Historical trade marks in Italy: new process of transferring them to MIMIT and licensing them to third companies is operational

A procedure introduced by  the Made in Italy Law, which allows the Ministry of Enterprise and Made in Italy (MIMIT) to take over the ownership of historical trade marks of national interest, preventing their extinction, and then license them to Italian or foreign companies with interests in Italy, is now operational.

The MIMIT decree of 28 October 2024, regulating the procedures for the protection of trade marks of particular national interest and value, was published in the Official Gazette no. 260 on 6 November 2024.

Protecting historic brands

The MIMIT decree of 3 July 2024, implementing Article 7 of Law no. 206/2023 (the so-called Made in Italy Law), had introduced the possibility for the ministry to take over the ownership of historical trade marks by preventing their extinction and then licensing them to Italian or foreign companies with interests in Italy. 

Notification of cessation of activity

Undertakings that have been owners or licensees of registered trade marks for at least 50 years, or that can prove continuous use of the trade mark for the same period, may notify the Directorate General for Industrial Policy, Industrial Conversion and Crisis and Innovation (DGIND), of their intention to definitively cease the production activity associated with the trade mark (so-called discontinuance plan) at least six months before the actual cessation.

The plan must contain, in particular, an indication of the effects resulting from the discontinuation, the economic, financial or technical reasons for it, as well as the timing for the closure and the strategies inherent in the trade mark in question, specifying that the trade mark is not or will not be the subject of disposal for consideration prior to the cessation of activities.

Within three months of receipt of the plan, the DGIND will communicate to the company the results of its preliminary activity aimed at verifying the existence of the requirements of the trade mark in relation to its particular interest and national value.

If the DGIND expresses an interest in taking over ownership of the trade mark, the owner company must, within the following two months, transfer the trade mark to the MIMIT free of charge.

Presentation of application to use the trade mark

Domestic or foreign companies interested in using one or more of the historical brands transferred to the MIMIT, and therefore intending to invest in Italy or transfer production activities located abroad to Italy, may submit a special request to the Mission Unit for the Attraction and Unlocking of Investments (UMASI), a body set up in 2023 at the ministry to facilitate procedures for investments in Italy.

The selected company will then be able to use the trade mark under a free licence agreement for a period of no less than ten years, with the possibility of renewal. If the company ceases operations or relocates its production facilities outside Italy, the licence is automatically terminated.

Osborne Clarke comment

The decree of 28 October has thus brought into operation the regulations introduced by Law no. 206/2023, which not only aim to protect Italian tradition and excellence, but also provide incentives for productive investments in the country.