The case considers the interplay between copyright protection of industrial design works and protection of the shape of the corresponding product as a trademark
The Italian Supreme Court held that, since the appeal court had ascertained that the Vespa was a creation with artistic value, this called into question its protection as a trademark
On the same day, the EU General Court reached an opposite conclusion On the very same day, the Italian Supreme Court and the EU General Court ruled on the protection as a trademark of the shape of the world-famous Vespa scooter.
In short
The Italian Supreme Court of Cassation, in its ruling of 29 November 2023 (No 37100), considered the relationship between the copyright protection of industrial design works and the protection of the shape of the corresponding product as a trademark. The case concerned the protection of the shape of the Vespa, Piaggio’s world-famous scooter, which the Court of Turin, and then the Court of Appeal of Turin, had held to be protectable both as a design work (and thus protectable with copyright) and as a distinctive sign – thus considering that the registration of its shape as a trademark was valid with respect to vehicles, and not only for the merchandising products for which it was also used (see the decisions of the Court of Turin dated 6 April 2017and of the Court of Appeal of Turin dated 16 April 2019).
The Supreme Court upheld the ruling with regard to copyright protection, but remitted the case for further consideration to the Court of Appeal of Turin (with a different panel of judges) with regard to protection as a shape mark.
Reaching an opposite conclusion, in Case T-19/22 the EU General Court annulled a decision of the EUIPO denying protection onthe ground that the distinctiveness of the shape of the Vespa for vehicles had not been proven. In this respect, the court heldthat the Board of Appeal had erred in finding that the evidence of acquired distinctiveness was insufficient, stating as follows:
1. The overall appearance of the scooters in the evidence filed by Piaggio remained essentially the same, so that the evidencerelating to shapes not completely identical to that represented in the contested mark could not be ignored.
2. The figures relating to the sales volume, turnover, market share and advertising investment had to be taken into account, as Piaggio had produced evidence which confirmed the most significant of those figures.
3. The fact that the evidence – and, in particular, the opinion polls – did not cover the whole territory of the European Union did not preclude it from being capable of proving that the contested mark had acquired distinctiveness in all the EU member states, since it is not required for that purpose that the same evidence be produced for each member state and such demonstration canbe provided by other factors.
4. For the purpose of establishing the acquisition of distinctiveness, even in member states for which no surveys had been carried out, the following could be regarded as significant:
Italian Supreme Court decision
In contrast, the Italian Supreme Court first recalled, and made its own, the findings of the Court of Justice of the European Union(CJEU) in Cofemel (Case C-683/17) and Brompton
(Case C-833/18), inferring: In Italy, a work of industrial design enjoys copyright protection under Article 2(10) of the Copyright Law; this provision, however, provides that, for this purpose, such work must be “endowed, in itself, with creative character and artistic value”, the latter being demonstrated by recognition as a work of art in the relevant circles. However, as the decision also implicitly confirmed(following the aforementioned CJEU rulings), there is no longer any room for considering that the “artistic value” indicated in Article 2(10) must be indispensable for a work of industrial design to be protectable under the Copyright Law. This was stated more clearly by the Supreme Court in its judgment of 30 April 2020 (No 8433):
However, since the Court of Appeal had ascertained that the Vespa was a creation with artistic value, the Supreme Court held that this called into question its protection as a trademark. According to the Supreme Court, the substantive value referred to in the EU Trademarks Directive and Regulation exists whenever the characteristics of the shape are “capable of orienting and determining, ‘to a large extent’, the choice of consumers to purchase the product in question”, even without it being “the sole or predominant reason”; this would be the case “as a rule” for the shape of a design work with artistic value. For this reason, the case was remitted to the Turin Court of Appeal so that it could assess whether, on the basis of the findings already made and not subject to appeal, the shape of the Vespa was capable of conferring substantial value to the product.
Comment
This decision is therefore not the final word on the protection of the Vespa as a shape mark. Moreover, it is ambiguous in at least two respects. Firstly, it does not take into account that the “artistic value” of the shape of a product always depends on the perception of the public and, consequently, on the message that the product carries. Therefore, only an “artistic value” that would make the shape attractive in itself, regardless of the communication linked to the product, should exclude it from registration. In contrast, if the shape has become iconic precisely in connection with its use for a product appreciated for its symbolic value, it should be eligible for trademark protection – provided, of course, that it is also perceived as distinctive. In this respect, it is noteworthy that the EU General Court listed, among the elements capable of demonstrating the acquired distinctiveness of the Vespa shape, precisely those elements that had been considered by the Turin courts as indications of the the presence of the ‘Vespa’ in the Museum of Modern Art in New York, the numerous extracts from online newspapers, all highlighting the fact that, according to international design experts, the ‘Vespa’ is one of the 12 objects which have marked world design over the last 100 years, the photographs contained in the publication entitled
The Vespa Myth, which show the use of ‘Vespa’ scooters in world-famous films, such as Roman Holiday, or the presence of ‘Vespa clubs’ in numerous member states, which were suitable for demonstrating the iconic character of the ‘Vespa’ and, therefore, its recognition on a global scale, including throughout the Union the need, in the protection of industrial designs, to give greater importance to the ‘original’ aspect of the product rather than to its artistic value or to make a less severe assessment of the requirement of the artistic element, giving greater importance to the original character of the design The EU court has therefore reaffirmed that the requirement of originality required for copyright protection as a work of authorship, namely the existence of a definite and creative form of expression, reflecting the freedom of choice and the personality of its author, does not also imply that it produces a visual effect that is relevant from an aesthetic point of view existence of an artistic value in the design of the Vespa (see point (d) above): this demonstrates the need to take into account all aspects of the use of the shape and its various consequences on the perception of the public when determining whether it is capable of being a valid trademark.
Secondly, the EU Trademark Regulation and Directive exclude from registration as shape marks only marks that consist “exclusively” of the shape, or another characteristic, necessary to obtain a technical result or capable of conferring substantial value on the product, precisely to keep within the scope of registrability shapes that also include elements that are not essential to the achievement of aesthetic or functional utility. In addition, Italian law expressly provides that protection as a trademark can co-exist with copyright protection, since Article 14 of the Industrial Property Code states that “signs the use of which would constitute an infringement of another party’s copyright cannot be registered as trademarks”. This means that no issue arises when the copyright does not belong to “another party” – a rule that would make no sense if it were not possible to hypothesise the possible cumulation of protection as a trademark and by copyright.
These questions therefore require further investigation at both the national and EU level.
Cesare Galli
Author | Founding partner and managing partner
[email protected]
IP Law Galli
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