CJUE Upholds Vespa’s 3D trade mark

A decade-long legal battle came to an end on 29th November when the CJUE ruled in favour of the Italian company Piaggio in case T-19/22. This decision overturns the previous ruling of the European Union Intellectual Property Office (EUIPO) in 2021, which had favoured the Chinese giant Zhejiang Zhongneng Industry Group (Znen) in the dispute.

In 2013, Piaggio applied to the EUIPO to register a three-dimensional sign corresponding to the iconic shape of its Vespa scooter as an EU trade mark. In January 2014, the application was accepted for products related to "scooters" and "reduced scooter models".

I in 2018 Znen acquired Moto Morini with the strategic aim of expanding its presence in the Italian market and strengthening its position in the motorcycle industry. This acquisition gave Znen a base in Bologna, Italy, and a direct access to the European market, leveraging Moto Morini's reputation and expertise in manufacturing high-quality motorcycles. Znen sought the cancellation of Vespa's three-dimensional trade mark, and in 2021, the EUIPO cancelled the trade mark, supporting Znen's claim on the grounds of "lack of evidence of distinctiveness" of the Vespa shape. However, Piaggio did not yield and appealed to the Court of Justice of the European Union.

The recent ruling by the CJUE represents a significant turn in the case, supporting Piaggio's position that the three-dimensional shape of the Vespa has an iconic character that deserves protection against imitation. The judgment considers the annulment of the registration by the EUIPO to be a " misjudgment" and emphasises that "the evidence demonstrates the distinctive character acquired through the use of the brand throughout the European Union". The Court stated that a trade mark registered in the EU cannot be declared invalid if it has acquired distinctive character after registration. Piaggio presented solid evidence, including opinion polls, sales data, presence in prestigious museums such as the Museum of Modern Art in New York and appearances in internationally acclaimed films such as "Roman Holiday", as well as the existence of Vespa clubs in numerous Member States.

All in all, Piaggio's Vespa has emerged victorious from this protracted legal battle, consolidating its position as a distinctive and iconic brand in the European landscape. However, this is not the first legal encounter between Piaggio and Znen. In an earlier case, Znen had registered with EUIPO the design for a scooter in the European Union called "Ves”. Piaggio sought the cancellation of the model in 2014, arguing that it lacked novelty and individual character due to its similarity to the Vespa Lx. The EUIPO rejected the Piaggio’s action and five years later, the Court upheld the EUIPO's decision, ruling in favour of Znen and stating that the Ves scooter was not a plagiarism of the Vespa Lx, citing numerous and significant differences between the two.