Piaggio’s intellectual property rights in relation to the design of the Vespa LX scooter have not been infringed by the Chinese company Zhejiang, the General Court has recently confirmed. To this end. the Court found no valid grounds on which to invalidate the registration as a community design of Zhejiang’s scooter.
EU law makes provision for the possibility of obtaining EU-wide protection for a design by means of registering same with the European Union Intellectual Property Office (EUIPO). To qualify for registration, designs must be new and have an individual character, that is, they must be different from existing products. Registered designs are protected against both copying and the independent development of similar designs. A registered community design can, however, be declared invalid on certain grounds. The latter could relate to the fact that the above- mentioned qualifications for registration, namely, the fact that the design is new and has an individual character, are proven to have not been satisfied or that the registered design constitutes an improper use of a work protected under the copyright law of an EU country.
The facts of this case were briefly as follows. In 2010, a Chinese company, Zhejiang, obtained from the European Union Intellectual Property Office (EUIPO), the registration of the design of a scooter as a Community design. In 2014, the Italian company Piaggio & C. filed an application with the EUIPO for a declaration of invalidity of the registration of the said design, claiming that it lacked novelty and individual character when compared to the design of their ‘Vespa LX’ scooter.
Piaggio observed that the latter scooter was first made available in 2005 and it incorporated the lines and shape characteristics of the Vespa motorcycle, an icon of Italian design since 1945. It continued to argue that the Vespa LX scooter was protected in Italy as an unregistered three-dimensional trademark and, in France and Italy, as a copyrighted intellectual work. The EUIPO rejected Piaggio’s request for a declaration of invalidity and the latter appealed against the EUIPO’s decision before the General Court.
Significant differences between the two scooters
The General Court highlighted the fact that, in terms of the EU’s Regulation regulating Community designs, a design can be registered and protected as a Community design, only to the extent that it is new and has an individual character. It went on to note that the Zhejiang scooter and the Vespa LX scooter produce different overall impressions and the former does have an individual character when compared to the latter. In coming to its conclusion, the Court observed that while the Zhejiang scooter is dominated by substantially angular lines, the Vespa LX scooter has rounded lines.
The shape characteristics of the Vespa LX scooter are also not found in the Zhejiang scooter. The Court affirmed that there were various significant differences between the two scooters insofar as their design is concerned.
The Court emphasised that Piaggio had failed to prove inconclusively before the EUIPO that the Zhejiang scooter had made use of the unregistered three-dimensional mark corresponding to the Vespa LX scooter. It highlighted the fact that the relevant public likely to purchase scooters would perceive the style, lines and appearance that characterise the Vespa LX scooter as visually different from those of the Zhejiang scooter. Due to the different impressions left by the two scooters, there is no likelihood of confusion on the part of the relevant public, the Court concluded.
Insofar as Piaggio’s claim for copyright in the Vespa LX scooter in Italy and France, the Court noted that the characteristics and specific overall appearance of the Vespa LX scooter, particularly its rounded, feminine and ‘vintage character’, were protected by copyright in these two EU countries. These features contributed to the concrete expression of the artistic core of the original ‘Vespa’. However, these same features were not found in the Zhejiang scooter and hence there was no infringement of Piaggio’s copyright, the Court concluded.
As this decision goes to show, a brand’s popularity is not sufficient to stop others from seeking to protect their own intellectual property rights, be they trademarks, copyright, designs or patents. EU law does recognise the importance of intellectual property rights for business and in fact provides owners of such rights, including design owners, with various ways and means by which they can protect their rights. Nonetheless, as this decision goes to prove, such rights are not inviolable, and both the Court and the Office scrutinise the individual facts of each case with a view to ensuring that the both the letter and spirit of the law are upheld.
Mariosa Vella Cardona M’Jur, LL.D., is a freelance legal consultant specialising in European law as well as competition law, consumer law, data protection law and intellectual property law. She is also a visiting examiner at the University of Malta.