[Guest post] The subtle line between “historical” and “reputed” marks – a bird’s-eye view

Under EU trade mark law, trade marks with a reputation are entitled to enhanced protection. But what about 'historical' trade marks? Let's find out more with this analysis by Katfriend Federica Pezza (Hogan Lovells), who looks at how the latter are protected under Italian law in the aftermath of the Alitalia saga and what their relationship is to the former.

Here's what Federica writes:

The subtle line between “historical” and “reputed” marks – a bird’s-eye view

by Federica Pezza

Friday, 15 October 2021: we are in Sardinia and an Alitalia-branded plane is about to take-off. Starting from the day after, Italia Trasporto Aereo (ITA) replaced the airline after 74 years of activity. “Goodbye to the symbol of Italian dolce vita” some columnists titled few hours later, “the end of a turbulent life” somebody else dramatically claimed.

However, this is neither a Fellini movie nor a gothic novel. Yet, it is clearly an historical moment. Not surprisingly many commentators refer to the “Alitalia” trade mark itself as a “historical” mark. However, pathos aside, this is not the case here.

Without commenting on the merits and the political implications of this heart-breaking goodbye, the Alitalia-saga is interesting from a trade mark prospective as it gives us the opportunity to reflect upon the very-Italian notion of “historical trade marks of national interest” (“Historical Trade Marks”).

First things first: the Italian legal framework

Introduced on 20 January 2020, the protection of Historical Trade Marks was designed as a tool aimed at boosting Italian companies and production and protecting them against foreign acquisitions.

More in detail: according to Law Decree No 34/2019, and in line with Article 11-ter of the Italian Intellectual Property Code (IPC), a mark can be included in the register of Historical Trade Marks (the “Register”) provided that (i) it has been registered for at least fifty years - or continuous use for at least fifty years can be proven, (ii) it is used for the marketing of products or services produced in a national productive enterprise of excellence, and (iii) it is historically linked to the national territory. Article 185-ter IPC then provides that the owners or licensees of historical trade marks intending to close their production site have to notify "without delay" the Ministry of Economic Development about the project and share economic or technical reasons underlying their decision, including the steps taken to find a potential buyer.

Eventually, Law Decree 34/2020 completed the legal framework, by introducing a specific Fund (Fund to safeguard employment levels and the continuation of business activity) operated by the Italian agency Invitalia with the purpose of inter alia financing the activity of owners (or exclusive licensees) of Historical Trade Marks.

Where we are now

Airplanes fly and so does time. Two years have passed since the introduction of the Register. According to the last update of 15 October 2021, 239 trade marks have been registered so far. “Saila”, “Sperlari”, “Antinori”, “Ferrari” and “Cirio” are only some of the famous brands featured in this menu-looking Register. Interestingly, no mention of Alitalia is made.

Indeed, hunger (and numbers) aside, as things stand now, Historical Trade Marks represent a potentially valuable tool for the protection of “Made in Italy”. Yet, the actual scope and implications of this regime are far from clear:

1. Legal qualification and definition: First, one should note that, under the Decree, inclusion of a mark in the Register means that its owners and exclusive licensees will be able to use a special logo demonstrating its historical relevance in their marketing. Yet, as Article 6 makes clear, these marks do not constitute a new intellectual property right. Moreover, the definition of the regime itself is - at the very least - vague: indeed, neither the Decree nor the implementing regulations define what is meant by “enterprise of excellence” or “historical link with the territory”.
2. A tool for proving reputation? Against this (uncertain) background, the most compelling question from a trade mark prospective is assessing the extent to which inclusion of a mark in the Register can be used for inferring reputation. This is because, as the Italian legislature clarifies in the Decree’s preparatory works, European and national legal systems do not recognise this regime, but rather provide greater protection for trade marks with a "reputation". It therefore seems that the legislature's intention is to acknowledge trade marks entered in the Register, by granting the strong protection of renowned trade marks. Indeed, a further confirmation in this sense comes from the decision of 5 May 2021 in case no. 40324 where registration of “FELCE AZZURRA” as an Historical Trade Mark was regarded by the Milan Court of First Instance as a key circumstance for the assessment of reputation. This said, both the EUIPO Guidelines and Article 97 EUTMR fail to include this or other comparable tools among the means for proving reputation of a mark. Likewise, the EUIPO does not refer to such institute in its decisions. Thus, absent guidance at the EU level, it is not clear whether the inclusion of a mark in the Register should be taken into account to assess reputation and, if so, what the probative value of such evidence should be.

Historical Kat

Other experiences and final considerations

In this respect, the experience of other EU countries, where comparable tools for proving reputation not regulated under Article 97 EUTM were introduced, might provide some useful indications regarding the qualification and impact of the Italian regime. For instance, in Finland, a specific “List of trade marks with a reputation” (the “List”) was established in 2007. More in detail, as it can be read on the Finnish Patent and Registration Office’ website, the List features those marks that “have become very well known in their target group, whose scope of protection is broader than usual”. Interestingly “even marks that are not included in the Trademark Database can be admitted to the List” and, for this reason, consultation of the List is recommended when conducting distinctiveness searches. Yet, also in this case and at the expense of legal certainty, nothing is provided by the Guidelines on the probative value of such instrument.

Going back to Italian Historical Trade Marks, many issues arise when it comes to their actual implementation. For example, is mere inclusion of a mark in the Register sufficient for proving reputation? And, if so, what is the relevant timeframe to be taken into account? Indeed, it is possible - or even likely - that a mark, although historical (and possibly because of this), might then loose its reputation before the relevant public. Also, lacking a clear interpretation of the notions of “enterprise of excellence” and “historical link with the territory” - the risk exists that a sign is regarded as “historical” exclusively because of a formal criterion (i.e. the 50 years-time requirement): is this acceptable from a reputation perspective? Moreover, the need for a link with the territory might be a dangerous one, working as a a contrario presumption and making it more difficult - rather than easier - to prove extended reputation of a mark across the EU.

To conclude, it is still hard to predict what the effects of Historical Trade Marks will be and to what extent enterprises will actually benefit from them. Indeed, the Alitalia case demonstrates that the same notion of “historical marks” is a tricky one as it might be used improperly by the press and (more importantly) by national trade mark offices and courts. Thus, in this context, a better regulation of this and other comparable technical tools at the EU level might have the beneficial effect of clarifying their scope and effects, while making it less burdensome for trade mark owners to prove reputation of their signs.