Landmark ECJ Decision Upholds Vespa's 3D Trademark: A Victory for Iconic Design Protection

The recent decision by the European Court of Justice (ECJ) overturning the ruling of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) marked a pivotal moment for Piaggio's Vespa. The iconic Italian scooter has not only stood the test of time but has triumphed in the legal arena, reinforcing its status as a registered unique design. This legal victory not only protects Vespa's distinctive design but also sets a precedent for the recognition of 3D trademarks in cases involving iconic design products.


Igor Demcak

Since its introduction in 1946, Vespa has built a significant reputation in the Italian industry, maintaining its brand image and associated quality over the decades. The scooter became the mainstay of the Piaggio Group's financial health, experiencing a 30 percent turnover increase in 2022. Vespa's unique blend of classic appeal and continuous technical improvements has solidified its iconic status, making it not just a mode of transportation but a cultural symbol.

The company experienced a major setback when two Chinese companies, engaged in the sale of competing scooters, sought to invalidate Piaggio's 3D European trademark, arguing that it lacked distinctiveness across the European Union. The EUIPO initially sided with the Chinese firms, declaring Piaggio's 3D European trademark invalid on the grounds of insufficient demonstration of distinctiveness across the European Union. However, the ECJ challenged this perspective, asserting the validity and distinctiveness of the trademark due to documented evidence of its usage by Piaggio.

Distinctiveness Across the EU

At the core of the ECJ's decision was the fundamental criterion for trademark registration – a sign's ability to convey to the public the origin of products from a specific company. In the case of Vespa, the court noted the public's association of all Vespa scooters, with their consistent appearance since 1945, with Piaggio. This enduring consistency played a crucial role in establishing the acquired distinctiveness of the trademark's shape.

In addressing the critical issue of territorial proof and recognition, the ECJ decision provided valuable insights into the nuanced considerations surrounding the validation of 3D trademarks. The court clarified that the requirement to demonstrate acquired distinctiveness need not be executed separately for each EU member state. Instead, evidence could collectively cover all member states or a strategically selected group of them. This flexible approach acknowledges the diverse market dynamics within the EU while understanding that an identical proof for each state might be an impractical and excessive demand. The court's recognition of various types of evidence beyond traditional market data, such as the inclusion of Vespa in prestigious museums, accolades from international design experts, its prominence in global movies, and the existence of Vespa clubs across the EU, underscores a more holistic understanding of trademark distinctiveness.

Implications for 3D Trademarks

The decision has broader implications for the recognition of 3D trademarks, especially those associated with iconic design products. The ruling acknowledges that a combination of evidence, showcasing global recognition and cultural significance, can establish the distinctive capacity of a trademark. This decision sets a precedent for future cases involving 3D trademarks, offering a more flexible approach to proving acquired distinctiveness.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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