The Italian Supreme Court recently issued a decision addressing whether the Vespa shape, already protected under copyright, was precluded from registration as a 3D mark. According to the Court, a shape’s artistic value usually confers substantial value which prohibits trade mark registration under Italian law.

Background

It began in 2014 as a classic case of trade mark infringement of an iconic Italian trade mark, the Vespa shape, by a Chinese company. The validity of Piaggio’s Italian 3D trade mark for the Vespa shape, was challenged.

In 2017, the Court of First Instance of Turin dismissed the request to invalidate the Vespa 3D mark and found that the Chinese company had infringed Piaggio’s trade mark and copyright rights held in the Vespa shape through its Ves motorcycle model. In 2019, the Court of Appeal upheld the decision and ordered payment of damages.

The appeal decision was taken to the Italian Supreme Court (to decide points of law but not the merit of the case). The main question was whether it is possible to register as a trade mark the 3D shape of a product that is also protected by copyright or whether, its artistic value constitutes a substantial value that prevents protection under trade mark law.

Does the Vespa Shape Have Substantial Value?

According to art. 9(1)(c) Italian Intellectual Property Code, art. 7(1)(e) EUTM Regulation and art. 4(1)(e) TM Directive, absolute grounds for refusal of trade mark registration include signs which “exclusively” consist of a shape providing substantial value to the goods. So, what does “substantial value” mean and what is the connection to the artistic value? Does the Vespa external appearance determine consumers’ purchasing decisions, conferring a competitive advantage to Piaggio?

The Turin Court of Appeal considered that the Vespa shape had clear aesthetic and artistic features, but consumers’ purchasing decisions are driven by the quality of the product. Therefore, the Vespa shape should be registrable as a 3D mark.

However, the Supreme Court disagreed and stated that for a shape to have substantial value, it is not necessary for the product shape to be the sole reason for purchase. It is sufficient that the shape is one factor influencing the consumer’s choice. The Court concluded that the Vespa shape had a substantial value insofar as it played a key role in consumer’s choices, without being the sole reason for purchase. Additionally, artistic value does confer substantial value, and this precludes registration of an artist shape as a trade mark.

The case has been referred back to the Court of Appeal for a new assessment based on the Supreme Court’s findings. This decision will finally draw a line over this matter.

Takeaways

This case highlights the conflict between copyright and trade mark laws when a design has both artistic and commercial value and the consequences that a question of law may have within a broader case of blatant infringement. Owners of iconic designs may be impacted and vulnerable to invalidity challenges and preclusion of trade mark protection under Italian law.