PGI) | The EU attributes the QM of origin to all those food products for which a certain quality, reputation or other characteristics depend on the geographical origin. It is a little less restrictive than PDO, and it differs from it because it is enough that only one phase of the production process takes place within a specific geographical area (usually the phase that most characterizes the product). | |
Traditional Specialty Guaranteed (TSG) | It is a European trademark that protects at the community level the agri-food productions, not referring to the origin but the specificity and-or traditionality. By traditionality, we mean a food product that has been produced in the same way for at least 25 years. TSG aims to enhance the composition or the methodology used and not the product’s origin. Therefore, it is addressed to those agri-food products having a specificity, in terms of production method rather than composition, specificity linked to the tradition of an area, and therefore production in that area is not necessarily required. |
Mandatory Information | Description |
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Character | A general trademark, i.e., covers all services in each province (and may also cover products), or a sectoral trademark, i.e., one or more service sectors (e.g., real estate). |
Extension | This section refers to the geographical scope of the brand, which can be national or territorial (e.g., on a provincial basis). |
Contents | The aim is to clarify whether the label is intended to guarantee quality in a general sense or to concern specific aspects (e.g., adherence to a code of conduct, safety, environment, social responsibility, etc.). Several characteristics can coexist in the same brand. |
Purpose | The specific purposes of the trademark must be indicated. |
Management | It is necessary to indicate the subject managing the mark, specifying whether it uses an external verifier, and whether or not it is an accredited certification body according to European Regulation 765/2008 [31]. |
Website | The link to the website of the managing entity is given |
Referring Services | The reference sector(s) should be indicated. The ATECO classification [32] should be added to the sectors if available. If the trademark is deposited at the UIBM, according to the categories relating to Trademarks. |
Filing of the trademark c/o UIBM | If the trademark has been filed with UIBM, the number and date of the registration certificate are shown. If the proceedings are still in progress, the date the application was filed is reported. |
Member companies (optional) | It may indicate the number of undertakings belonging to a specific date. |
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Share and Cite
Vinci, G.; Maddaloni, L.; Prencipe, S.A.; Ruggeri, M. Quality and Historical Marks of National Interest: The Italian Case Study. Standards 2022, 2, 106-120. https://doi.org/10.3390/standards2020009
Vinci G, Maddaloni L, Prencipe SA, Ruggeri M. Quality and Historical Marks of National Interest: The Italian Case Study. Standards. 2022; 2(2):106-120. https://doi.org/10.3390/standards2020009
Chicago/Turabian StyleVinci, Giuliana, Lucia Maddaloni, Sabrina Antonia Prencipe, and Marco Ruggeri. 2022. "Quality and Historical Marks of National Interest: The Italian Case Study" Standards 2, no. 2: 106-120. https://doi.org/10.3390/standards2020009