Collective and certification marks are nearing conversion, following the entry into force of Legislative Decree no. 15/2019. Let’s look at what is changing.
Collective and certification marks: what’s new
Until the early months of 2019, the task of certifying the quality, origin, and nature of a product, with a view to enhancing the value of Consortia and Associations and protecting consumers, was entrusted – along with PDOs and PGIs – to collective marks. In many cases, the collective mark made it possible to effectively defend agrifood Made in Italy in the fight against the serious and growing phenomenon of "Italian Sounding" or wine kits.
Following the entry into force of D.lgs. n. 15/2019 (Legislative Decree no. 15/2019), in compliance with what was already regulated at the European level, the figure of certification marks was introduced alongside collective marks.
This necessitated a "transition" period to allow holders of applications/registrations filed under the old text of Art. 11 (therefore as "collective marks") to define whether the filed sign was a collective mark proper or a certification mark.
The institution of the certification mark was not unknown within our legal system, but it had been placed by the legislator within the discipline of the collective mark, which was defined very broadly so as to encompass both the typical function of the latter and the function of guarantee or certification.
With the European Delegation Law 2016–2017 no. 163/2017, implementing EU Directive 2015/2436, the Italian legislator delegated the government to adopt suitable measures to update the discipline regarding collective marks and to provide for the alignment of national legislation with EU legislation on guarantee or certification marks.
Eligibility for registration
All legal persons governed by public law and trade associations of manufacturers, producers, service providers, or traders (e.g., consortia, participating foundations, business networks, etc.) may register collective marks, with the exclusion of joint-stock companies and natural persons.
On the other hand, eligibility for the registration of certification marks is broader; they can be filed/registered by anyone (natural persons, legal entities, institutions, authorities, and bodies) who includes certification among their activities (and who have therefore been accredited for this purpose by a specific accreditation body) and who are not involved – even indirectly – in the supply of products/services of the certified type (the so-called duty of neutrality).
The reference is to the mechanism of EC Directive 765/2008 regarding certification. In Italy, this body is Accredia, which certifies that public or private bodies are fit to assess the conformity of products or services to the requirements established by mandatory or voluntary standards.
Function and use by third parties
Collective marks have the function of distinguishing products or services of several enterprises belonging to an association/group of enterprises-entrepreneurs, while simultaneously performing the function of guaranteeing that the products/services comply with the requirements set out in a regulation. These are typically the marks of consortia, such as "Pura Lana Vergine" (Pure Virgin Wool), "Vero Cuoio Italiano" (Real Italian Leather), "Bancomat", "Grana Padano", "Made In Italy 100%", "Vetro Artistico Murano".
Certification marks, instead, have the function of certifying certain characteristics of products and services (e.g., quality). These are typically the marks of certification companies, for example, "Leather Standard", "Tüv Süd", "L Free", "Ecolabel".
Both must be granted for free use to anyone who requests it and demonstrates compliance with the specifications provided for in the regulations.
The regulations of use
Collective marks and certification marks must be filed simultaneously with a Regulation or Specification of use containing precise provisions regarding the requirements of the product or service on which the mark can be used, the conditions of use of the mark, the methods of verification and supervision, and the sanctions in case of non-compliance applied by the holder.
In the case of a certification mark, the specifications must also contain the holder's declaration of non-involvement in the supply of the certified products/services.
Geographical collective / certification marks
Collective and certification marks may contain within them an explicit reference to the geographical origin and the location of the production process.
In this regard, we speak of "geographical" collective and certification marks, which constitute the only explicit derogation from the general principle according to which trademarks cannot consist of signs made up of generic indications and, in particular, descriptive indications or signs that serve in trade to designate the quality or geographical origin of products.
Conversion: deadlines for submitting the application
The final deadline for filing conversion applications will expire definitively on March 23, 2020, under penalty of forfeiture of the application/registration.