3D trademarks and iconic vehicles: Rome Court of Appeal Confirms invalidity of Italian trademarks on “Defender”

With a ruling dated 14 April 2025 (no. 2374/2025), the Court of Appeal of Rome dismissed the appeal filed by Jaguar Land Rover Ltd. (JLR). The ruling confirmed the invalidity of four Italian 3d trademarks registered on the famous off-road vehicle “Defender” due to lack of distinctive character.

The decision first recalled national and EU case law according to which, on the one hand, the criteria for assessing the distinctive character of three-dimensional trademarks consisting of the appearance of the product are no different from those applicable to other categories of trademarks; whilst on the other hand the average consumer is not accustomed to presuming the origin of products on the basis of their shape in the absence of graphic or textual elements, making it necessary for the registered sign to significantly differ from the industry standard in order to perform its essential function of indicating origin. In applying these principles, however, in the opinion of the writer, the decision in question does not stand out for its consistency.

In summary, the Court held that the shapes covered by the trademarks in question did not differ significantly from the usual configurations of other off-road vehicles on the market, thus excluding their intrinsic distinctive capacity.

In its reasoning, the Court also recalled the decision of the EUIPO Board of Appeal in the Humvee case, stating that the buyer of a car pays particular attention to its external appearance, but tends to perceive it as an element of design, rather than as an indicator of entrepreneurial origin: the buyer is aware that cars usually have a trademark and an emblem, and these are the primary tools through which he/she identifies the manufacturer. It follows that, in the automotive sector, the shape, alone, hardly fulfils a distinctive function and is not suitable, in the absence of other graphic or textual elements, to identify with certainty the origin of the product.

As for acquired distinctiveness, the Court concluded that the notoriety of the Defender cannot be relevant, since it does not automatically imply the perception of the vehicle's shape as an indicator of entrepreneurial origin. In essence, for a shape to acquire distinctive capacity, it is necessary for it to be perceived by the public as a trademark and not simply as a successful or historically well-known design. Moreover, on presentation of two conflicting market research reports, the Court considered predominant the results of the research that did not highlight a sufficient association of the shape to the manufacturer by the average consumer.

The decision is ideally consistent with the themes addressed in our previous commentary on the Defender issue from a copyright perspective (available here: https://www.martinimanna.it/blog/tutela-autoriale-del-design-e-valore-artistico-dopo-cofemel ), even if, in this new chapter, the shape of the vehicle has been scrutinised in light of the requirements for validity as a trademark.