In the closing months of 2014, Italy and the Republic of San Marino, by means of notes exchanged between their respective diplomatic apparatuses, have cleared up the matter of the validity of intellectual property rights in each others’ territories.
This had been addressed in 1939 by the Treaty of Friendship and Cooperation between Italy and the Republic of San Marino, of which Article 43 confirmed that it was possible to take legal action for infringement in one country for an exclusive right obtained in the other.
With the Republic of San Marino’s recent accession to international conventions like the European Patent Convention, the International Patent Cooperation Treaty and the Madrid Agreement on international trademarks, the question was raised of whether the national components of such agreements existing in one of the two countries might be automatically effective in the other country as well.
The problem is not just a legal one: while the designation of Italy and the Republic of San Marino in an international trademark has a nominal cost, validating a European patent in both countries is much more expensive.
Now the two countries have clarified this point by deciding that Article 43 applies only to infringements of exclusive rights that were filed nationally in the two countries, while rights obtained in each of the two countries through procedures under international agreements or conventions are excluded.
This means that, for international and European patents and for international trademarks, protection can be obtained in both countries only after completing the necessary designation and validation formalities both in Italy and in San Marino. It is therefore essential to assess whether commercial interests are such as to necessitate validating the exclusive rights in both countries.
The decree ratifying the agreememt reached has been published in the Republic of San Marino and so the law is now formally in force in that country. For Italy, publication in the Official Gazette is technically a necessary precondition, but, given the reciprocal nature of the law, it should in practice be considered as already being valid in Italy as well.