The EU General Court has dismissed an appeal by Piaggio & C, the manufacturers of the Vespa LX scooter, who applied for a declaration of invalidity of Zhejiang Zhongneng Industry Group's registered Community design for its scooter (Case T-219/18).
History of the dispute
The Vespa scooter was first launched in Italy in 1945 and has since become an iconic design in Italian culture.
Zhejiang's scooter was registered as a Community design in November 2010:
Piaggo initiated an application for its invalidity in 2014, arguing that the design should be declared invalid and that it infringed its intellectual property rights held in the Vespa LX scooter. The Vespa LX design was first made available in 2005 incorporating the lines and shape characteristics of the classic Vespa scooter:
The dispute worked its way up through the courts to the EU General Court which gave judgment in September 2019.
Three key points were considered by the courts in relation to the Zhejiang scooter design:
- Whether the design was devoid of novelty and individual character;
- Whether the design was making use of the Vespa LX's unregistered mark in Italy; and
- Whether the design infringed copyright in the Vespa LX in France and Italy.
Article 25 of Regulation No. 6/2002 sets out the circumstances when a Community design may be declared invalid. Relevant provisions in this case were:
- A Community design may be declared invalid if it is not considered to be novel and have individual character. A design will be considered to have individual character under Article 6 if it produces an overall different impression on an informed user. (Article 25(1)(b)).
- A Community design may be declared invalid if a distinctive sign is used in a subsequent sign and the law of the governing member state gives the rights holder of the sign rights to prohibit its use. (Article 25(1)(e)).
- A Community design may be declared invalid if the design constitutes an unauthorised use of a work protected under copyright law of a member state. (Article 25(1)(f)).
General Court's ruling
By this stage in the dispute, Piaggio was no longer contesting the novelty of Zhejiang's design, only whether it had individual character. The General Court went on to consider the differences between the designs.
The court agreed with previous judgments that whilst the Vespa LX has a sinuous, rounded appearance, the Zhejiang scooter is much more angular and rigorously geometric. It noted that in addition to this, there were 'numerous and significant' differences between the two designs, including elements such as the mudguard, fairing and headlights.
It considered that these differences would not escape the attention of an informed user, who would have a degree of knowledge about scooters and would be unlikely to purchase one of the scooters without giving attention to the differences between the designs. Consequently, the General Court concluded that the design of the Zhejiang scooter created an overall different impression from that of the Vespa LX scooter and had sufficient individual character for the purpose of Article 6.
The Vespa LX was considered to have acquired an unregistered mark in Italy for its three dimensional shape, due to its distinctive features and prior use. However, the General Court concluded that the Zhejiang scooter design did not make use of this mark, given the differences between the designs and the fact that they were unlikely to cause confusion for consumers.
Finally, the Vespa LX was also considered to be protected by copyright in both Italy and France, given its artistic shape, vintage characteristics and overall rounded appearance. However, the General Court concluded that there had been no unauthorised use of the work given that the designs were so different. It once again relied on the significant difference between the rounded edges of the Vespa LX and the angular lines of the Zhejiang scooter.
This case is a reminder that where the freedom of a designer is restricted in a certain field, minor differences between conflicting designs can be sufficient to produce a different overall impression. Here however, the courts found that the freedom of the designer in the field of scooters was at least average and that there were numerous and significant differences in the designs.
It is unclear at this stage whether Piaggio intends to appeal the decision.
With special thanks to trainee, Emma Varty, for her contribution to this blog.
Note: This blog is based on the General Court's press release and a translation of the judgment which is not yet available in English.