Vintage scene with Vespa on old street

The shape of the Vespa scooter, again

November 15, 2019 / Blog
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As known, at least to the experts in the matter, following a legal action taken by the Italian company Piaggio against the Chinese company Zhejiang, both the Tribunal and Court of Appeal in Turin (with decisions dated 6 April 2017 and 16 April 2019 respectively) have acknowledged the validity of the Piaggio trademark constituted by the shape of the Vespa scooter and its protection as industrial design based on copyright law.

These decisions have further established that one of Zhejiang’s scooters, namely the one called VES, infringes such exclusive rights, while infringement was ruled out for two others, amongst which the REVIVAL scooter.

On its part, in 2010 Zhejiang registered at the EUIPO a EU design or model having as subject matter the REVIVAL scooter, that the same Turin judges had ruled not similar to the Vespa scooter. Since Piaggio maintained that the Chinese REVIVAL scooter interfered with its rights it filed an opposition proceedings before the EUIPO.

As a result, this led to a parallel, but separate dispute, with respect to the legal action lodged before the Tribunal and the Court of Appeal in Turin.

This parallel proceeding was lastly decided by the Tribunal of the European Union ruling out the interference, but, as already mentioned, it does not concern the model of scooter which was declared infringing Piaggio’s rights by the Turin Judges. It must be noted that the REVIVAL scooter didn’t even constitute the subject matter of the proceedings before the Turin Court of Appeal.

The various press releases on the issue are hence inaccurate because they confuse the various proceedings and most important, they confuse the various models of the scooters of the Chinese company Zhejiang.

If we wish to draw lessons from this matter, it shall be underlined that both at a national level (Tribunal and Turin Court of Appeal with regard to the trademark rights and copyright belonging to Piaggio and infringed by the VES scooter manufactured by Zhejiang), and at European level (with regard to the community model REVIVAL this also filed by the Chinese company), the trend is to acknowledge the exclusive rights on the shape of the industrial products.

We also take this occasion to advise the media to pay more attention when referring to matters connected to national and European legal and administrative proceedings, so as to avoid inaccuracies and misunderstandings which are certainly due to a lack of knowledge of the subject matter.

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Author : Elisabetta Berti Arnoaldi

Graduated cum laude in 1984 at the Università degli Studi of Milan. Awarded the Daniela Jaeger prize for the best dissertation in Commercial and Industrial Law. She joined Studio Legale Sena e Tarchini in 1984 and she is admitted to the Bar in Bologna since 1990 and to the Supreme Court Bar since 2003. From 1985 to 2005 teaching assistant of Industrial Law at the Università degli Studi of Milan, Faculty of Industrial Law. Since 2014 she is a lecturer in Industrial and Intellectual Property Law at Poli.Design – Consorzio del Politecnico of Milan. Author of various publications. Member of the LIDC (International League of Competition Law), AIPPI (International Association for IP Protection), INDICAM (Centromarca Institute for the Fight against Counterfeiting), UAE (European Lawyers’ Union). Speaker at various national and international conferences. Languages: Italian, English, French.

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