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San Marino - New Industrial Property Law

As reported in our December 1997 Information Letter (N.S. 189), The Republic of San Marino, an independent state for over 1600 years located in central Italy, enacted its first industrial property law, the Trademarks and Patents Framework Act, on June 24, 1997. We have been informed that, effective July 1, 1999, the Patent and Trademark Office is accepting applications for the registration of patents, industrial designs, trademarks and service marks. The principal features of the new Act are summarized below.

Patents

1) Patents are available for inventions that are new, involve an inventive step and are susceptible of immediate industrial application. That is to say they "provide a practical solution to a specific technological problem". Patents will not be granted for methods of treatment of the human or animal body by way of surgery, therapy or diagnosis, inventions whose use would be contrary to morality or ordre public, animal breeds or essentially biological processes for the production of animals.

2) Novelty will be destroyed by making the invention available to the public in tangible form (including publication) anywhere in the world or by oral disclosure in San Marino.

3) The maximum term of a patent, subject to the payment of annual maintenance fees, is twenty years from its filing date.

Designs

1) Novelty is destroyed by publication in tangible form anywhere in the world or by use in San Marino.

2) Protection is for an initial five-year period, starting from the date of application, and may be renewed for two further five-year periods.

Trademarks

1) Registrable marks include any sign that can be graphically represented and that can distinguish goods and services of one party from those of another.

2) Marks may not be registered if they are, inter alia, non-distinctive, generic or descriptive terms or if they are confusingly similar to (a) a registration or prior application in respect of the same or similar goods or services; or (b) marks which are considered to be well-known in San Marino in respect of the same or similar goods or services.

3) Collective marks may be registered.

4) Registrations are granted for a period of 10 years from the date of filing and may be renewed for further 10-year periods.

5) The owner of a registered trademark which has become well-known in San Marino may prevent the unauthorized use of similar marks in respect of dissimilar goods or services if such use would derive unfair advantage from, or would be detrimental to, the distinctiveness or reputation of the well-known mark.

6) Licensing is recognized and the licensor must provide for effective quality control of the goods or services for which the mark will be used.

7) Trade names, indications of origin and denominations of origin are protected.

8) Unfair competition provisions are included. The unlawful act of unfair competition is defined as any act of competition which is contrary to honest practices in industrial or commercial matters.

9) Trademark registrations are subject to cancellation for unjustified non-use for any continuous period of 5 or more years.


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© Copyright 1999 Ladas & Parry - Posted 10/11/1999
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