Ten years have passed since the beginning of this controversy between Italy and China, or perhaps it’s better to say between Piaggio and the Zhejiang Zhongneng Industry Group.
The Italian group had applied to the European Union Intellectual Property Office (Euipo) to register the “three-dimensional sign corresponding to the shape of a Vespa scooter” to protect its historic scooter from imitations.
The application was granted and, in 2014, the design, or rather the shape of the Vespa, became a genuine protected trademark for “scooters” and “reduced scooter models”.
The Chinese Zhejiang Zhongneng Industry Group, which in 2018 entered the Italian market directly by acquiring Moto Morini of Bologna, filed an appeal to have the trademark canceled and consequently protected.
In 2021, the Euipo ruled in favor of the Chinese, for the “lack of evidence of distinctiveness” of the Vespa shape and the consequent cancellation of the trademark registration (and the intellectual property of the three-dimensional sign corresponding to the shape of a scooter). Piaggio did not give up and appealed to the EU Court of Justice.
The Court finally ruled in Piaggio’s favor, declaring that the trademark corresponding to the shape of a “Vespa” scooter is recognizable throughout the EU, which annulled the decision of the European Union Intellectual Property Office (Euipo), responsible for managing EU trademarks and designs.
The Court ruled that an EU trademark cannot be declared invalid if, through use, it has acquired distinctive character after registration. Thus, the Vespa cannot be imitated.
This decision, unfortunately, will not help the numerous cases of “imitated/copied” motorcycles, mostly from China, reported almost weekly, involving famous brands, from Honda to Ducati (remember the Ducasu 400?), via Harley-Davidson and Moto Guzzi. In these cases, it is difficult, if not impossible, to take legal action and the cover offered by patent registration is unstable and easily circumvented, unless you go too far and copy the company’s trademark as well.