Abion / Blog / Italian Supreme Court gives the iconic Vespa the red light in landmark ruling
vespa red alley

Image: Maria Teneva on Unsplash  

The end of November marked a pivotal moment for the legendary Vespa, owned by the Tuscan company Piaggio.

The Italian Supreme Court's recent decision (33100/2023) has sparked debate on the interplay between IP rights, focusing on whether an object protected by copyright, like the Vespa, can be barred from trademark registration based on "substantial value" grounds. One of our Lead Associates and IP Lawyers, Luisa Grillo, summarises the case so far and its possible implications.

The case in a nutshell

  • 28th Nov: Italian Supreme Court's landmark judgment on Vespa's copyright and trademark rights
  • 29th Nov: General Court rules on the distinctiveness of Vespa EU 3D mark

Background

  • 2017: Turin Court dismisses the request to invalidate Vespa Italian 3D mark
  • 2019: Court of Appeal upholds the decision
  • Ongoing dispute with a Chinese company accused of copying Vespa design

Key Question: Can a product with copyright protection be denied trademark registration based on "substantial value"?

- Luisa Grillo

Italian Supreme Court's Verdict

The recent ruling from the Italian Supreme Court sheds light on the interpretation of 'substantial value' concerning design rights. According to the court, they defined 'substantial value' as synonymous with 'non-trivial aesthetic value'.

The court emphasised that Vespa's captivating design holds significant sway over consumers' purchasing decisions. (Rephrased for clarity) Key factors influencing 'substantial value' encompass consumer perception, product characteristics, artistic merit, pricing, and promotional strategies. Furthermore, the court highlighted that this definition transcends objects solely reliant on aesthetics, encompassing products that amalgamate aesthetic appeal with functional or technical aspects.

Challenges Ahead

  • The case has been sent back to the Court of Appeal for reassessment.
  • If upheld, it could impact the trademark registration of designs deemed protectable under traditional artistic value standards.

Our reflections on this case

  • The judgment raises questions about the balance between copyright and trademark protection.
  • Is a design's value intrinsic, or does a brand's reputation play a role? The ruling's implications could be far-reaching.
Luisa Grillo

Author

Luisa Grillo

Lead Associate and IP Lawyer

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