Ten years have passed since the beginning of this controversy between Italy and China, or perhaps it is better to say between Piaggio and Zhejiang Zhongneng Industry Group.
The Italian group had filed a request with the European Union Intellectual Property Office (Euipo) to register the “three-dimensional sign corresponding to the shape of a Vespa scooter” to protect their historic scooter from imitations.
The request was granted and, in 2014, the design, or rather, the shape of the Vespa became a true registered trademark protected for “scooters” and “miniature scooter models.”
The Chinese Zhejiang Zhongneng Industry Group, who in 2018 entered the Italian market directly by acquiring Moto Morini from Bologna, filed an appeal for the trademark to be canceled and, consequently, protected.
In 2021, Euipo decided in favor of the Chinese, citing “lack of evidence of distinctiveness” of the Vespa shape and the subsequent cancellation of the trademark registration (and intellectual property of the three-dimensional sign corresponding to the shape of a scooter). Piaggio does not give up and appeals to the Court of Justice of the EU.
The Court finally ruled in favor of Piaggio, declaring that the trademark corresponding to the shape of a “Vespa” scooter is recognizable throughout the EU, which overturned the decision of the European Union Intellectual Property Office (Euipo), responsible for managing EU trademarks, designs, and models.
The Court decided that a registered EU trademark cannot be declared null if, through use, it has acquired distinctive character after registration. Therefore, Vespa cannot be imitated.
This decision, unfortunately, will not help the numerous cases of “imitated/copied” motorcycles, mostly coming from China, reported almost weekly, involving famous brands, from Honda to Ducati (remember the Ducasu 400?), passing through Harley-Davidson and Moto Guzzi. In these cases, it is difficult, if not impossible, to initiate legal proceedings and the coverage offered by patent registration is unstable and easily circumvented, unless one goes too far and also copies the company’s registered trademark.
