The Court of Turin has recently issued a decision that constitutes a leading precedent regarding the validity of three-dimensional trademarks in Italy, holding that the 3D mark belonging to the company Piaggio covering the shape of its globally renown scooter “Vespa” is valid and enforceable.
Piaggio’s 3D mark for the Vespa was challenged in the Court of Turin three years ago by a group of Chinese companies after, on Piaggio’s request, authorities seized some scooters owned by those companies that misappropriated Vespa’s style and shape during EICMA, the international motorcycle fair in Milan.
In agreeing with Piaggio’s line of defense, the Court of Turin held that the 3D mark owned by Piaggio is endowed with distinctive character due to the fact that the exterior design of the Vespa scooter contains principle individualizing characteristics that have remained unchanged since the scooter was introduced in 1945. Such characteristics constitute the “heart” of Vespa’s 3D trademark, which is undoubtedly distinctive and original, and make the scooter Vespa distinguishable and unique with respect to other scooters found on the market.
Furthermore, the Court of Turin cites and relies on a market survey handled by Piaggio, demonstrating that more than 85% of the people interviewed, and 95% of habitual scooter users, immediately recognize the typical shape and design of Piaggio’s famous Vespa from the 3D mark.
This decision confirms that, in Italy, when a product - like Vespa - is so renown and distinctive that its shape and features become immediately recognizable and associable to the legitimate producer, it can enjoy protection as a three-dimensional mark.
In addition to protection as a 3D trademark, which is of primary importance since it is perpetual, the Court of Turin held that the Vespa scooter must be included among the exclusive ranks of the (few) objects of industrial design that can be protected by copyright according to Italian law.
In reaching these conclusions, the Court of Turin ultimately found that one of the scooters produced by the Chinese company infringed the 3D Vespa mark, violated Piaggio’s exclusive copyright on the scooter, and also constituted acts of unfair competition. Therefore, it prohibited any further manufacturing, marketing or exploitation of this Chinese scooter in Italy, ordering the destruction and/or definitive withdrawal of said infringing product from the Italian market.
This case is an important step forward for 3D trademarks, which have been met with heavy scrutiny not only in Italy, but in Europe as a whole. It will be important for brand owners to take note of this ground-breaking decision in determining where and how to best protect the distinctive qualities of their three-dimensional marks.