(Again) IP protection for design models.

Possible, all but easy to obtain in Court.

Theoretically possible in most European jurisdictions, all but easy to obtain in Court.

In two posts, uploaded on this blog in January 15th and September 15th, 2019, I have reported about different – and sometimes disappointing - outcomes faced by plaintiffs when seeking IP protection in local Courts for their design models.

One of the disputes quoted in these earlier posts recently came to face a further development in front of the Court of Justice of the European Union (CJEU).

The background of the dispute.

At the dawn of the era when scooters started to hit the market as an ‘alternative’ transportation for all those who could not afford buying a car, an Italian brand – the “VESPA” – became an ‘icon’ among those vehicles. There is no doubt that the specific brand’s international success owed deeply to the fact that one of the Vespa scooters was used in William Wyler’s movie “Roman Holliday” (1953) with Gregory Peck and Audrey Hepburn browsing Rome’s famous landmarks.

While the brand’s origins go back to the 40ies, it is still around (in are more modern and technologically advanced version), owned by the Piaggio company. It is also a fact that almost all of today’s scooters owe a little to the design of the original Vespa.

Sometimes the similarities go a bit too far and therefore the company owning the brand feels compelled to seek protection in court for its IP rights.

If you are an icon, you easily get imitated. Fighting it out in Court.

One of the disputes involved the products of a Chinese company, which offered on the local market several scooter models, one of them branded as “VES”.

A First Instance IP Court in Turin was approached with the Italian plaintiff claiming protection and injunctive measures for all of 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.

The merits of the dispute have been resolved by the First Instance Court in Turin through a decision (no. 1900, issued on April 6th, 2017) 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 both, under the Italian Copyright Act as well as under the provisions of the Industrial Property Code,

- 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. 

Second round: Court of Appeals in Turin.

Disappointed by such outcome of the dispute, the Chinese company filed an appeal, which also turned out unsuccessful. The Court of Appeals - through its decision no. 677 of April 16th, 2019 - confirmed the First Instance Court’s statements and dismissed the Chinese plaintiff’s grounds of appeal by holding that:

- under the local Industrial Property Code an industrial design may be recognized and protected as a three-dimensional mark, even if it had been previously registered as a design model,

- in order to benefit from protection under the local copyright provisions a design model had to meet the requirements of ‘novelty’ and ‘creativity’, while ‘broad value recognition’ of an industrial product by cultural circles did not result in a ‘requirement’ suitable to grant IP protection but had rather to be considered as an indication or proof of the two mentioned constitutive elements (novelty and creativity).

Interestingly, then the Court went on to clarify that the IP protection had to be assigned not just to the ‘original’ VESPA model but also to all later developments of such model reproducing the distinctive characteristics of the initial design. 

Multiple legal strategies.

However, such second instance decision did not put an end to the dispute as the Chinese manufacturers of the slightly too similar VES scooters had chosen to rely on an alternative strategy.

Back in 2010, they filed an application with the EUIPO for the registration of a design model for their own scooters. A few months earlier they had filed an identical application with the competent national office.

The EUIPO accepted the application and the registration was issued on November 19th, 2010 (with priority set at July 13th, 2010, the date of the national registration).

In November 2014, the Italian Piaggio company approached the EUIPO and claimed the registration to be declared null and void. Such claim was based on the argument that the registered models lacked the elements of novelty and individual character as Piaggio had previously put identical scooter models on the market. In addition, the Italian company argued that through a use over years of its own models and their highly distinctive individual characteristics, the position of a (non-registered) tri-dimensional de-facto trademark had been achieved.

In June 2015, the EUIPO found that, while the contested registered design models fulfilled the ‘novelty’ element, they however did not meet the ‘individual distinctive character’ requirement. Hence, the 2010 design model registration of the Chinese company was declared invalid.

In second instance, such decision was overturned as the Board of Appeal found that:

- there were enough differences between the Italian and the Chinese scooter models to conclude in favor of the ‘novelty’ of the latter,

- the differences between the models had to be considered relevant and sufficiently numerous to conclude that the Chinese models did show distinctive individual character.

One level up, to the Court of Justice of the European Union (CJEU).

The Piaggio company challenged this EUIPO decision in front of the Court of Justice of the European Union (case number is T-219/18) seeking for its annulment as well as for an invalidity declaration with respect to the Chinese competitor’s design model registration.

Through decision dated September 24, 2019 the Sixth Chamber of the CJEU dismissed the plaintiff’s claims for invalidity of the questioned design registration, finding that:

- the plaintiff’s views on the competitor’s model lacking the elements of ‘novelty’ and ‘individual character’ could not be shared,

- in the previous stage of the dispute the plaintiff had failed to argue – and substantiate - properly the lack of ‘novelty’, resulting therefore impossible to discuss this aspect in the proceeding,

- the overall impression conveyed – to the informed consumer – by the Chinese scooter resulted significantly different from that delivered by the VESPA (the latter being characterized by predominantly ‘round’ contours, the other by angular ones), hence the Chinese product presented ‘individual character’,

- the differences would be correctly perceived by the relevant public, hence no risk of confusion and no trademark infringement could be found in the case,

- neither could the plaintiff’s arguments be shared as to the alleged copyright issues, presenting the iconic original Vespa scooter model (as such eligible for IP protection) the appearance of a ‘round, feminine and vintage character’, which resulted very different from that of the competing Chinese model.

Different cases, different outcomes.

While Piaggio was unsuccessful in defending its Vespa design model, another Italian company managed having uphold its complaint against a Polish competitor’s design registration.

The Ferrero Group is based in Piedmont, a region in the North of Italy, and is internationally known as a manufacturer of branded chocolate and confectionery products (Nutella and Kinder are two of its most popular brands). Another, well-known, product are their fresh mints, marketed under the “tictac“ brand and sold in a plastic container/dispenser, protected by an international registration as a tri-dimensional trademark for sweets, going back to 1974.

In 2007 a Polish company succeeded in registering a community design for its sweets’ containers. Such registration was questioned by Ferrero with an application for declaration of invalidity. EUIPO’s Cancellation Division granted such declaration (through decision dated April 25th, 2011), considering that due to the similarity of the signs and the identity of the products, there was a likelihood of confusion on the part of the relevant public.

EUIPO’s Third Board of Appeal confirmed the first instance decision and upheld the invalidity of the contested design.

At this point the dispute went up to the Court of Justice of the European Union, first to the General Court, which dismissed the Polish company’s application (case number is T-695/15, decision October 3rd, 2015, then, on appeal, to the Tenth Chamber of the CJEU (case number C-693/17 P), which, again, confirmed the earlier decision (by judgement dated March 6th, 2019).

Both decisions of the CJEU are primarily based on procedural issues.


‘Case-law’ is exactly what the term says, i.e. the decision of a specific case with legal principles which may – or may not and certainly will not automatically – apply to other, more or less similar disputes. Hence, a judicial precedent that appears to solve your case does not necessarily – and always – constitute a paved track to an expected destination. A judge’s evaluation of the facts, his personal sensitiveness towards a certain issue, the legal strategy chosen by the lawyers, other additional aspects, may easily impact on the outcome of a dispute. While staying up to date with case-law is certainly crucial, a strong focus on the details of the specific case should never be missed.