IP protection for a scooter design model.

Roman Holiday

Movie fans of my age will recall “Roman Holiday” (1953) starring Hollywood heavyweights Gregory Peck and Audrey Hepburn as main characters. One of the most iconic moments of the film presents Gregory and Audrey browsing some famous landmarks of Rome’s historic center on a Vespa scooter, at the time – and for decades to come – simply The Scooter.

Famous brands and IP protection.

The Vespa brand - created in the 40ies and still around today, with models’ styling obviously adapted to technological development and varying trends - is testimony of an unrivalled success story, as almost all scooters worldwide owe a little to the design of the Vespa.

Excessive similarities in competing products and brand names.

Well, some of the competing products maybe owing a little too much, in the view of the company owning the brand. Therefore, in 2013, at a major motorcycle show (EICMA), the latter sought for – and obtained – a seize order against seven other exhibitors, considering eleven of the scooters presented as counterfeiting Vespa models (one of them branded “Ves”). Hence, reciprocal lawsuits in front of the Corporate and IP Section of an Italian First Instance Court, with Piaggio (the company owning the Vespa brand) claiming design model protection and injunctive measures for all its scooter models produced since the 40ies and the opposing Chinese company seeking annulment of the three-dimensional “Vespa” mark as well as a non-infringement declaratory judgement with respect to the “Ves” denomination of its own scooter.

Going to Court with a counterfeiting claim.

The merits of the dispute have been resolved by the First Instance Court in Turin through a decision setting that:
- the features of the of the “Vespa” scooter models constituted an industrial design model, characterized by ‘artistic and creative value’, therefore benefitting from the exclusivity positions granted to IP right holders under the Italian Copyright Act,
- the Chinese company, by imitating the characteristic features of the “Vespa” models and by using the denomination of “Ves” for its own scooters, had infringed on the Italian company’s IP rights, therefore being ordered to immediately cease such illegal conduct and to restrain from further violations,
- the Chinese company’s claim for a non-infringement declaration had to be dismissed.  

Problems left after the Court's decision.

The impact of such decision for all companies selling scooters in Italy appears to be rather significant and – to certain extent – worrying. One cannot help wondering about the exact meaning of the decision and the extent of the protection granted: Vespa scooters offer more than one ‘characteristic feature’, e.g. the positioning of the motor under the seat, the peculiar rounded shape of the covers hiding the motor, the form of the front shield and headlight, the footboard (in the past, the kick-start mechanism). It is the overall general impression competitors will need to consider or will they have to take into account also the peculiar features of the scooter’s single parts?
It will be interesting to see the future development and – specifically – how Piaggio will structure the enforcement of the decision to protect its iconic brand.