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Sunday, 8 February 2015

When friendship is re-interpreted: Italy and San Marino take new view on IP rights

A concerned reader has written to draw the IPKat's attention to a small but potentially highly significant announcement from a source that this Kat has rarely had cause to consult: the Republic of San Marino's Patent and Trade Mark Office.  The announcement, which you can access here, reads as follows:

The owners of European patents and international trademarks that want to protect their inventions or trademarks in the Republic of San Marino are required to pay national taxes in San Marino and can not longer avail themselves of the reciprocity of recognition on trademarks, patents and designs sanctioned by art.43 of the Convention San Marino- Italy of 1939 [Merpel adds: this is the Convention of Friendship and Good Neighborhood between Italy and San Marino, which has its own WIPO webpage here. The Convention, unsurprisingly, is in Italian only].

With the ratification of the Exchange of notes between Italy and the Republic of San Marino on art.43 of the Convention of 1939 on the subject of usurpation and counterfeiting of industrial property rights, the interpretation agreed between the parties on art.43 became fully in force, without any changes in the text of art. 43.

Art.43 of the Convention of 1939 shall apply only on industrial property rights covered by registration or grant issued in Italy and/or in San Marino on the basis of national applications submitted to one of their respective national offices, Italian Patent and Trademark Office (UIBM) and State Office for Patents and Trademarks (USBM).

Art.43 cannot instead find application in reference to trademarks, patents or designs obtained as a result of a international procedure (international Trademarks based on Madrid Agreement and its additional Protocol, European patents, designs based on Hague Agreement).

All applicants originating from countries other than Italy, that require industrial property rights through the international systems (WIPO and EPO), are required to make a deposit in each of the two countries, by paying the taxes both in San Marino and in Italy, in consistency with what is happening in all the member states of the relevant international conventions and in compliance with the principle of territoriality.

San Marino, 23 December 2014
What our concerned reader wants to know is this:
Detective needed?
Is there any reliable news as to what this means for existing rights, for example for European patents validated before 2009?  It seems that this change affects the Italian/San Marino parts of European patents, national phases of Patent Co-operation Treaty (PCT) applications for San Marino [a PCT contracting state since late 2004], International trade marks in Italy/San Marino (but only for non-Italian or San-Marino applicants) [San Marino signed up for the Madrid Agreement in 1960 and the Protocol in 2007]. So far I have only received the information that they have only changed the interpretation of the treaty and that old rights (from non-Italians) are no longer valid in San Marino. Do you have any further information about this issue?
This Kat has found some handy information, "International report - Interpretation of reciprocity of IP rights protection in Italy and San Marino", written by Edgardo Deambrogi (Jacobacci & Partners spa) and available from Intellectual Asset Management here. and "Italy and San Marino, new rules on recognition of IP rights", on the Società Italiana Brevetti S.p.A. website here. However, he is still unsure about the transitional arrangements, if any, and how exactly they work.  Can anyone confidently clarify the position regarding registered rights that have already been validated and, better still, does anyone have a copy of the Italy-San Marino agreement?

More on San Marino here
Countries in Europe that are smaller than San Marino here, here and here

1 comment:

Fabrizio de Benedetti said...

Unfortunately there is no official position or clarification concerning the applicability of the new interpretation to existing rights - including rights acquired before 2009.

However according to unofficial statements made by San Marino officials, the new interpretation applies only to rights acquired on or after 23 December 2014, the date of entry into force of the new interpretation.

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