LA TUTELA NAZIONALE ED INTERNAZIONALE DEL MARCHIO PATRONIMICO NEL SETTORE MANIFATTURIERO

The purpose I wanted to achieve in my research project was to investigate the issue of national and international protection of the Trademark with particular focus on the patronymic brand in order to evaluate and analyze which are the main problems of counterfeiting and unfair competition in the manufacturing and fashion fields. My analysis began by analyzing the national and international regulatory sources in order to explain which are the procedures for trademark registration in Italy and abroad, having regard to the important institution of priority. Then I analyzed the coordination between Agreement and Madrid Protocol also in order to understand which are the main operations to be performed for the registration of the national, EU and international trademark. This in function of the investment economic evaluation to make on behalf of a company that owns a brand. I carried out an excursus about the trademark legally protected functions and the content of the trademark right also in light of the Court of Justice case law . In the second chapter I addressed the issue of the famous brand protection, before and after the introduction of Legislative Decree 480 of 1992, also in light of the Court of Justice case law. I then moved on to the analysis of the risks of confusion and association of identical or similar brand for identical or similar products or services and the main elements of the brand enjoying renown. Finally I became interested in the phenomenon of counterfeiting of brand’s shapes , letters, colors with a brief excursus on the case-law and on the unsolved problem of “made in Italy” brand protection. In the third and last chapter I focused my attention on the national and international protection of patronymic trademark in the manufacturing sector, to provide in the end an overview of the patronymic trademark protection in the United States and China. The most problematic issue that I faced was the one related to the question of the patronymic mark transferability that is a brand name evocative of a specific family tradition. There are brands in the manufacturing sector where the entire history of the company and the brand always revolve around the family owning the same brands and the various generations of its exponents, therefore these patronymic distinctive signs are extremely evocative of the value and message of a family tradition. Moreover, when this message is widely communicated to the public by both the company and the media, in a way that the message conveyed by the patronymic mark is clearly linked to the family nature and to the direct and personal contribution of the family in all the essential manufacturing activity phases (that is the creation, production, marketing and distribution of products with that brand ), the question really arises whether those registered and used brands can be freely assigned also to subjects outside the family, and in this case if that would not entail in itself deception in the products or services features essential for public appreciation being precisely linked to the persons whose name is the subject of the trademark, and in this case, if there are limits or charges for the assignees. It must be said that the transferability of the trademarks is regulated in general terms by the art. 23.1 of the Industrial Property Code (c.p.i.), according to which: " Trademark can be transferred for all or part of the products or services for which it was registered". The rule is dictated in general for all brands and there are no special provisions for patronymic brands. The only limit to the free assignment, though of fundamental importance in the new structure of the discipline, is established in the art. 23.4 c.p.i. requiring that "in any case" the transfer should not lead to deception "in those characteristics of the products or services that are essential in the appreciation of the public". If deception was generated by the sale, the sale contract would be void and the trademark susceptible to forfeiture due to deception occurring pursuant to art. 14.2 a) c.p.i. and could not be used anymore as misleading pursuant to art. 21.2-3. To give an answer to this question, it is necessary to know whether the characteristics mentioned in the art. 23.4 cpi, that is the deception for which the transfer becomes illegitimate , includes only intrinsic qualities of the product itself ("material" characteristics), or may also concern the public perception of the contribution offered by the person (or family) whose name is referred to by the trademark ("immaterial" characteristics). It is quite possible that the patronymic mark transfer , in which the public identifies a footprint of stylistic and productive tradition of personal and family nature, (being carried out for the benefit of a subject who no longer has direct ties), appears to be deceitful with this tradition. As a matter of fact people, even after the sale, could continue to link the idea to the brand that the tradition and work of the family group evoked by the sign, (especially if this message has always been communicated as a result of a lasting and strong bond directly involving family members in all phases of the activity, from the creation and development of the collections, to manufacturing, distribution, marketing etc). It is therefore necessary to know how much the stylistic paternity of a product can affect the motivations to purchase of the public. To avoid the risk of invalidity of the assignment and forfeiture due to unexpected deception of the patronymic trademark, or prohibition of use of the trademark becoming misleading, the doctrine proposes that the transferee should follow one of the following two alternatives: (i) to maintain unaltered in the products those characteristics (even intangible) for which the brand was known and appreciated when used by the original owner, and therefore not only to keep the quality of the products unchanged, but also to maintain a close and direct link, also professional, with the subject whose patronymic coincides with the brand, and with the family that had developed it over time; (ii) undertake to adequately inform the public of the change in these characteristics, and then communicate to consumers with appropriate campaigns that the brand will be used by a company that no longer has any relationship with the persons identified by the brand and with the family group that led the company of the same name before. If the assignee has no relationship (or subsequently interrupts relations) with the persons or family group whose activity has always been decisive in determining the material and immaterial characteristics of the products, he will therefore be able to pursue the second path and engage in an adequate marketing information campaign. In this information campaign, it must be clarified that: (i) the trademark has been transferred, (ii) all ties with the family and the persons who previously determined the characteristics of the products ceased. Once the public has been properly and adequately informed, the message evoked will be aligned with the new reality and the risk of deceit will therefore disappear. Therefore the sale to third parties of the patronymic brands in the manufacturing sector, could be considered valid only if, alternatively, the 'buyer: a) kept close ties with the family, assigning to it a decisive role in determining the style, production, marketing and marketing of the products; b) undertakes to carry out an information campaign of adequate proportions and duration to inform the public that, following the transfer, the patronymic mark no longer maintains any link with the members of the family, which no longer has any role in the creation, production, distribution and marketing of products. In the absence of both hypotheses, the assignment could be considered in violation of the law and therefore void , the patronymic marks evocative of a long family tradition could be declared forfeited due to unexpected deception and the use of the trademark could be forbidden for being deceptive.