VESPA: EU COURT CONFIRMS DISTINCTIVENESS OF SCOOTER SHAPE

In 2014, Piaggio & C. S.p.A. registered the trademark concerning the three-dimensional shape of the scooter "Vespa," the validity of which was challenged by a Chinese company, which requested its cancellation. 

In 2021, the EUIPO (European Union Intellectual Property Office) declared that the said registered trademark was invalid, asserting that the evidence provided by Piaggio was insufficient to prove the distinctive character acquired by that trademark as a result of its use over time. 

Piaggio appealed that decision, arguing that the elements characterizing the shape of the "Vespa" scooter were capable, at least taken as a whole, of giving the mark a sufficient degree of distinctiveness.

The EU General Court annulled the EUIPO's decision, asserting that the EUIPO had committed a serious error when it found that the evidence provided by Piaggio was irrelevant and insufficient because it was instead capable of demonstrating the iconic character of the Vespa and its recognizability on a global level.

In particular, the General Court asserted that in itself the three-dimensional mark has no inherent distinctiveness because it reproduces the typical features of the shape of a scooter, not deviating significantly from the basic shapes of the goods in question. It emphasized, however, that a registered EU trademark cannot be declared invalid if after registration it has acquired distinctiveness, by reason of the use made of it, for the goods and services for which it was registered. 

The Court pointed out that, for the purposes of this assessment, a number of elements must be taken into account, such as the market share held by the mark, its geographical extension, the duration of its use, the amount of investment made to promote it, and opinion polls. 

Moreover, although it must be shown that the mark has acquired distinctiveness in all member states of the Union, the same evidence is not required for each member state.

In the present case, the General Court found that the mark's distinctiveness was proven, finding relevant the presence of the "Vespa" in the Museum of Modern Art in New York, abstracts from online newspapers in which the "Vespa" is identified as one of the twelve objects that have marked world design, the use of the scooter in world-renowned films, and the presence of "Vespa Clubs" in numerous member states. 

The mark corresponding to the three-dimensional shape of the Vespa scooter was consequently deemed valid.