Another step forward for the protection of industrial design
Judgment no. 1900/2017, Zhejiang Zhongneng Industry Group e Taizhou Zhongneng Import And Export Co v. Piaggio & Co. S.p.A., Court of Turin
The Turin Court of First Instance has recently taken its stance on the issues of three-dimensional trademarks and copyright on industrial designs (Judgment no. 1900/2017, Zhejiang Zhongneng Industry Group and Taizhou Zhongneng Import And Export Co v Piaggio & Co SpA—Judge rapporteur: Silvia Vitrò). The decision, which appears noteworthy for both its extensive reasoning and the fame of the contested mark, holds that the appearance of the world-famous scooter Vespa—owned by the defendant, Piaggio—is covered by a valid and enforceable three-dimensional trademark as well as by copyright, being an industrial design.
The plaintiffs, two Chinese motorcycle manufacturers and retailers, sued Piaggio back in 2013, right after the latter requested and obtained the seizure of three of their scooters during EICMA (Esposizione Internazionale Ciclo e Motociclo), the yearly international cycle and motorcycle fair in Milan, for the alleged counterfeiting of the Vespa trademark.
Namely, Zhejiang Zhongneng Industry Group and Taizhou Zhongneng Import And Export Co filed an action for the declaration of: (i) invalidity of the Italian registered three-dimensional trademark Vespa owned by Piaggio; (ii) non-infringement of said contested mark, as well as of the corresponding European registered three-dimensional trademark, also owned by Piaggio, by way of the three Chinese scooter models (Cityzen, Revival and Ves) that had been seized; (iii) absence of copyright protection of the Vespa model as an industrial design; (iv) non-infringement of said contested copyright; and of (v) non-infringement of unfair competition provisions connected to the manufacture, promotion and sale of the Cityzen, Revival and Vesscooter models.
In responding, Piaggio requested that the Court reject all of the plaintiffs’ demands and, by upholding the following counterclaims, declare: (i) the validity of the Italian registered three-dimensional trademark Vespa; (ii) the validity of the Italian de facto three-dimensional trademark covering the original shape of the Vespa, dating back to 1945-1946, as well as its re-elaborated versions; (iii) the infringement of Piaggio’s Vespa trademark by way of the three Chinese scooter models (Cityzen, Revival and Ves) owned by the plaintiffs; (iv) the existence of copyright protection of the Vespa model as an industrial design; (v) the infringement of said contested copyright; and (vi) the infringement of unfair competition provisions connected to the manufacture, promotion and sale of the Cityzen, Revival and Ves scooter models.
THE REASONING OF THE COURT
The novelty requirement
The plaintiffs based their invalidity claim of the registered three-dimensional trademark Vespa owned by Piaggio, inter alia, on its alleged lack of novelty. They argued that their scooter models Cityzen, Revival and Ves—respectively dated back to 2007, 2010 and 2012—enjoyed priority over the Italian trademark registration, filed and registered in 2013. The Court dismissed this claim by embracing the findings reported by the court-appointed expert, according to which such registered shape essentially corresponds to a previous Piaggio-owned model dating back to 2005 and hence prior to the plaintiffs’ oldest one. What is worth mentioning here is that the backdating is made by reference to a de facto three-dimensional trademark, on the grounds that such trademark enjoyed a general anterior reputation, meaning that the average interested consumer public actually knew it. This was considered proven on the basis of the report by the court-appointed expert, of the fact that the 2005 model at stake had been developed and commercialized as a celebration of the original Vespa 60 years earlier, as well as of the high sales volumes and figures.
The distinctive character requirement
Secondly, the Court passed on to the assessment of the distinctive character of the Vespa three-dimensional trademark. Again, reference is made to the court-appointed expert proceedings—even more so considering that this step specifically involved the technical evaluation of the alleged distinguishing features of the famous Italian scooter. What emerged is that there are four distinguishing features that characterize the Vespa scooter ever since the original model was released and that the defendant has provided evidence of the fact that the average consumer does not only identify such features, but also links them to Piaggio. These features, the Court say, constitute the “heart” of the Vespa trademark in so far as they are clearly visible, original and different from the other scooter models on the market.
Having affirmed the distinctive character, the Court also expressly excluded that, as argued by the plaintiffs, the challenged trademark had lost its distinctiveness due to the widespread adoption of identical or very similar features by many other scooters on the market (as a result of the so-called vulgarization phenomenon). In this respect, what is peculiar, rather than the reasoning itself of the Court, is the factual grounds on which the reasoning is based. In fact, the Court has taken its stance primarily based on the opinion survey conducted and filed by the defendant, which proved the extremely widespread and immediate identification amongst the public of the Vespa model and its spontaneous association to Piaggio. Although debated, the Court of Turin has proved to be one of the more favorable to such innovative means of proof in IP-related proceedings, especially for evidentiary purposes connected to the requirement of the distinctive character (see Turin Court of First Instance, decision of 4/4/2014, R.G. 11405/2011, Domori Srl v Ritter Schönbuch Vermögenswerwaltungs GmbH & Co.KG—Judge rapporteur: Gabriella Ratti).
Moreover, the Court affirms that these features do not fall in any of the invalidity exceptions provided by Italian law, since they are neither imposed by the nature of the product, nor needed to obtain a technical result and not even do they provide essential aesthetic value to the product.
Trademark infringement and unfair competition
For all the above reasons, having declared the validity of the Vespa three-dimensional trademark, the Court went on with the comparison of the parties’ models at stake and found that only one of the three amounted to infringement due to the interference of the scooters’ shape and also name—the Ves model.
Also, in that latter respect, that is having regard to the name of the product, the Court declared that the Chinese companies’ behavior amount to unfair competition, namely parasitical exploitation of Piaggio’s famous Vespa’s denomination.
Copyright protection: industrial design
Lastly, the Court firmly upheld the defendant’s counterclaim and declared that the Vespa model, born as an industrial design, has received so many acknowledgments in the artistic field and has become such a popular and unmistakable Italian style and culture icon that is shall be deemed to have both creative character and artistic value, hence being covered by copyright.
In doing so, the Turin Court of First Instance has applied what have become the widely accepted, case-law developed criteria for the assessment of the artistic value of an industrial design piece—such as being part of publications, awards, press articles, fairs and expos. In this sense, the Court specified that the artistic value may well be acquired later than the original creation.