The Italian Supreme Court on the Piaggio Vespa: no to the 3D trademark, yes to copyright (even if it had no artistic value?)
With decision no. 33100 of 28 November 2023, the Italian civil Court of Cassation ruled on the well-known case of the Piaggio Vespa, which had been granted copyright and 3D trademark protection by the IP Court of Turin with a decision confirmed on appeal: see our previous post here.
In the decision at issue, the Court of Cassation in turn confirms copyright protection, recognising the protectability of the Vespa and its infringement by the counterparty's scooters.
In making this assessment, the Court also focuses on the consequences of the ruling by the EU Court of Justice in the Cofemel case (C-683/17), and in particular on the consequent possibility of excluding the requirement of “artistic value” required by art. 2(10) Italian Copyright Law for the protection of design; we talked about it here on this blog. The Supreme Court, also recalling its decision no. 8433/2020, outlines that, from this EU case-law, derives the “need, in the protection of industrial design, to give greater importance to the “original” appearance of the product rather than to its artistic value, or to carry out a less severe assessment of the artistic value requirement, giving greater relevance to the original character of the design”. However, in the end the Court of Cassation does not rule on the need or otherwise to completely exclude the requirement of artistic value, given that in the specific case its existence was no longer in question and the parties had not raised the question of the compatibility of this requirement with European legislation.
On the subject of the 3D trademark, however, the Court of Cassation has a different opinion from the Turin Court and Court of Appeal, believing that the shape of the Vespa cannot enjoy such protection as it would be a “shape that gives substantial value to the product “, not registrable as a trademark. As is known, in fact, art. 9 CPI and art. 7 EUTMR exclude from registration the forms: a) imposed by the nature of the product; b) necessary to achieve a technical result; c) that give substantial value to the product. We have talked about these so-called “absolute grounds” for refusal of the registration, amongst others, here on this blog.
In the case at issue, the Turin Court, followed by the Court of Appeal, had excluded the existence of that absolute ground for refusal, stating that the consumer is led to choose the Vespa for technical and functional reasons (performance, safety and reliability) much more than for aesthetic reasons. The ruling in question states instead that:
i) the rationale of art. 9 CPI is to avoid that, through registration as a trademark, which potentially has unlimited duration, forms are monopolised without time limits which should instead also be available for use by competitors after the expiry of the IP rights protecting their technical features (patents / utility models) or aesthetics features (designs);
ii) a shape “gives substantial value to the product” when this shape is “a symbol or even a social icon”, “very important element” - although not the only one nor one of the main ones - in the consumer's purchasing choice, capable of giving the product an “appeal capable of influencing or even determining” the purchase choice;
iii) the factors to be considered when trying to verify whether a shape gives “substantial value “ to the product are: i) customers’ perception; ii) the nature of the product; iii) the artistic value of the shape; iv) its specificity compared to other shapes on the market; v) the significant price difference compared to similar products; vi) the development of a promotional strategy that highlights the main aesthetic characteristics of the product;
iv) the very fact that the Vespa is considered to have “artistic value” would therefore be an indication of the fact that its shape gives substantial value to the product, and is therefore not registrable as a valid trademark. In this respect, the Court of Appeal did not explain why the shape in question, despite having artistic value, did not confer substantial value on the product, hence why its decision shall be annulled.
The decision did not fail to raise criticism on the last point, which is at the heart of the reasoning that led to the denial of the trademark protection. I particularly agree with Eleonora Rosati's conclusions on IPKat. The Court of Cassation does not distinguish according to whether the “substantial value” derives directly from the intrinsic value of the shape or, rather, from the reputation and commercial efforts of Piaggio, which have made it an icon. If the case - as is likely - was the latter, it would be correct to grant the shape registration as a 3D trademark in order to protect the competitive advantage thus obtained by the company, in line with what was outlined by the Attorney General Szpunar in the Laboutin case C-163/ 16. However, the Court of Appeal of Turin might consider this, as the case now returns to them for a new decision on the point.
The decision by the Court of Cassation was also followed, the next day, by the ruling of the EU General Court in T-19/22, relating to the same Vespa 3D trademark. However, this ruling did not analyse the issues discussed here, but instead focused on the distinctive character of the trademark. In particular, the GC held that the trademark lacked inherent distinctive character, but that the EUIPO Board of Appeal was wrong in considering that it also lacked the acquired distinctive character, in particular for not having correctly examined the relevant evidence submitted by Piaggio. For this reason, the GC annulled the BoA decision which had declared the trademark null and void due to a lack of distinctive character.
