The “Vespa” cannot be touched: the shape of the scooter has an “iconic character” that distinguishes it all over the world, representing a brand that must be protected from attempts at imitation.
The legal battle between Piaggio & C. SpA (“Piaggio”) and Zhejiang Zhongneng Industry Group Co. Ltd (“Zhejiang”), which began in 2014, ended in Piaggio’s favour on November 29th 2023 with the decision of the EU General Court in Case T19/22.
On March 25th, 2013, Piaggio filed an application with the European Union Intellectual Property Office (“EUIPO”) for registration of a three-dimensional European trademark corresponding to the shape of a “Vespa” scooter, the image of which is filed at the Alicante headquarters:
The request was accepted by the EUIPO and consequently the shape of the “Vespa” became a registered European three-dimensional trademark.
However, less than a year after the registration of the trademark, on April 29th, 2014, Zhejiang filed an application for a declaration of invalidity of the trademark at issue. This application was rejected in its entirety by the Office.
However, this defeat did not stop the Chinese company which, on February 17th, 2021, appealed against the decision of the cancellation division.
It is precisely in that context that the applicant’s arguments are endorsed by the Board of Appeal, which upholds the reasons raised by Zhejiang and declares the trademark at issue to be invalid.
Piaggio, however, did not surrender to the decision of the Board of Appeal and lodged a new appeal with the EU Court, where the situation was – once again – subverted in favour of the appellant (it is no coincidence that there was talk of a “legal battle”).
What led the EU General Court to annul the decision of the Board of Appeal?
The reasons that led the EU General Court to rule in favour of Piaggio mainly concern the fact that the Board of Appeal wrongly found that the evidence of distinctive character acquired through the use of the contested mark was insufficient.
In that regard, it should be noted at the outset that, under Article 52(2) of Regulation No 207/2009: “An EU trade mark registered contrary to the provisions of Article 7(1)(b), (c) and (d) may not be declared invalid if, by reason of the use which has been made of it, it has acquired distinctive character after registration for the goods or services for which it has been registered”.
According to the case-law, in order to determine whether a trademark has acquired distinctive character through the use which has been made of it, the competent authority must carry out a specific examination and make an overall assesment of the factors capable of establishing that the trademark has become capable of identifying the goods or services in question as originating from a particular undertaking.
A number of factors come into play in this assessment, including the market share held by the trade mark, the intensity, geographical scope and duration of use of that trade mark, the extent of the investments made by the company to promote it, the percentage of interested parties who identify the product as originating from a specific undertaking by means of the trade mark, the declarations of chambers of commerce and industry or other professional associations, as well as opinion polls.
In the case at hand, as stated in the judgment of the EU General Court, the “presence of the “Vespa” in the Museum of Modern Art in New York, the numerous extracts from online newspapers that all highlight that, according to international design experts, the “Vespa” is part of the twelve objects that have marked world design over the last hundred years, the photographs contained in the publication entitled “The Myth of the Vespa”, which show the use of “Vespa” scooters in world-famous films, such as “Vacanze Romane”, or the presence of “Vespa clubs” in many Member States, which were suitable to demonstrate the iconic character of the “Vespa” and, therefore, its global recognition, also across the Union”.
Accordingly, the General Court concludes that the Board of Appeal erred in its assessment in failing to take account of that evidence, which was, on the contrary, capable of demonstrating the distinctive character acquired through the use of the contested mark throughout the European Union.
The decision of the EU General Court therefore confirms the validity of the European three-dimensional trademark concerning the shape of the famous Piaggio “Vespa”.
DISCLAIMER: This article merely provides general information and does not constitute legal advice of any kind from Macchi di Cellere Gangemi which assumes no liability whatsoever for the content and correctness of the newsletter.