The Vespa Case: three dimensional trademark and copyright

The Italian Supreme Court of Cassation recently decided on the “Vespa” case of the company Piaggio, with ruling no. 33100/2023, excluding that a product that has acquired artistic value can be registered as a three dimensional trademark.

Are the notions of artistic value and substantial value similar?

In 2001, art. 2 of the law no. 633 of 1941 (Copyright Law) was modified with the introduction of comma no. 10 according to which “industrial design works having creative character and artistic value” are included in the copyright protection.

This means that a work of design can be protected by copyright, if it has these two characteristics. In particular, the requirement of “artistic value” identifies with the “historicization of the work” that occurs when a design acquires a cultural and social relevance such as to surpass the simple aesthetic appeal, becoming a real social and status symbol. This quality, moreover, derives from a series of elements such as the acknowledgment from cultural and institutional environments, the exposition in shows and museums, the publication in specialized magazines, the giving of awards, the acquirement in the market of a value so high as to transcend the one exclusively connected to the function of the product.

Pursuant to art. 9 of the Italian Industrial Property Code, a shape trademark, or three dimensional trademark, as the “Vespa” trademark for example, cannot be registered when it consists exclusively in the shape of the product, or other feature, imposed by the nature of the same or necessary to obtain a technical result, or suitable to confer it “substantial value”.

The “substantial value” exists when there is an aesthetic feature such as to make the shape of the product a real social and style symbol, such as to influence or determine the consumer’s choice to purchase and, consequently, to make its owner gain a competitive advantage. In presence of such element, the three dimensional trademark cannot be registered.

The notions of “artistic value” in copyright and “substantial value” of three dimensional trademarks are very similar.

The Vespa Case

The Italian Supreme Court of Cassation ruled in relation to such notions, overturning the decision of the Court and Court of Appeal of Turin that had considered the three-dimensional trademark as valid.

Following the seize of three scooter models for the claimed infringement of the three dimensional trademark depicting the “Vespa XL”, registered by Piaggio in 2013, two Chinese companies started an action for a declaration of non-infringement before the Court of Turin in order to assess that their scooters did not infringe Piaggio’s rights and to ask for the invalidation of the registered three dimensional trademark due to the violation of Article 9 of the Industrial Property Code.

Due to the presence of the fundamental requirements of novelty, creative character and artistic value, the court preliminarily ascertained that the shape of the Vespa is a design work protected by copyright. As a matter of fact, Vespa has acquired such a quantity of awards in the artistic field over time that it became a true icon of the Italian artistic design, as it can be inferred from the several publications, shows, awards, museum expositions, advertisements, movies.

But that’s not all. According to the Court, the three dimensional trademark of Vespa was valid and did not infringe art. 9 as, even if appealing, the design of Piaggio “is not, however, the only characteristic that directs the purchase motivation of the consumer who, while certainly being influenced by its aesthetic, is not certainly led to make a purchase decision exclusively on its basis, but rather on the basis of other technical and functional considerations”.

The court of Appel of Turin then confirmed the decision.

The Chinese companies therefore presented an appeal before the Supreme Court, stating that the requirement of “artistic value” implied the presence of a “substantial value” of the shape, that is one of the absolute grounds for refusal of a three-dimensional trademark, precisely because the artistic value is an element to consider in order to establish if a certain shape gives to the product a substantial value such as to make it not registrable.

The decision of the Supreme Court

The Italian Supreme Court of Cassation accepted this ground of complaint and affirmed that “the acknowledgement of an artistic value to the shape of a product as a design work, for the purpose of the protection under the Copyright Law – since Vespa became, as a result of many acknowledgements by the artistic field, not merely industrial (as also the uncountable presences in movie, advertisements, photographs, that have as protagonist a legend”), an iconic symbol of the Italian costume and artistic design – entails, generally, that that very shape gives to the product that “substantial value” that hinders the registration of the shape as a trademark”.

The censorship was therefore accepted, excluding thus the cumulability of the protection of the three-dimensional trademark of Piaggio with the copyright protection of the of the shape of the “Vespa”.

 

Tania Giampieri