Italian Supreme Court on the iconic Vespa design: is it “too artistic” to be a trade mark?
On November 28, 2023 the Italian Supreme Court issued a key decision about the iconic Vespa design. In doing so, the Court considered whether a design that was also covered by copyright, was precluded from registration as a 3D trade mark. According to the Court, if the shape of the product has artistic value under copyright law, it usually has substantial value under trademark law and, therefore, it cannot be registered as a 3D trade mark.
Background: the proceedings concerning the Vespa design
In 2014, a Chinese company and makers of scooters, sued the very famous Tuscan company Piaggio & C. S.p.A. (“Piaggio”) before the Court of Turin. The Chinese company claimed that Piaggio’s Italian 3D trade mark no. 001556520 was null and void. Piaggio counter-claimed that the plaintiff’s scooter models infringed Piaggio’s trade marks as well as the copyright works comprising the Vespa scooters.
In 2017, the Court of Turin partially granted Piaggio’s claims and found the Chinese company’s “VES” model of scooters infringed Piaggio’s 3D trade mark and copyright.
On appeal, in 2019 the Turin Court of Appeal upheld the first instance judgement.
The Chinese company appealed the second instance decision before the Italian Supreme Court. The appeal was on several grounds, including whether it is possible to protect the shape of a product as a 3D trade mark if it is also protected by copyright due to its artistic value. In making this assessment, the Supreme Court had to consider whether the artistic value attached to the product was of such substantial value, that the shape of the product should be precluded from trade mark protection.
Piaggio’s Italian 3D trade mark
Vespa LX, released in 2005
The Vespa design: does it have substantial value or not?
The Supreme Court first addressed the question of the extent to which the Vespa shape had 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.
In this regard, the Turin Court of Appeal had rejected the invalidity claim of the Chinese company and considered the Vespa design suitable for 3D trade mark protection. According to the Court of Appeal, the Vespa design had clear aesthetic and artistic features, but the consumer’s choice would be determined not only by the Vespa appearance. The Court had held that consumers’ purchasing decision would mainly be driven by the high quality of the product, in terms of performance, safety and reliability. Therefore, the shape did not confer substantial value to the product and was registrable as a 3D trade mark.
However, the Italian Supreme Court disagreed with the above reasoning.
According to the Supreme Court, to have substantial value, it is not necessary for the product shape to be the sole reason for purchase: its shape must only be one factor influencing the consumer’s choice. In other words, the Supreme Court concluded that the Vespa design had substantial value insofar as it played a “very important” role in the consumer’s choice, without necessarily being the sole or even the prevalent reason for purchase.
To support its position, the Court spent many pages quoting several CJEU’s decisions, confirming that:
- the shape of the good may have substantial value if it plays a very important role in a consumer’s choice – even if this was not the only reason for a consumer’s choosing a particular product;
- indicia of substantial value may include the following: (i) the consumer’s perception, (ii) the nature of the product, (iii) the artistic value of the shape, (iv) the particularity of its shape compared to others on the market, (v) whether the product was sold at a higher price, (vi) the promotional strategy of the product and whether it focused on highlighting the aesthetic features of the product;
- the assessment of substantial value is not limited to the artistic value that arises from the shape of a product; in fact, more than one feature of a product may contribute to its value , for example, essential functional features or the specificity of the shape of a product.
The interplay between trade mark and copyright protection: does artistic value imply substantial value?
The Supreme Court then moved on to consider whether a product design may enjoin both trade mark and copyright protection.
Art. 2(1)(10) Italian Copyright Law provides that an industrial design may be covered by copyright provided that both creative character and artistic value can be ascribed to that design.
In considering artistic value in this context, the Supreme Court clarified that it related to the so-called “historicization” of the work, i.e. the cultural and social relevance acquired by the design work, by which the design becomes a social “icon”.
In the present case, the artistic value of the Vespa design had already been established and it was no longer contested at this stage of the proceedings. However, the Supreme Court confirmed that the recognition of artistic value generally implied that the product had a substantial value, thus excluding the possibility of trade mark protection. As a product’s artistic value is an element consumers will usually take into consideration, artistic value is an indicator of the particular feature having a substantial value in terms of the overall product.
Therefore, the Italian Supreme Court held that the Turin Court of Appeal erred in failing to explain how the shape of a Vespa can have artistic value without having, at the same time, substantial value under trade mark law.
Accordingly, the Supreme Court referred the case back to the Court of Appeal for it to reconsider its findings, in light of the principles set out above.
Conclusion: a benchmark decision for all iconic designs?
This decision of the Italian Supreme Court could have a significant impact for many owners of iconic designs. Indeed, if it is true that artistic value generally implies substantial value, it seems that trade mark protection for industrials designs – which already enjoy copyright protection due to their artistic value – will be generally precluded under Italian law.
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