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Amendments to Trademark Laws

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Jun 30, 2015 (Newsletter Issue 10/15)
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IR Designating Italy Do Not Automatically Cover San Marino

On 23rd December 2014, the Patent Office of San Marino issued a recent interpretation of Article 43 of the Convention of Friendship and Good Neighbourhood entered into by Italy and the Republic of San Marino. Article 43 of the Convention defines that: "Each of the two States is obliged to prevent, within its territory, any usurpation of inventions, models and designs that are subject, in the other State, to industrial property rights, and any usurpation or infringement of trademarks or brand names duly registered and protected in the other State".

Based on this new interpretation, which was provided by the San Marino patent office following ratification of the exchange of notes between Italy and San Marino, as from 23rd December 2014 mutual recognition will only apply to trademarks, patents, designs and models registered or granted based on national applications, namely applications filed with the Italian Patent and Trademark Office or with the San Marino Patent and Trademark Office.

Consequently, it will no longer be possible for the holder of an international trademark or a European patent to enjoy protection also in San Marino simply by extending the scope of protection to Italy. Therefore, holders of European patents and international trademarks who wish to protect their inventions in the Republic of San Marino will be obliged to pay the national fees to the San Marino Patent Office.

Source: Rapisardi Intellectual Property, Italy