European Court of Justice sets milestone in 3D trademark validity in Vespa dispute

On 29 November 2023 the European Court of Justice (ECJ) issued a pivotal decision to overturn the ruling of the Fifth Board of Appeal of the EUIPO. This significant turn of events centred around the 3D trademark of Italian company Piaggio’s Vespa scooter.

The saga began when two Chinese companies – actively involved in the sale of competing scooters – sought to invalidate Piaggio’s trademark. The EUIPO had initially concurred with the Chinese firms, concluding that Piaggio’s 3D European trademark that protects the iconic Vespa scooter’s shape was invalidly registered. The office based its decision on the grounds that Piaggio had not sufficiently demonstrated the distinctiveness of the trademark across the European Union.

However, the ECJ challenged this viewpoint, asserting that the EUIPO’s conclusions were flawed. The court recognised the 3D European trademark as valid and as having achieved distinctiveness throughout the European Union due to its documented usage by Piaggio.

A critical point of contention was the Board of Appeal’s assessment of the trademark’s distinctiveness. The court noted that the board applied the parameters that the ECJ set for proving usage throughout the EU territory in an overly stringent manner. The tribunal emphasised that proving distinctiveness of a shape mark should not be disproportionately challenging, as this could lead to the refusal of most 3D trademark registration applications.

The court underscored the fundamental criterion for trademark registration. As a result of its use, a sign must be able to signify to the relevant public the products that it refers to as originating from a specific company. This was evidently proven in the Vespa case, despite the documentation covering both the 3D trademark’s shape and the general form of the scooter, including its various models over time. The tribunal observed that the public associates all Vespa scooters with a single determined company, considering their overall appearance, which has remained substantially consistent since 1945. This consistency has cemented the acquired distinctiveness of the trademark’s shape.

With regard to the territorial extent of proof, the court clarified that while evidence of the contested trademark’s acquired distinctive character must be shown in all EU member states, identical proof for each state is not a necessity. Proof of acquired distinctiveness can cover all member states collectively or a group of them, with some evidence being pertinent to multiple states or even the entire union.

The court moderated the stringent requirement of providing evidence for each member state. It stated that the EU Trademark Regulation does not mandate separate evidence for the distinctive character acquired in each state – such an excessive demand would be unreasonable.

In this context, the court acknowledged that various types of evidence – beyond common opinion polls or sales and market-share data – can be pertinent, such as:

• the inclusion of the Vespa in the Museum of Modern Art in New York;
• numerous online newspaper excerpts highlighting the Vespa as one of the top 12 iconic design objects of the past century, according to international design experts;
• the use of Vespa scooters in globally renowned movies such as Roman Holiday; and
• the existence of Vespa clubs in numerous EU jurisdictions.

These all serve to demonstrate the iconic status of the Vespa and its global recognition, including throughout the European Union.

The court’s decision marks a significant milestone in recognising the validity of 3D trademarks that have attained distinctive capacity, particularly in cases involving iconic design products like Piaggio's Vespa. This ruling paves the way for a broader acceptance of 3D trademarks, especially for products with an established place in the realm of design.