Official Journal March 2015

Citation: A34
Online publication date: 31.3.2015

INFORMATION FROM THE CONTRACTING STATES/ EXTENSION AND VALIDATION STATES

SM San Marino

Payment of fees

The Patent and Trade Mark Office of the Republic of San Marino (USBM) has informed us as follows about an agreement between San Marino and Italy which entered into force on adoption of San Marino's Council decree No. 217 of 23 December 2014 and concerns the interpretation of Article 43 of the Convention on Friendship and Good Neighbourhood of 1939, governing trade marks and patents:

Introduction

Ever since the Republic of San Marino became a member of the major centralised systems for filing and registering trade marks and patents (the Madrid System and the European Patent Convention), professionals and property right holders have made more and more requests for clarification regarding the interpretation and scope of Article 43 of the 1939 Convention between the Italian Republic and the Republic of San Marino.

The text of Article 43 and the national provisions of both countries did not enable an unequivocal answer to be given to these legitimate requests, and instead left room for contrasting interpretations, which was seen by both parties as detrimental.

Following an Exchange of Notes between Italy and San Marino, an interpretation of Article 43 that has never been officially documented before has now been agreed upon; this interpretation explicitly limits the scope of Article 43 to applications filed in accordance with the respective national procedures, thereby excluding all rights obtained in either country via international procedures.

The agreement entered into force upon ratification of its wording by the Great and General Council of San Marino on 23 December 2014[ 1 ]; no provision was made for any transitional periods for regularising extensions or validations that had not taken effect by the time the agreement came into force.

Press release of the USBM

Holders of European patents and international trade marks who wish to protect their inventions in the Republic of San Marino are required to pay the national fees applicable in San Marino and will no longer be able to take advantage of the provision for reciprocal recognition of trade marks, patents and designs in Article 43 of the San Marino-Italy Convention of 1939.

Following ratification of the Exchange of Notes between Italy and the Republic of San Marino on Article 43 of the 1939 Convention, governing the usurpation and counterfeiting of property rights, the interpretation of Article 43 that the two parties had agreed upon came into full effect.

Article 43 of the 1939 Convention applies only to property rights registered or granted in Italy and/or San Marino on the basis of national applications filed with either of their national offices, namely the Italian Patent and Trade Mark Office (UIBM) and the San Marino Patent and Trade Mark Office (USBM).

Conversely, Article 43 does not apply to trade marks, patents or designs obtained following international procedures (international trade marks based on the Madrid Agreement and the related Protocol, European patents, and designs and models based on the Hague Agreement).

In order to obtain protection in Italy and San Marino, applicants from countries other than Italy seeking property rights through international systems (WIPO and EPO) are required to file applications and pay the filing fees in both countries, in keeping with practice in all states that are party to the relevant international conventions and in compliance with the fundamental principle of territoriality.

San Marino, 23 December 2014

 

Council decree of the Republic of San Marino concerning ratification of the agreement of 8 July and 21 November 2014 between San Marino and Italy

Council Decree No. 217 of 23 December 2014

We, the Captains Regent of the Most Serene Republic of San Marino

Having regard to Article 5(3) of Constitutional Law No. 185/2005 in conjunction with Article 11(2) of Qualified Law No. 186/2005;

Having regard to Resolution No. 13 of the Great and General Council of 22 December 2014;

By virtue of the powers vested in us;

Hereby declare and submit for publication:

Ratification of the Agreement between the Republic of San Marino and the Italian Republic concerning the correct interpretation of Article 43 of the Convention on Friendship and Good Neighbourhood of 1939, governing trade marks and patents

Sole Article

Full and complete effect is given to the Agreement between the Republic of San Marino and the Italian Republic concerning the correct interpretation of Article 43 of the Convention on Friendship and Good Neighbourhood of 1939, governing trade marks and patents, which Agreement was concluded by way of an Exchange of Notes on 8 July 2014 and 21 November 2014 (Annex A).

Issued from Our Residence on 23 December 2014 (the year 1714 following the Founding of the Republic)

THE CAPTAINS REGENT

Gian Franco Terenzi – Guerrino Zanotti

THE SECRETARY OF STATE FOR INTERNAL AFFAIRS

Gian Carlo Venturini

 

Annex A to the Council Decree

Prot. 2014

Note Verbale of the Italian Embassy

The Italian Embassy in the Republic of San Marino is honoured to present its compliments to the Secretary of State for Foreign Affairs of the Republic of San Marino.

The Italian Embassy in the Republic of San Marino is honoured to refer to the Convention on Friendship and Good Neighbourhood of 31 March 1939 entered into between the Republic of San Marino and the Kingdom of Italy, and in particular to Article 43 thereof, which is part of Section V, "Copyright and Industrial Property Rights".

Following the discussions that have taken place, the Italian Republic and the Republic of San Marino are together seeking to clarify by way of interpretation that Article 43 of the Convention on Friendship and Good Neighbourhood of 31 March 1939 is to be understood as applying solely to instances of usurpation and counterfeiting of property rights relating to industrial inventions and industrial trade marks, designs and models that have been patented or registered in one of the two States in accordance with the respective national procedures in force, and specifically to rights obtained following national patent, trade mark, design and model applications filed with the patent and trade mark office of one of the two States.

Accordingly, rights obtained in either of the two States through procedures provided for by international agreements or conventions are excluded from the scope of the above-mentioned Article 43.

This interpretation shall be deemed to have been agreed upon following the receipt of formal notification to that effect issued by the Secretary of State for Foreign Affairs of the Republic of San Marino.

The Italian Embassy in the Republic of San Marino would like to take the opportunity to once again extend its warmest wishes to the Secretary of State for Foreign Affairs of the Republic of San Marino.

San Marino, 8 July 2014

 

Prot. No. 130003/2014

Reply of the Secretary of State for Foreign Affairs of the Republic of San Marino

The Secretary of State for Foreign Affairs of the Republic of San Marino presents his compliments to the Honourable Italian Embassy in San Marino and is honoured to acknowledge receipt of the Note Verbale of 8 July 2014 (Ref. No. 2014), which reads as follows:

"The Italian Embassy in the Republic of San Marino is honoured to present its compliments to the Secretary of State for Foreign Affairs of the Republic of San Marino.

The Italian Embassy in the Republic of San Marino is honoured to refer to the Convention on Friendship and Good Neighbourhood of 31 March 1939 entered into between the Republic of San Marino and the Kingdom of Italy, and in particular to Article 43 thereof, which is part of Section V, "Copyright and Industrial Property Rights".

Following the discussions that have taken place, the Italian Republic and the Republic of San Marino are together seeking to clarify by way of interpretation that Article 43 of the Convention on Friendship and Good Neighbourhood of 31 March 1939 is to be understood as applying solely to instances of usurpation and counterfeiting of property rights relating to industrial inventions and industrial trade marks, designs and models that have been patented or registered in one of the two States in accordance with the respective national procedures in force, and specifically to rights obtained following national patent, trade mark, design and model applications filed with the patent and trade mark office of one of the two States.

Accordingly, rights obtained in either of the two States through procedures provided for by international agreements or conventions are excluded from the scope of the above-mentioned Article 43.

This interpretation shall be deemed to have been agreed upon following the receipt of formal notification to that effect issued by the Secretary of State for Foreign Affairs of the Republic of San Marino.

The Italian Embassy in the Republic of San Marino would like to take the opportunity to once again extend its warmest wishes to the Secretary of State for Foreign Affairs of the Republic of San Marino."

This Secretary of State is honoured to announce that the Government of the Republic of San Marino has approved the interpretation proposed by Italy of Article 43 of the Convention on Friendship and Good Neighbourhood between the two States.

The Note Verbale of 8 July 2014 (Ref. No. 2014) and the present Note together constitute an agreement to that effect, which shall enter into force in San Marino once it has been ratified by the Great and General Council. The interpretation of Article 43 may thus be deemed to have been agreed upon following receipt of the Note issued by this Secretary of State announcing ratification by said Council.

The Secretary of State for Foreign Affairs of the Republic of San Marino would like to take the opportunity to once again extend his warmest wishes to the Honourable Italian Embassy in San Marino.

San Marino, 21 November 2014 (the year 1714 following the Founding of the Republic)

 

 

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