A key provision is found in Article 22 of the law, which concerns the registration of trademarks by places of culture
Places of culture are allowed to monetise their renown
The law also gives specific powers to the Ministry of Enterprise to prevent the reputational value of brands that are nolonger used from being lost
Law No 206 of 27 December 2023, entitled “Organic provisions for the valorisation, promotion and protection of ‘Made in Italy’”,which came into force on 11 January 2024, includes some rules on trademarks that deserve to be known as they may have animpact not only in Italy, but also globally.
Trademarks in the cultural field
Among these rules, the most important is the programmatic provision of Article 22 of the law, entitled “Registration oftrademarks for places of culture”: it authorises “the institutes and places of culture” to register “the trademark that characterisesthem” and to “grant the use of their trademark to third parties for a fee”, with the double purpose of “increasing the knowledgeof their cultural heritage and their own self-financing capacity” – as is in fact already provided for “the administrations of theState, regions, provinces and municipalities” by Article 19 of the Industrial Property Code, which refers to “the exploitation ofthe trademark for commercial purposes, including that carried out through licensing and merchandising activities”.
These provisions allow territorial public bodies, cultural entities, and PDO and PGI protection consortiums to make the best useof the symbolic elements of cultural heritage related to their territory or institution as a tool to enhance the positive externalitiesrelated to the renown they enjoy, not only by prohibiting all forms of free-riding and parasitic exploitation, but also – positively -by allowing them to “monetise” this renown. Such monetisation may occur, in particular, by granting these signs for use bybusinesses (particularly those operating in the territory and engaged in sustainable development projects), imposing preciselimits to prevent the signs from becoming a source of deception, and thus also acting as a driving force for the growth of
Cesare Galli
IP Law Galli
29 January 2024
economic initiatives linked to the local area – at the same time promoting the reputation of cultural institutions and carrying outmarketing operations on a global scale, in the perspective of a mutual strengthening of the country’s image and of corporateimage by combining cultural and productive excellence.
The distinctive signs of cultural institutions, territorial trademarks and PDOs/PGIs (and the corresponding collective or qualitytrademarks intended to protect them in countries that do not allow their protection as such) are suitable for use in:
1.
targeted licensing operations, not only for merchandising products (such as gadgets or luxury products that can representthem, as well as tokens that “virtually” represent them, including non-fungible tokens, even of an artistic nature), but also forproducts or services that are not strictly “commercial” (eg, machine tools or industrial products in general) or, in the case ofPDOs/PGIs for products that do not correspond to the typical ones covered by the PDO/PGI, but which nevertheless have a linkwith the territory in which the entity operates, particularly (and preferably) in that they are made at least in part in the territoryitself, or linked to a craftmanship that the entity encourages, and more generally for which the use of the entity’s signs, perhapstogether with the trademark, may constitute added value, especially in international markets;
2.
co-branding operations with third parties aimed at the mutual promotion of the distinctive signs of interest, including abroad,exploiting the evocative value of the country and its cultural and productive excellence, especially if combined;
3.
the creation of synergies with tourist, hotel and restaurant operators located in the places of interest which seek to lawfullyexploit the signs covered by the project; and
4.
the creation of promotional and/or cultural events abroad, with a view to mutual promotion, of the territorial signs and those ofthe licensees or co-branders.
One may imagine synergies between entities and/or consortia and companies, which translate into business paths in a globalperspective, foreign markets and especially the new markets opened by globalisation, being those on which the appeal oftraditional products has the greatest power of attraction. Economic studies have highlighted that the relationship between thesuccess of a country’s companies and products and that country’s reputation is not unilateral, showing how even the corporateimage of a country’s companies can influence that country’s image.
As a recent study also confirmed, if it is true that, for a country such as Italy (as for many others), the economic value producedby culture is increasingly relevant, it is also true that the culture system, in order to be productive at the economic level andpositively influence the country’s image, needs to be accompanied by support services and enhanced with strategic choices.
Intellectual property can thus make it possible not only to devise marketing strategies that make the most of the ‘country oforigin effect’, but also to carry out projects that strengthen the country’s image, involving the companies of excellence operatingin the aforementioned sectors, as well as in more innovative ones such as biomedical, mechanical, mechatronic and artificialintelligence.
New powers of the Ministry of Enterprise
Law No 206 also gives specific powers to the Ministry of Enterprise and Made in Italy to prevent the reputational value ofbrands that are no longer used from being lost. To this end, Article 7 of the new law stipulates that holders and licensees ofItalian trademarks that have been registered for at least 50 years, or for which it is possible to prove continuous use for at least50 years, who intend to permanently cease their activities, must inform the ministry. The latter may then take over ownership ofa trademark free of charge if it has not been the subject of a transfer for consideration – that is, when the owner becomes extinctwithout having disposed of the trademark in winding up. Under the same provision, the ministry may also file in its own name”trademarks that have been unused for at least five years” and thus can be considered to have lapsed due to non-use. In bothcases, the ministry will be able to assign or license these trademarks to “companies, including foreign companies, that intend toinvest in Italy or transfer production activities located abroad to Italy” in order to use said trademarks in line with their symbolicvalue and avoid any deception among the public.
Cesare Galli
Author | Founding partner and managing partner
[email protected]
IP Law Galli
Published in WTR, 29 January 2024
