Con una recente decisione del 19/06/2023, l’EUIPO ha rigettato la domanda di marchio figurativo reputandola descrittiva e priva di carattere distintivo per i servizi rivendicati “Formazione didattica; Formazione; Formazione aziendale; Formazione per insegnanti; Formazione e istruzione” in classe 41.

L’EUIPO ha esaminato l’insieme degli elementi denominativi e figurativi del segno in questione, ossia (a) gli elementi “Touch” e “Learning” inseriti in (b) una cornice rossa rettangolare ad angoli arrotondati, alla cui base è presente (c) la figura stilizzata di una mano che assomiglierebbe all’icona “click”. Secondo l’EUIPO, l’insieme di tali elementi sarebbe idoneo a descrivere le caratteristiche del metodo di apprendimento con tecnologia tattile, indicando la specie e la destinazione dei servizi di formazione rivendicati dalla domanda di marchio.

L’EUIPO ha così respinto la domanda di marchio in quanto, benché il segno contenga elementi figurativi e stilizzati, tali elementi sarebbero così trascurabili da non dotare di carattere distintivo il marchio nel suo insieme e non consentirebbero al marchio di adempiere alla sua funzione essenziale in relazione ai servizi per i quali si richiede la protezione.

Eglish version:

EUIPO decides on the limits of the distinctive character of the mark “Touch Learning”

In a recent decision of 19/06/2023, the EUIPO rejected the figurative trade mark application  as descriptive and devoid of distinctive character for the claimed services “Educational training; Training; Company training; Teacher training; Training and education” in class 41.

The EUIPO examined the combination of the word and figurative elements of the sign at issue, namely, (a) the elements ‘Touch’ and ‘Learning’ inserted in (b) a red rectangular frame with rounded corners, at the base of which there is (c) a stylised figure of a hand, which resembles the ‘click’ icon. According to the EUIPO, all those elements together are capable of describing the characteristics of the method of learning by touch technology, indicating the type and purpose of the training services claimed by the trademark application.

The EUIPO thus rejected the trademark application because, although the sign contains figurative and stylised elements, those elements are so negligible that they do not give the trademark as a whole distinctive character and do not enable the trademark to fulfil its essential function in relation to the services for which protection is sought.

1. Background

In February 2019, the German Federal Cartel Office issued a decision prohibiting the tech giant Meta from using “off-Facebook data”[1] to create personalized advertising for German users. The authority considered such activity to be inconsistent with the General Data Protection Regulation (“GDPR”), thus constituting an abuse of Meta’s dominant position on the German market. On appeal, the Higher Regional Court of Dusseldorf inquired the Court of Justice of the European Union (“CJEU”) on two issues:

(i) Whether national competition authorities have the competence to assess compliance with the GDPR, and

(ii) How should national courts interpret and apply certain GDPR provisions related to data processing by online platforms.

This Tuesday, the CJEU issued its landmark decision, which sent shockwaves through both the antitrust and the data protection fields.

2. CJEU’s decision

a. Competence by national antitrust authorities to assess compliance to the GDPR

The Court ruled that national competition authorities can examine whether a company’s conduct complies with rules other than those relating to competition law (such as the GDPR), as long as said examination is relevant to the determination of whether a competition rule has been violated. In doing so, however, the competition authority must inform and cooperate with the supervisory authority responsible for the field in question (e.g., the German data protection authority) and, most importantly, it cannot depart from precedent set forth by said authority. For instance, in the present case, if the German data protection authority had previously ruled that the processing of data equivalent to “off-Facebook data” does comply with the GDPR, the German Federal Cartel Office could not have indirectly “overruled” said decision.

b. Substantive questions concerning the GDPR

As for the interpretation of GDPR provisions concerning online social networks, the main rulings rendered by the Court were the following:

  • Is a controller allowed to process data such as “off-Facebook data” on the basis that it is “necessary for the performance of the contract with the data subject”[2] since, e.g., it allows Meta to provide its users with a more personalized content? The Court answered no, explaining that, in such cases, the relevant data must be indispensable to, and not merely useful for, the performance of the contract.
  • Is the data controller allowed to process data such as “off-Facebook data” on the basis of the controller’s legitimate interests[3] since, e.g., it allows Meta to provide users with personalized advertising? The Court answered no, highlighting that the users’ fundamental rights override the interests that the online platform has in personalizing the advertising by which it finances its activities. As a consequence, a valid consent from users would be needed.
  • When a company such as Meta holds a dominant position on the social network market, does this amount to the conclusion that its users’ consent was not “freely given” [4], due to the existing imbalance between platform and user? The Court answered no, stressing, however, that such dominant position is a factor to be considered in assessing the validity of the given consent, the burden of proof lying with the platform.
  • When third-party websites or apps collect “sensitive” data[5] from users who visit and/or enter their information into said websites or apps (e.g., by placing an online order), may that data be considered as “manifestly made public” by the data subject[6]? The Court answered no, emphasizing that such an authorization would occur only when the data subject has explicitly made the choice to make their data publicly accessible to an unlimited number of persons.

3. Final remarks

The CJEU’s decision not only draws important lines in the sand as to how online platforms can process data in Europe, but also confirms the trend of the ever-increasing interplay between two apparently separate sets of legislation: competition and data protection law. In an era where data is considered to be “the new oil”, it becomes increasingly vital that online operators face legal issues with an interdisciplinary and integrated approach, thus guaranteeing full compliance to the applicable laws and increasing legal certainty.

[1] Off-Facebook data are information collected from visits to third-party webpages and apps, as well as data concerning the use of other services belonging to the Meta group, such as Instagram and WhatsApp.

[2] Article 6(1)(b) of the GDPR.

[3] Article 6(1)(f) of the GDPR

[4] Under article 4(11) of the GDPR.

[5] “Personal data revealing racial or ethnic origin, political opinions, religious or philosophical beliefs, or trade union membership, (…) genetic data, biometric data for the purpose of uniquely identifying a natural person, data concerning health or data concerning a natural person’s sex life or sexual orientation”, as defined by article 9(1) of the GDPR.

[6] Thus falling into the exception of article 9(2)(e) of the GDPR.


At the meeting of June 26, 2023, the Administrative Committee of the Unified Patent Court has decided to set up the third seat of the Central Division in Milan.

Importantly, the timeline for the new seat to be operational has also been agreed, with the Milan seat expected to be up and running in one year, to allow for all formalities under the agreement to be complied with.

This is the press release issued by the Italian Ministry of Foreign Affairs  immediately after the meeting of the Administrative Committee:

The Administrative Committee of the Unified Patent Court today unanimously decided to proceed with the establishment of the Milan section of the Central Division of the UPC.

“It is a significant result for Italy”, said Deputy Prime Minister and Foreign Minister Tajani. “A result that confirms the central role of Italy, Milan and Lombardy in the promotion and protection of innovation and intellectual property in Europe and in the world”.

The decision of the Administrative Committee successfully completes the long and complex diplomatic work carried out jointly by the Italian Government through the Ministry of Foreign Affairs, in close collaboration with the Ministry of Justice, the Ministry of Enterprise and Made in Italy and in agreement with the Lombardy Region and the Municipality of Milan.

The Milan seat will judge patent disputes in crucial sectors for Europe and for Italy such as the pharmaceutical, phytosanitary, agri-food and fashion sectors.

The Government is already working to make the Milan seat fully operational within the time frame set by the Agreement (12 months pursuant to art.87.3).

Class A of the International Patent Classification, which will be under the competence of the Milan seat, named “human necessities”, covers technologies in numerous industrial fields, such as the pharmaceutical and medical device industries, the agricultural industry, the food industry, the tobacco industry, the home appliances industry, the clothing industry, the wood and furniture industry, the fire-fighting industry, the sports and gaming industry. A detailed list is available here.

With a first instance ruling issued on 20 April 2023 (available here), the Court of Florence has ordered Condé Nast (editor of GQ Italy) to pay EUR 50,000 plus interest as compensation for damages arising from the unauthorized use of the image of the David by Michelangelo.

The case, which was brought by the Italian Minister of Cultural Heritage on behalf of the Galleria dell’Accademia, i.e. the museum in Florence which holds the David on display, arose after a series of unfruitful negotiations between Condé Nast and the museum were followed by the unauthorized publication on the front cover of GQ Italy of an image of world-renowned Italian male model Pietro Boselli, juxtaposed to that of the David by Michelangelo. The graphic result, obtained by using a lenticular print in a manner that was specifically opposed by the museum, can be seen below:

The decision, which confirmed a previous PI order, is based on the Italian Cultural Heritage and Landscape Code (Legislative Decree no. 42 of 22 January 2004, hereinafter “Cultural Heritage Code”), which under Article 106 et seq. i.a. provides that territorial bodies and cultural institutions may request concession fees to allow the use and reproduction of cultural property they have on consignment and in any event assess whether such uses are compatible with the cultural purpose of such works of art (earlier this year, the Court of Venice had relied on the same provision to issue an injunction with cross-border effect against Ravensburger – we have commented the order here).

Interestingly, by applying the Cultural Heritage Code, the Court of Florence also recognized personality rights – more specifically, image rights – to the work of art by Michelangelo and to works of art in general, which Italian museums would be entitled to enforce for the cultural property they have on consignment.

Quoting the reasoning of the Court (emphasis added):

“As for the image rights of a physical person, which is provided for by Article 10 of the Civil Code, likewise it is possible to also envision image rights over a work of art. Such rights derive from specific legal provisions, i.e. from Articles 107 and 108 of the Cultural Heritage Code, which constitute a direct application of Article 9 of the Constitution […].

The Supreme Court has already acknowledged the possibility to recognize image rights for entities that lack a physical personality […], as well as for entities that lack legal personality, such as unregistered associations […]. In its case law, the Supreme Court has identified the owner of the right to use the good and the owner of the right to exploit it as the entities entitled to invoke protection of the image rights of the good itself […].

In the case at issue [the defendant] has violated the provisions of the Cultural Heritage Code, which, as said, protect the image rights of the work of art and, specifically, has infringed the prescriptions of Articles 107 and 108 thereof.

[…] From a teleological point of view, relevance must be also attributed to the exemption from the authorisation requirement provided under the peremptory conditions set out by Article 108 paragraph 3-bis. The peremptory nature of such exemption hypotheses confirms, on the contrary, the existence in general in the Italian legal system of image rights for works of art, which are guaranteed through the prohibition to reproduce the work of art without authorisation.

Clearly, upstream of the exemptions is an assessment – which the legislator has carried out in the abstract – of the compatibility of certain methods of using images with the ultimate aim of protection of the cultural heritage […].

The rationale of the provisions under review clearly outlines a protection regime, which also involves a non-material aspect pertaining to the reproduction of the cultural asset. These aspects constitute the right to the image of the cultural asset. From the teleological interpretation of the individual rules emerges what is then confirmed in their systematic interpretation and, that is, that the pursuit of the purposes identified by the legislation for the protection of cultural assets cannot disregard the protection of their image.”

In light of the above reasoning, the Court ordered Condé Nast to pay:

  • EUR 20,000 as compensation for material damages, i.e. an amount equal to the standard concession fee provided by the internal regulation of the Galleria dell’Accademia museum for use of particularly important works of art such as the David;
  • EUR 30,000 as compensation for non-material damages deriving from the juxtaposition, by means of the lenticular print, of the image of the David with that of the Italian model Pietro Boselli, thus “degrading, obfuscating, mortifying, humiliating the high symbolic and identitary value of the work of art and subordinating it to advertising and editorial promotion purposes”;

It remains to be seen whether the above reasoning by the Court of Florence will be used to further expand the scope of protection warranted to works of art by the Cultural Heritage Code, e.g. to extend it to situations which do not entail a reproduction of the work of art, but may nonetheless be detrimental to the reputation and dignity of the work of art.

In a recent decision dated March 29, 2023, the EUIPO General Court provided relevant guidance on the interpretation of the distinctive character requirement in figurative trademarks representing three-dimensional (3-D) shapes.

Facts of the proceedings

In December 2020, a European Union trademark application was filed for the following figurative sign

seeking protection for confectionery and candy products belonging to Class 30 of the Nice Classification.

The EUIPO Examiner, in a decision dated July 2021, rejected the trademark application considering the sign to be lacking of distinctive character in accordance with Article 7(1)(b) of EU Regulation 2017/1001, as subsequently also confirmed by the EUIPO Board of Appeal.

Following the appeal before the EUIPO General Court, the latter ultimately ruled in accordance with the Board of Appeal, holding that the criteria developed for three-dimensional marks, corresponding to the appearance of the product or its packaging, are also applicable to figurative trademarks consisting of a two-dimensional-even merely schematic-representation of the product or its packaging.

The arguments underlying the EUIPO General Court’s decision

As a preliminary remark, it is well known that the shape of a product or its packaging can be registered as a three-dimensional EU trademark, provided that such a shape is suitable to distinguish the product realized by a company from those of other businesses. The distinctive character of a trademark must be assessed with regard to both the products and services covered by the application for registration and the impression of the relevant public, i.e. the consumers of such products and services.

Taking the above into account, in the proceedings under consideration, the General Court stated that the figurative sign, despite its two-dimensional nature, would be perceived, at least by a significant part of the relevant public, as the image of the outline of a cylindrical container with wavy lines, with three horizontal rows in the upper part. In addition, since the products covered by the trademark application are cheap and frequently purchased as they are confectionery and candy products, the attention level of the consumers at the moment of purchase would be medium at best.

As argued by the General Court, whether the fact that the sign is not prospectively represented in the EU trademark application, or whether it can also be perceived as a flat figure, or whether it does not display any wording, description, or other element that makes clear that the sign is a representation of a container, do not exclude the possibility that a significant portion of the relevant public may perceive said sign as a representation of a three-dimensional container capable of containing the goods for which protection was filed. It follows that the criteria developed for three-dimensional trademarks, consisting of the appearance of the product or its packaging, are applicable to figurative trademarks consisting of a two-dimensional representation of the product or its packaging as well. And the above applies whether the two-dimensional mark consists of a photograph, or a faithful perspective graphic reproduction of the product, or of its packaging, but also in the case of their very simple and merely schematic representation, without any perspective illustration.

The EUIPO General Court’s conclusion

In light of the above, the General Court concluded that the shape represented by the sign under consideration represents a mere variation from the cylindrical wrappings and packaging normally used in the market for the products at issue, thus lacking in distinctive character and, therefore, not capable of sticking in the consumer’s mind as an indicator of the products’ business origin.

Just a couple of days ago, the announcement by the Court that no agreement could be reached among Member States and therefore the competencies of the London seat of the Central Division would be split between Paris and Munich opened a debate on the possibilities for Milan to host the Central Division.

The Italian Government has however now announced – in no uncertain terms – that an agreement was reached with France and Germany and that Milan will indeed host the third seat of the Central Division. The decision will be formalized during the next meeting of the Administrative Committee.

From the press release of the Minister of Foreign Affairs: “The Italian government has agreed with France and Germany to establish in Milan the third seat of the Central Division of the Unified Patent Court. The arrangement will be submitted to the other UPC contracting states at the next Administrative Committee meeting. […] In these weeks the Italian government, in cooperation with the local government entities, is completing the legal and operational procedures so that the seat can be established and be operational within a year.”

Notably, the press release does not address the hot issue of which competencies will be assigned to the Milan seat of the Central Division (whether all those originally assigned to London by the UPC Agreement, or a subset thereof), simply stating that this will have jurisdiction over “important cases” in matters relevant for the Italian industry.

https://commons.wikimedia.org/wiki/File:Grana_Padano_DOP_Riserva.jpg

‘Grana’ è una parola descrittiva e, pertanto, non tutelabile se non accompagnata dall’aggettivo ‘Padano’. Questa è la decisione del Tribunale di Torino, che, con sentenza del 17 febbraio 2023, ha ritenuto la parola ‘Grana’ un termine descrittivo, la cui tutela è data soltanto dall’associazione con l’aggettivo ‘Padano’, ribaltando in questo modo la giurisprudenza di merito sino ad ora formatasi sul punto.

‘Grana Padano’: il riconoscimento della DOP e la tutela normativa

La denominazione di origine protetta ‘Grana Padano’ trova la sua prima tutela a livello nazionale con il D.P.R. n. 1296/1955, emanato in attuazione della L. n. 125/1954, con cui è stata introdotta in Italia la disciplina delle denominazioni nazionali di origine.

La suddetta tutela è stata, poi, estesa a livello europeo con il Reg. UE n. 1107/1996, con cui la denominazione ‘Grana Padano’ è stata riconosciuta quale denominazione di origine protetta comunitaria, con conseguente applicabilità in via esclusiva del Reg. UE n. 1151/2012, sui regimi di qualità dei prodotti agricoli e alimentari, con cui sono state, fra l’altro, istituite le DOP e le IGP.

Da quel momento, dunque, la DOP ‘Grana Padano’ gode di una tutela rafforzata in tutto il territorio comunitario che, ai sensi dell’art. 13 del Reg. UE n. 1151/2012, si realizza in caso di qualsiasi impiego commerciale diretto o indiretto di una denominazione registrata per designare prodotti che non sono oggetto di registrazione ovvero mediante usurpazione, imitazione o evocazione della medesima denominazione di origine. La salvaguardia della DOP ‘Grana Padano’ è stata affidata alla competenza del relativo Consorzio, in forza del decreto del Ministero delle Politiche Agricole, Alimentari e Forestali.

La vicenda

Il procedimento nasce dall’azione promossa dal Consorzio di tutela dinanzi al Tribunale di Torino nei confronti del Caseificio Fiandino, produttore del formaggio ‘Gran Riserva Italia’, al quale è stata contestata l’evocazione della DOP ‘Grana Padano’ in genere e, in particolare, della categoria ‘Riserva’ ex art. 13 del Reg. UE citato.

La vicenda trae origine dall’attività di sorveglianza svolta dagli agenti di vigilanza del Consorzio del Grana Padano, i quali, in data 27 maggio 2019, hanno rinvenuto nel punto vendita Eurospar di Milazzo (ME), un campione di formaggio a pasta dura da grattugia di Caseificio Fiandino, che, sullo scalzo, aveva impresso a fuoco un logo recante la dicitura ‘Gran Riserva Italia’.

La forma tondeggiante del logo, le caratteristiche dalla stampigliatura a fuoco del prodotto – non coperto dalla DOP ‘Grana Padano’ – nonché la similarità fonetica dei termini ‘Gran’ e ‘Riserva’ rispetto a ‘Grana Padano’ configurano, secondo il Consorzio attore, una evocazione e/o un illegittimo uso diretto o indiretto della DOP ‘Grana Padano Riserva’ ai sensi dell’art. 13 del Reg. UE citato.

Per tali ragioni, il Consorzio del Grana Padano ha adito il Tribunale di Torino, chiamato a decidere sull’evocatività dell’uso dei termini ‘Gran’ e ‘Riserva’ rispetto alla DOP ‘Grana Padano Riserva’.  

La decisione del Tribunale di Torino: il termine ‘Grana’ ha valore solo se associato a ‘Padano’

Il Tribunale torinese ha rigettato le richieste del Consorzio, escludendo qualsiasi somiglianza visiva, concettuale e fonetica tra i prodotti rispettivamente contraddistinti come ‘Gran Riserva Italia’ e ‘Grana Padano Riserva’.

In particolare, i giudici torinesi hanno rilevato che la parola ‘Gran’ utilizzata dal caseificio convenuto non è evocativa della parola ‘Grana’ “sia perché essa è un mero aggettivo riferito al sostantivo generico ‘Riserva’, sia perché essa stessa, essendo un vocabolo generico della lingua italiana, deve ritenersi liberamente utilizzabile”. Secondo il Tribunale, quindi, i vocaboli ‘Gran’ e ‘Riserva’ costituiscono rispettivamente un termine generico e di uso comune e, pertanto, sono liberamente utilizzabili per indicare prodotti caseari a pasta dura, senza che ciò costituisca una violazione della DOP ‘Grana Padano’ ex art. 13 Reg. UE citato.

Tuttavia, per quanto il suddetto principio enunciato dai giudici torinesi sia condivisibile, meno sembra esserlo quello espresso dai medesimi giudici con riferimento alla tutelabilità del termine ‘Grana’ quale componente della denominazione di origine. A tale riguardo, infatti, il Tribunale ha ritenuto non tutelabile la parola ‘Grana’ se non accompagnata dall’aggettivo ‘Padano’, “poiché è proprio nell’origine geografica che si sostanzia l’essenza e la ratio della tutela azionata”.

Per tali ragioni, secondo i giudici torinesi, la mancanza di un riferimento alla zona di origine del formaggio di parte attrice (i.e. pianura padana) sul prodotto di parte convenuta esclude la ricorrenza di un’ipotesi di evocazione della DOP ‘Grana Padano’.

In definitiva, dunque, la Sezione Specializzata del Tribunale di Torino non ha ritenuto sussistente la violazione per illecita evocazione della DOP ‘Grana Padano’ ex art. 13 Reg. UE citato, ponendosi in controtendenza rispetto all’orientamento giurisprudenziale sino ad ora formatosi in punto di genericità del termine facente parte di una denominazione di origine.

La questione esaminata dal Tribunale torinese, infatti, non è sconosciuta alla giurisprudenza di merito che, pochi mesi prima, si è già pronunciata sul punto.

Una simile questione era stata già decisa dal Tribunale di Venezia, con sentenza del 25 maggio 2022, nella causa instaurata dal Consorzio di tutela del Grana Padano nei confronti di Brazzale S.p.a., società produttrice del formaggio ‘Gran Moravia’. In tale occasione, i giudici veneziani hanno escluso la genericità del termine ‘Grana’, sostenendo che ogni tentativo di chiamare ‘Grana’ un formaggio similare costituisce un’illecita evocazione della DOP ‘Grana Padano’. In particolare, il Tribunale ha rilevato che “il termine ‘Grana’ riferito al formaggio indichi un prodotto caseario, certamente con peculiari caratteristiche produttive e di consistenza della pasta che possono essere comuni ad una più ampia gamma di formaggi, ma che precisamente riconduce ad uno specifico luogo o regione di origine, individuato nel nord Italia e, in particolare, nella pianura padana”.

Alla luce della richiamata pronuncia veneziana, pertanto, l’esito della sentenza torinese appare ancor più rilevante, rendendo a questo punto attesa, o quanto meno necessaria, la decisione dei giudici di secondo grado.

On 22 March 2023 the European Commission published a proposal for a Directive on Green Claims affecting commercial communications that associate products/services with environmental or ecological benefits.

The proposal complements and specifies an earlier proposal for a Directive on empowering consumers for the green transition[1], and is thus part of a framework of strategic initiatives and action policies adopted by the European Union (EU) in support of the circular economy, and aims to decrease the impact of climate change in order to achieve climate neutrality.

The strategy pursued by the EU cannot disregard the active participation of consumers in the ecological transition, which requires their adequate protection against unfair commercial practices that prevent them from making informed and sustainable choices. Such practices include greenwashing, in which companies make false environmental declarations in the context of their communication strategies, aimed at building a deceptively positive image of the company as to its environmental impact, with the clear objective of capturing the attention and interest of consumers.

In 2020, the Commission carried out a study of more than 150 environmental claims for a wide range of products and found that more than 53% of them were too “vague, misleading or unfounded”, and that 40% were not supported by adequate technical and scientific evidence. These data show that companies/traders have an increasing interest in providing misleading environmental information on their products/services, to the detriment of consumers wishing to make more sustainable and responsible purchasing choices, and of virtuous companies suffering from unfair competition.

From the need to contrast this increasingly widespread phenomenon comes the provision of specific rules on the subject, aimed at setting minimum requirements for the verification of environmental claims adopted by traders and thus improving the reliability of the information conveyed to consumers, facilitating their choice of products and/or services that offer better environmental performance.

First, the proposal aims to regulate the voluntary environmental claims[2] of the companies concerning the environmental impact and performance of their products/services, providing that they be clear and adequately substantiated. Inter alia, voluntary declarations will have to specify whether they relate to the company’s entire production or only to a particular product, one of its components, or one of its life cycle stages, in order to “make it possible to identify the environmental impacts and environmental aspects for the product or trader that jointly contribute significantly to the overall environmental performance of the product or trader”. Furthermore, voluntary claims will have to be validated by widely recognised scientific evidence, and evaluated by independent, accredited, verifying organisations, which will decide whether to issue a certificate of conformity valid throughout the EU.

Should the proposal become law, it would no longer be possible to use vague and ambiguous claims such as “climate neutral”, “carbon neutral” or “100% CO2 compensated”, if they do not meet all the requirements of the Directive. Indeed, traders will be required to avoid claims expressed in broad or absolute terms, instead having to circumscribe to the precise environmental benefit claimed, which, of course, will have to be properly verified and supported by technical evidence.

The proposed Directive also regulates so-called environmental labels and their schemes, such as the EU Ecolabel and its national equivalents, awarded to products and/or services that are produced and marketed with a reduced environmental impact. The EU has noted that more than 200 environmental labels are currently in use and their further proliferation could lead to consumer confusion, as well as to a loss of value of existing labels. To address this, the Commission has advanced the possibility of preventing new public labelling schemes from being proposed unless they are developed exclusively within the EU. As a result, any new private scheme will have to prove that it pursues more ambitious environmental objectives than existing ones, while obtaining prior approval in order to be officially authorised.

Naturally, the proposal also regulates the enforcement of the provisions contained therein, whose compliance is to be ensured by the Member States by means of appropriate control systems and by the provision of penalties, with varying amounts depending on the nature and seriousness of the violations ascertained.

The proposal will soon be assessed by the European Parliament and the Council for their joint approval and, in the event of a positive outcome, the Member States will have to incorporate the Directive into their respective legal systems to ensure its uniform application within the EU territory.

Currently in Italy there are no specific legislations on environmental claims, so they are regulated by the general provisions of the Consumer Code on unfair commercial practices, those of the Civil Code on unfair competition, as well as the regulations on misleading advertising. The framework is completed by the European Directive 2005/29/EC and the Guidance on the implementation/application of directive 2005/29/EC on Unfair Commercial Practices issued by the European Commission on 25 May 2016, which contains useful guidelines on green claims, for example that they be formulated “in a clear, specific, accurate and unambiguous manner”.

Additionally, a provision specifically dedicated to commercial communications of an environmental nature is contained in Article 12 of the Italian Code of Self-Discipline for Commercial Communications, according to which “marketing communication that claims or evokes benefits of an environmental or ecological nature must be based on truthful, relevant and scientifically verifiable data”.

The above-mentioned provision was referred to by the Court of Gorizia in the first (and only) Italian court ruling on greenwashing[3]. In this landmark decision, the judge acknowledged that generic expressions such as “environmentally friendly”, “natural choice”, “100% recyclable” constitute to all intents and purposes misleading advertising when they are not clear, verifiable or supported by solid scientific evidence.

In the context of fragmented national regulations, the Green Claims Directive could therefore be an effective tool to limit greenwashing and related unfair commercial practices that are growing exponentially in parallel with the environmental awareness of the consumers.

[1] European Commission proposal of 30 March 2022 amending Directives 2005/29/EC on unfair commercial practices and 2011/83/EU on consumer rights.

[2] On the other hand, the proposed Directive does not cover voluntary declarations that are already regulated by other EU rules, such as the EU Ecolabel, as the relevant existing legislation already guarantees their reliability.

[3] Court of Gorizia, order of 25 November 2021 (Alcantara S.p.A vs. Miko S.r.l.). The order was then appealed by Miko S.r.l. and overturned by the Court of Gorizia in March 2022, on the basis that Alcantara had been unable to provide any evidence that Miko’s environmental claims had resulted in a risk of loss of customers for Alcantara.

Most countries in the world have pledged to achieve “net zero” gas emissions by 2050, and many have taken a number of steps to accelerate the transition to clean energy and reduce emissions.

While the success of these efforts will depend on a variety of factors including policy, technology and infrastructure development, a recently published report by the European Patent Office (EPO) and the International Energy Agency (IEA) suggests that the number of patent applications concerning hydrogen related technologies can serve as a good indicator of which countries and sectors are best positioned to attract investments and develop solutions needed to transform from fossil fuel based production to low emission methods.

The report, which represents the most exhaustive and global up-to-date investigation of hydrogen-relating patenting so far,  analyzed global patent data and covered a broad range of technologies from supply chain to end-use applications. The study found that the EU and Japan lead global hydrogen related technologies patenting, accounting for 28% and 24% respectively.

The leading country in Europe is Germany with 11% of the total, followed by France 6% and the Netherlands 3%. While the US holds third place with 20% of all hydrogen related patents, it is interesting to note that the number of applications has been declining over the past decade. Other countries generating significant volume of hydrogen patents include United Kingdom, Switzerland and Canada.

The breakdown of the numbers of patent innovations across the supply chain shows that among all hydrogen patents filed between 2011 and 2020, the hydrogen production technology accounted for the largest number of applications, specifically technologies for low emissions methods such as fuel cells, producing hydrogen from gas and electrolysis, a sector in which Europe has gained an edge in new manufacturing capacity.

In terms of industries that file most hydrogen patent application, the automotive and the chemical industries have gained the strongest momentum regarding innovation and patenting. Furthermore, Universities and Public Research Institutes generated 13% of all hydrogen related international patents between 2011 and 2020.

However, other industries such as long-term transport, aviation, power generation and heating are slower to look for innovative ways to use hydrogen and reduce CO2 emissions, which raises concerns about some countries meeting their net zero pledges by 2050.

Updates about current status of discussions regarding the third seat of the central division of the UPC recently surfaced on the Italian press and in parliamentary activities.

Recent reports confirm that France and Germany would have agreed to move the seat from London to Milan, on condition of withholding some competences in Munich (apparently, chemistry and metallurgy) and others in Paris (apparently, pharmaceutical patents with SPCs), which would require an amendment to Annex II of the UPCA, removing the relevant IPC classes from the ones originally assigned to the London seat.

Multiple ministries of the Italian government involved in UPC negotiations, including Minister of Justice Carlo Nordio who most recently reached out to his French and German counterparts, are said to be strongly against this solution, insisting that a better compromise be found (cf. the 24 February article published by “Il Sole 24 Ore”, available here).

Rumors of such developments seem to have also reached the Italian Parliament, with a number of MPs raising concerns on the transfer of the third seat of the Central Division from London to Milan and the set of competences to be assigned thereto, asking the competent ministries to provide an update on the initiatives to be deployed to ensure that all IPC classes originally assigned to London be transferred to Milan (see question 5-00352 of 13 February, available here).

The reports so far surfaced note that whilst the transfer of the London seat of the central division to Milan may be seen as falling under Article 87(2) UPCA (i.e. an amendment to the UPCA which can be independently decided by the Administrative Committee to bring the UPCA in line with Union law, assuming one qualifies the legal consequences of Brexit as changes to Union law in application i.a. of Article 50 TEU), it is more questionable whether the same considerations would apply to amendments to the allocation of competences of Annex II to the UPCA. In other words, it is argued, whilst Brexit requires an amendment to the provision of the UPCA identifying the location of the third seat of the central division, it is more questionable whether it also requires a change of the allocation of competences decided by the drafters of the UPCA in Annex II.