With decision no. 1900/17 of 4 April, the IP Court of Turin granted three-dimensional trademark and copyright protection to the famous “Vespa” scooter by Piaggio.

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The proceedings from which the decision originates were started by two Chinese companies that, following a criminal complaint by Piaggio, had three scooter models seized at the EICMA trade show in 2013 for alleged breach of the three-dimensional trademark representing the Vespa LX, registered by Piaggio in the same year. The two companies then filed a negative declaratory action requesting the Turin IP Court to declare that their scooters did not infringe the rights of Piaggio and that the three-dimensional trademark portraying the Vespa was void for: i) lack of novelty, it being anticipated by the plaintiffs’ models; ii) lack of distinctive character; and iii) because it consisted of a shape that could not be registered as a trademark pursuant to Art. 9 of the Italian IP Code.

In the decision in question, the Court first noted that while only registered in 2013, the logo depicting the Vespa had actually enjoyed protection as an unregistered trademark since 2005, i.e. the launch year of the Vespa LX that was portrayed there. This unregistered trademark could in fact be regarded as well-known, and therefore be granted substantially the same protection as registered trademarks, provided that: i) the Vespa LX (“60″ in Roman numerals) was made by Piaggio to celebrate sixty years since the first Vespa, launched in 1945 and still well-known in 2005; ii) the sales data showed the very high sales volumes of the Vespa LX since 2005; iii) the expert witness appointed by the Court had confirmed the extreme notoriety of the Vespa LX on the market in 2007, i.e. the launch year of the first of the three Chinese models in question.

The Court also recognised that the trademark at issue had distinctive character, endorsing the findings of the expert witness who had highlighted four distinctive features of the shape of the Vespa: i) the “X” shape detectable between the side bulges and the seat; ii) the “upside down Ω” shape in the connection between the seat and the footrest; iii) the “arrow” shape of the front shield; and iv) the rear contour of the body, consisting of two drop-shaped cheeks. In support of its conclusion, the Court also cited the results of a Doxa survey commissioned by Piaggio, which revealed the extremely high percentage of the public that was able to recognise the logo depicting the Vespa and connect it to Piaggio. Although dated 2014, the Court considered the survey applicable also to 2007, i.e. the launch year of the first of the contested Chinese models.

Again in line with the conclusions of the expert witness, the Court then ruled out that the shape of the Vespa was not registrable as a trademark under Art. 9 IP Code: according to the judges, in fact, it is not the shape imposed by the nature of the product, nor the shape that is necessary to achieve a technical result, as demonstrated by the existence of scooters with different shapes; nor it is a shape that gives substantial value to goods (which is normally opposed to the registration of design products as three-dimensional trademarks), because, as stated by the expert witness, the consumer is led to choose the Vespa for technical and economic reasons much more than for aesthetic reasons.

Having ascertained the validity of the Piaggio trademark, the judges then declared it infringed by the plaintiffs, even if by only one of the disputed models, i.e. the first one reproduced hereunder. The commercialisation of this model was also considered an act of unfair competition to the detriment of Piaggio. Instead, the Court excluded infringement by the other two Chinese models shown below.

 

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The judges finally also found that the Vespa scooter is an industrial design product with creative character and artistic value and therefore protected under Art. 2 no. 10 of the Italian copyright law: “the exceptional and multiple awards from numerous important cultural institutions, which include the Vespa amongst the most important pieces of design, confirm its creative character and artistic value. And in fact, the creative character and artistic value of a design work are attested and should be assessed on the basis of the recognition by the market and the artistic circles, considering the critical acclaim, the prizes awarded, the presence in museums, the participation in exhibitions, the dissemination of publications in magazines“. The Chinese scooter above was therefore considered to also infringe the Piaggio copyright.

As a consequence of the above, the plaintiffs were enjoined from marketing the scooter at issue and ordered to withdraw it from the market, with the fixation of a € 1,000 penalty for each violation and for each day of delay in complying with the order. In addition, the court ordered the publication of the order in “Il Corriere della Sera” and “Motorcycle” at the plaintiffs’ expenses.