Vespa maker convinces CJEU to restore iconic scooter TM
Italian manufacturer succeeds in annulling EUIPO decision revoking Vespa trademark | Piaggio proves sign had acquired distinctiveness through use in the EU | Decision represents bad news for Chinese competitor.
Piaggio has succeeded in reinstating its EU trademark for Vespa scooters, after the European General Court ruled that the sign had acquired a distinctive character through use and reversed a 2021 decision that invalidated the mark.
Yesterday (November 29), judges in Luxembourg determined that an EU Intellectual Property Office (EUIPO) Board of Appeal had erred in revoking the scooter trademark two years ago.
This was a blow for Chinese motorcycle manufacturer Zhejiang Zhongneng Industry Group, which had successfully challenged the validity of the Italian company’s mark but now faces paying legal costs along with the EUIPO.
Zhongneng Group, also known as Znen, owns motorcycle brands including Fosti Motorcycle, and Moto Morini, which is based in Trivolzio, Italy.
The central issue before the CJEU was whether Piaggio’s three-dimensional mark, representing the shape of a Vespa scooter, had acquired distinctive character through use. This was fundamental to its validity as it was deemed to be devoid of intrinsic distinctive character.
In October 2021, the Fifth Board of Appeal of the EUIPO found Piaggio’s evidence and arguments on this point to be lacking.
Appealing to the General Court, Piaggio said the board “reversed the distribution of the burden of proof to its detriment”, and that Zhejiang Zhongneng should have been required to provide evidence calling into question the trademark’s validity, which it had not done.
It also contested that the board had erred in determining whether the evidence it had presented was enough to prove that the sign had acquired distinctive use throughout the EU.
This evidence included opinion polls from 12 member states on whether people recognised the shape of the Vespa; an extract from the website of the Museum of Modern Art (MoMA) in New York from 2013 showing the Vespa GS 150 scooter model; and data related to Vespa sales in the EU from 2003 to 2012.
‘Iconic character’
While the judges rejected Piaggio’s claim regarding the burden of proof, they agreed that it had produced sufficient evidence to demonstrate distinctiveness through use.
Despite the opinion polls representing only 12 out of 27 member states, there was no requirement for the same types of evidence to be provided for each member state, judges said.
They cited as valid evidence the presence of the Vespa at the MoMA; extracts from online newspapers highlighting the Vespa as one of 12 pieces that marked world design over the past century; the appearance of Vespas in world-famous films; and Vespa clubs in numerous member states.
These factors were “likely to demonstrate the iconic character of the ‘Vespa’ and therefore its global recognition, including throughout the Union”, concluded the judges.
“The Board of Appeal therefore committed an error of assessment by failing to take into account the evidence in question, which was nevertheless capable of demonstrating the distinctive character acquired by the use of the contested mark throughout the Union,” the court said.
The EUIPO and Zhejiang Zhongneng were ordered to bear their own costs as well as Piaggio’s in respect of the General Court proceedings, and Piaggio also requested that the EUIPO pay costs incurred before the Board of Appeal.
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