Newsalert - EUIPO comments on the Sky v. SkyKick case / Italy publishes the decree regulating the registration in the special register of historic trademarks and identifying the relevant logo

Latest news on trademarks matters by IP, TMT and Data Protection Department:

1. Observations of the European Union Intellectual Property Office on the Sky v SkyKick case (C-371/18) 

On 29 January2020, the Court of Justice of the European Union ("CJEU") delivered its decision on a trademark lawsuit in the Sky v. SkyKick case (C-371/18), following a preliminary referral by the English High Court of Justice.

In the Sky v. SkyKick case, the CJEU ruled, inter alia, on the possibility of declaring a sign invalid, in whole or in part, (i) on the grounds of insufficient clarity and precision of the specifications of the goods and services for which the trademark was applied for, and (ii) on the grounds of bad faith, based on the sole circumstance that the trademark owner filed the application without any intent to use the trademark for the specified goods and services (or part of them).

In relation to these issues, the European Union Intellectual Property Office ("EUIPO") endorsed the indications of the CJEU as well as its practical implications as regards the regulation of EU trademarks registration.

2. Publication of the Ministerial Decree that regulates registration in the “special register of historic trademarks of national interest” and identifies the relevant logo in the Official Gazette

On 24 February 2020, the Ministerial Decree of the Ministry of Economic Development dated 10 January 2020 ("MD") was published in the Italian Official Gazette. The MD sets forth "Regulation of the registration in the special register of historic trademarks of national interest and identification of the «Historic trademark of national interest» logo”, and implements the provisions set forth under Art. 31, paragraph 1, letters a) and b) of Legislative Decree No. 34 of 30 April 2019, converted with amendments by Law No. 58 of 28 June 2019.

The latter Law introduced in the Italian legal system the possibility, for the owners or the exclusive licensees of trademarks used for at least fifty years in the marketing of products or services by a national manufacturing company “of excellence” which has been historically linked to the Italian national territory, to apply for registration in the special register as well as to use the “historic trademark of national interest” logo (here is the link to our comment on the matter).

As regards the rules governing registration in the special register of trademarks of national interest pursuant to Art. 185-bis of the Italian Industrial Property Code (the "Register"), the MD provides that the same shall be requested by filing an application containing important information.

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