Quality and Historical Marks of National Interest: The Italian Case Study

Abstract

Trademarks are distinctive signs designed to promote and enhance the products/services of companies. In recent years, the concept of quality has asserted growing interest, especially among enterprises, aiming to promote consumers by creating distinctive marks. In Italy, in 2021, the number of filled quality trademarks for products and services will amount to about 81. Through the “Decreto Crescita”, Italy supported Italian companies to limit their delocalization overseas. In this regard, the historical mark of national interest was established, from which Italian companies with a trademark filed for at least 50 years can benefit. Therefore, the study aimed at evaluating two different types of trademarks, quality marks and historical marks, highlighting the main aspects that characterize these two marks as a function of the standards that distinguish them from the most common trademarks. For this purpose, the study focused on evaluating historical brands in Italy to promote their strategic importance and enhance the temporal continuity of the marks. These were considered a new marketing tool to promote know-how and “Made in Italy”, which is particularly useful for the brand image of companies to be competitive in a global market.

1. Introduction

Customers’ choice of goods and services is often influenced by visual recognition and the memory of trademarks [1]. They are an essential part of everyday life as they shape people’s choices and attitudes and predispose them to consumption [2,3]. According to Regulation (EU) 2017/1001 [4], trademarks represent all those signs such as words, names of persons, designs, letters, numerals, colors, packaging and sounds, which are suitable to distinguish the goods or services of a company from those of other enterprises, and they could be considered as a tool for guaranteeing and recognizing the quality of a company, alternative but potentially complementary to certification [5]. They allow consumers to differentiate the products/services from others on the market, and they are placed at the base of the communication strategies of companies for the choice of products by consumers.

According to Reg. 2017/1001, the trademark should:

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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].

In recent years, brands are no longer considered only as marketing tools but also as means that allow achieving relevant social results, such as promoting healthy life, sustainable behaviors for the environment, ethically correct choices aimed at safeguarding workers, and more. Therefore, brands play a vital role for the consumer, representing the possibility of creating a bond of relationship and trust, through repeated consumption, between the consumer and the company that owns the brand [3]. Indeed, this link between the consumer and brand can influence the company performance holding the brand [2,3,4]. In this regard, it is essential to highlight how the “customer experience” is one of the main factors in strong brands development (brands that have strong originality and a remarkable distinctive capacity) and how brand coverage from a media point of view can influence individual choices and preferences [8].

In this regard, the concept of “brand equity” was born, that is, the added value that a particular brand gives to the products/services of a company [9]. Therefore, the representation of goods/services through brands acts as a differential element that helps the consumer’s decision-making based on personal experiences. Therefore, all those brands that present and confer high brand equity can allow for better profit margins, consequently improving communication with the consumer and therefore playing a significant role in the consumer’s choices and increasing the credibility of the company associated with that brand [10]. Furthermore, brands with high brand equity can present improved future profits, induce customers to pay higher prices, and increase brand visibility in the market. Therefore, brands are strategically important because they allow companies to communicate their value to the consumer and become a benchmark within their industry. It is possible to distinguish between quality marks (QMs) and historical marks (HMs) in this context. The former is used to certify the value of raw materials and production and processing methods of certain products [11].

The importance of QMs refers to the protection of the consumer, who is more aware of the product’s characteristics, and the producer, who sees his work recognized through an official certification. In contrast, the latter is used to recognize the protection of products or services made by a productive national enterprise of excellence historically linked to a specific territory [12]. In this way, products acquire added value compared to conventional ones, entering a different market niche characterized by quality and higher prices. The strategic importance of HMs concerns being a lever for a country’s competitiveness and internationalization. Hence, the study aims to analyze the difference between QMs and HMs, highlighting the main aspects that characterize these two brands as a regulation function and the specifications that distinguish them from the most common trademarks. In particular, a case study focusing on the historical trademarks in Italy was proposed to promote the strategic importance of marks, thus enhancing them as a driver of competitiveness and internationalization.

2. Trademarks in Europe

The Treaty on the Functioning of the European Union [13] provides that in order to establish and operate the internal market, standard measures shall be established among the 27 Member States of the European Union in order to ensure uniform protection of intellectual property rights in the Union and for the setting up of centralized authorization, coordination and control systems at Union level. Regulation (EU) 2424/2015 [14], repealing Council Regulation (EC) 207/2009 [15], created a specific trademark protection system for the European Union, which operates in parallel with the trademark protection available at the level of individual member states following their respective national protection systems.

Regulation (EU) 2424/2015 provides the following definition of a European Union trademark: “all signs, such as words, including names of persons or designs, letters, numerals, colors, the shape of goods or their packaging, and sounds, provided that such signs are suitable for: (i) distinguish the goods or services of one undertaking from those of other undertakings; (ii) be represented in the EU register of trademarks in such a way as to enable the competent authorities and the public to determine clearly and precisely the subject matter of the protection granted to their proprietor” (Art. 4 reg. 2424/2015).

Regulation (EU) 2424/2015 and Directive (EU) 2015/2436 [16] constitute the “trademark package”. These are the two parts of reference legislation aimed at harmonizing the Member States’ trademark laws with each other, but also to make the national laws and that part of European regulation that directly controls the “European Union trademark”, that is, the industrial property title issued by the European Intellectual Property Office (EUIPO) that is in effect in all Member States.

In Europe, the number of trademarks registered in 2021 was approximately 15 million [17]. The countries with the highest number of brands are France (5.7 million), followed by Germany (4.9), Italy (3.7) and Spain (3.5) (Figure 1) [18]. Of these, 51.91% are words, while the remainder are combination marks (words/figure) (24.86%), figures (17.32%) and others (5.51%) (Figure 2) [18].

Figure 3 [18] shows the trademarks registered in the EU divided according to the Nice Classification [19], which divides them into product and service marks. Product trademarks are in turn subdivided into 34 classes according to the nature of the product in question, and service marks are subdivided into 11 subclasses, thus making it possible to classify directly or by analogy most products and services.

The most widely registered product brands are in the agri-food sector (11.5 million), scientific instruments (2.5 million), paper and cardboard (1.7 million), clothing (1.6 million), pharmaceuticals (1.4 million) and cosmetics (1.1 million). As far as service brands are concerned, those in the training sector (2.6 million), advertising (3.2 million) and scientific research (2.2 million) are those most represented. Of these brands, only 52.09% are registered, the remaining percentage being represented by 34.04% of expired brands, 10.36% of ended brands and 2.7% of filled brands [18].

2.1. Quality Marks in the EU

QMs, compared to individual and collective marks, whose differences are expressed in

Table 1. Differences between individual, collective and certification marks.

Individual Brand	Collective Brand	Certification Brand
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.

, are different not only in terms of function but also in some more formal aspects. EU quality policy aims to protect the names of specific products in promoting their unique characteristics related to geographical origin and traditional skills. Therefore, QMs are tools for recognizing the added value of a specific product in terms of its origin and-or production methods, generally linked to a local tradition or territoriality [20,21]. In the EU, QMs have been defined in the first instance by Directive 2006/123/EC [22] as those marks whose function is to certify whether the product/service on which the brand is affixed has specific quality characteristics and/or follows certain ethical, environmental, etc. standards. Therefore, this brand indicates that the good or service has achieved specific quality standards set by the certifying body.

A QM refers to the assurance of specific characteristics of certain products and services. One crucial difference is that the holder of a certification mark (a natural or legal person, an institution or authority, and bodies governed by public law) may not operate an activity involving providing products and services of the certified type [23]. The holder of a QM may certify the products and services that others use in their respective activities but may not certify his products and services and use certification himself. He has an obligation of neutrality about the interests of the manufacturers of the products or providers of the services he certifies [24]. A quality mark can be defined by four aspects [25]:

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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.

The use regulation constitutes the essence of the QM.

Table 2. Mandatory information to be reported in the regulation of the use of quality marks in the EU [20,26].

Mandatory Information	Description
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: − Suppose the specification concerns a series of products and services, with different characteristics to be certified, depending on the individual products/services category. In that case, the characteristics to be certified must be specified for each of the different types of products. − About services, their characteristics must be specified for each of the different types of services and not the characteristics of the service providers.
The conditions of use of the EU certification mark, including penalties.	− It is necessary to include the specific conditions of use imposed on the authorized user: that the mark must be used as an EU certification mark; if there are taxes to be paid in connection with the use of the trademark; etc. − The use and conditions of use must refer to the representation of the required sign. − It is mandatory to specify the appropriate penalties if the conditions of use are not respected.
Persons authorized to use the QM.	− A clear indication of who has the right to use the trademark − If the applicant intends to list the authorized QM users, it may utilize a link to a website, allowing them to be systematically updated without the need to amend this regulation. − Persons authorized to use QMs must be referred to as “authorized users”. The latter do not have the right to transfer or license the use of the QM to third parties.
The procedures for verifying the characteristics and monitoring the use of the QMs by the certification body.	− It is necessary to specify the verification procedures adopted and the surveillance system used by the applicant/holder of the MFF to ensure that the goods and-or services covered by the trademark possess the certified characteristics. − The applicant does not necessarily have to carry out the checks. − The verification of the goods and services covered by the trademark and the monitoring of the conditions of use may be limited to random or random checks and should not be extended to all certified products or users.

shows the mandatory contents that QM “regulations use” must have (17 of Implementing Regulation (EU) 2018/626) [26]. The EU Regulations define that QMs must be filed within two months of application and contain:

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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)

In the field of QMs, to protect the great variety of European agri-food products, in 1992 the EU introduced a system of quality certification based on a geographical indication. This system protects the denominations of products from certain regions that have specific qualities or enjoy a reputation linked to the production area. It was created to defend some agri-food products that, when they cross the borders outside Europe, have to face the unfair competition of products having the same quality and characteristics, and in some cases even the same name. In this case, the counterfeiting of typical products, on the one hand, might be detrimental to local producers, and on the other hand, it could confuse consumers whom poor copies of original products would mislead. Therefore, GIs recognitions have a double purpose: for producers, to help them better market their products, and for consumers, to distinguish quality products. For an agri-food product to be designated as PDO, its whole production process must be carried out in a specific production area. In detail, geographical indications, as defined by Regulation 510/06/EC [27], include Protected Designation of Origin (PDO), Protected Geographical Indication (PGI) and the Traditional Specialties Guaranteed (TSG), whose principal differences are expressed in

Table 3. GIs: main characteristics and differences.

Geographical Indications	Regulation	Focus
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.

. In contrast, PGI certification is less restrictive, for example in the area of indication of typicality, it is enough to have even one production phase (usually the one which characterizes the product the most). On the other hand, STG does not protect the origin and/or area of the production process but its traditionality. At a global level, GIs products are about 1500. Italy is the country which has the most, 309 (of which 171 PDO, 135 PGI, 3 TSG), 21% of the total. It is followed by France (256), Spain (202), Portugal (140) and Greece (113) [28].

3. Trademarks in Italy

Italy ranks among the top three European countries with the highest number of registered trademarks [17]. In recent years there has been an increase in the number of applications for trademark registration (Figure 4).

Figure 5 shows the trademarks registered for the various classes of goods and services defined by the Nice Classification.

The product trademarks most frequently represented are those relating to clothing (44.3 thousand), scientific instruments (27.6 thousand) and foodstuffs (27.4 thousand). As far as service trademarks are concerned, those relating to training (56.3 thousand), the advertising sector (52.7 thousand) and agri-food services (27.5 thousand) are more represented.

3.1. Quality Trademarks in Italy

In Italy, the regulation of the collective trademarks is contained in Art. 11 of “Codice Proprietà Industriale (CDI)”, as indicated by Legislative Decree 15/2019 [29]. Before the last reform, the collective mark had the function of guaranteeing compliance with quality standards or geographical origin by the marked products or services. Now, this function has partly shifted to the certification mark. In addition, today the function of the collective trademark is to specify the commercial origin of certain products/services by informing the consumer that the manufacturer of the products/services provider belongs to a specific association and has the right to use the trademark [20]. In order to obtain the registration of a collective trademark, whether European or Italian, it is necessary to file a regulation, which standardizes the conditions of membership in the association and, only eventually, the conditions of use of the trademark. The regulations may impose certain limitations on the trademark users, such as the location of the trademark, the size, the advertising methods, and more [30]. If the trademark describes the geographical origin of a product/service, the regulation must provide that all companies belonging to the same geographical area may participate in the association [29]. In Italy, the certification mark, in which QMs fall, is regulated in Art. 11 bis CDI, introduced by Legislative Decree 15/2019, in which the owner of the mark, or the certifying entity, decides whether the products/services of a company can use the mark. In any case, the owner is bound by an obligation of impartiality and may not use the mark for its own products/services or have interests in the sector in which the certification operates [29]. To harmonize the QMs registration procedure in Italy, in addition to the application for registration of the trademark, a form must also be submitted describing, in detail, the characteristics of this brand (

Table 4. Quality Marks Characteristic Sheet.

Mandatory Information	Description
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.

).

In Italy, there are 81 quality brands; mainly, these trademarks refer to the application by products/services of quality standards (64%). In addition to the concept of quality, these brands are applied to respect and safeguard the environment (48%), promote local products (41%), adhere to conduct codes (19%), safeguard safety and human health (16%) and others (11%) [33]. Often, these brands are characterized by the possibility of dealing with several aspects at once (Figure 6).

Of these brands, 17% are applied nationally, while the remainder are applied on a territorial level with specific reference to a specific territory or province. These quality marks can be applied to a product/service following verification by public and private entities that guarantee compliance with the specific requirements of each quality mark defined in Table 4 and manage their use. In total, 75% of QMs are managed by public bodies, while private bodies manage 25%. In Italy, 48% of QMs do not require verification of the application of quality standards, while 40% are verified by non-accredited bodies and the remainder by accredited bodies (12%) [33]. In addition, 89% of Italian QMs are applied to specific sectors of interest (Figure 7).

3.2. Historical Trademarks in Italy

In 2019, Italy adopted measures to strengthen the protection of Italian brands, promoting the quality and historicity of their productions by establishing the concept of the historical mark. The desire to protect historical trademarks comes after what has been done in other EU Countries, such as Spain, Germany and France, and is regulated by Legislative Decree N. 30/2019 [34]. It is also called “Decreto Crescita”. It has been provided that the owners or exclusive licensees of respective trademarks registered for at least fifty years or for which it is possible to demonstrate the continuous use for at least fifty years, used for the commercialization of products/services made in a productive national enterprise, can obtain the registration of the trademark in the register of historical trademarks of national interest. The Decreto Crescita is to support Italian industry by limiting the delocalization of production abroad and thus promote “Made in Italy”, protecting the economic and social fabric that revolves around Italian companies. Regarding the concept of Made in Italy, based on EC Regulation 04/2008 n.450 [35], it is not only attributed to goods produced in Italy, but also to those that “the production of which two or more Countries or territories have contributed and which have undergone the last substantial transformation in Italy”. In this context, many foreign-made products of low quality are started elsewhere and finished in Italy, adding the Made in Italy mark on the label, exploiting the excellent reputation of Italian manufacturing sectors. Due to the misleading use of products made abroad, of names, brands, signs, references, images, and colors that evoke Italy, it is called “Italian Sounding”. In order to fight this phenomenon, Art. 32 of the Decreto Crescita establishes a tax credit equal to 50% of the expenses incurred for the legal protection of Italian products, including agri-food products, to support Italian companies in the fight against this unpleasant industrial phenomenon. The protection of Made in Italy is closely linked to the territoriality and the Italian character of particular productions. Historical Italian brands have become prey to foreign buyers, who, once they have obtained the ownership of the brand, have moved the production abroad, closing the production plants in Italy, thus cancelling the Italian character of the products marked by a specific brand, impacting the wealth of the Country, with relevant consequences on the employment level.

In this context, therefore, to safeguard employment levels and the continuation of production on the national territory, the need has arisen to establish a register for the protection of historical brands.

The application for registration of Italian historical trademarks should contain:

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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.

This Decree does not constitute a new title of industrial property, but rather the historical trademark represents a recognition made to all those companies that are owners or exclusive licensees of a trademark that has been used for over 50 years. Historical trademark guarantees merely the entrepreneurial origin of the goods and services for which it is registered and used, that is, the fact that a particular person has exclusive rights (and responsibility) for those goods and services for which the trademark is used. The ability of a company to survive for many years in an increasingly complex and constantly evolving market is often indicative of solid structure, production capacity and know-how, which therefore deserve to have a concrete recognition for what has been done over the years, also in terms of impact on local communities. Therefore, the owners of trademarks with these characteristics will register their rights on the new register of historical trademarks of national interest.

As a result of the Decreto Crescita in 2020, the “Historical Trademark of National Interest” logo was established, which the companies listed in the register can use for commercial and promotional purposes. This logo, which consists of an image of Italy with the words “Marchio Storico” written around it, may be used alongside the trademark only with the products/services for which the trademark is registered. The advantage of being registered in this register is the possibility of benefiting from the “Fondo per la tutela dei Marchi Storici”, that is, funding aimed at the economic enhancement of historical trademarks of national interest by small-medium enterprises which own or exclusively license the Historical Trademark [34].

The purpose of the Historical Trademark institution is to protect historic Italian companies’ industrial property by promoting national companies that have been operating in the territory for over half a century. In this way, the Italian Government has set itself up as the guarantor of Italy’s industrial history, linking the historical brands and therefore the company holding them to the national territory. Currently, the registered Historical Trademarks are equal to 267. The trademarks representing the first three sectors reflect the leading sectors of the Italian economy. Among these, the most represented sector is the food industry, which holds 33% of the total historical brands, followed by beverages (13%) and the fashion and textile sector (8%) [36]. Figure 8 shows historical marks by sector.

4. Conclusions

Trademarks are distinctive symbols of products and services and have always been a reference point for consumers’ purchasing decisions. In addition, trademarks guarantee quality for consumers and protection for the producer against fraudulent copying of their products or use of their trademark. In this regard, the study evaluates the standards of application of two different trademarks, quality trademarks and historical trademarks, focusing on their diffusion in Italy. Quality marks are an alternative but, at the same time, complementary guarantee instrument to certification. Among quality marks, historical marks play a crucial role in evaluating the temporal continuity of the corporate identity, as it is assessed in its “historicity”. The registration in the historic trademark register is a guarantee of know-how related to the specific sector of the trademark and, at the same time, is perceived as an attribute of quality and “Made in Italy”.