Intellectual property rights assessment on Vespa scooter. shivam.sagar.nift@gmail.com

1. ASSIGNMENT 3
INTELLUCTUAL PROPERTY
RIGHTS
Submitted by :
• Divya Singh Chouhan
• Shivam Sagar
Submitted to :
• Amisha Mehta

2. CONTENTS
 THE ORIGINS
 VESPA- THE SCOOTER
 Vespa -from 1946 to 2016
 TRADEMARK AND COPYRIGHT PROTECTION
 THE ISSUES
 THE CRITERIA’S FOR JUDGEMENT
 VESPA AS A TRADEMARK IN INDIA
 INDUSTRIAL DESIGN
 BIBLIOGRAPHY

3. THE ORIGIN
 Piaggio & C. SpA (Piaggio) is an Italian motor vehicle
manufacturer, which via its subsidiaries designs,
engineers, manufactures and distributes two wheeled
motor vehicles and compact commercial vehicles
under seven brands: Piaggio, Vespa, Gilera, Aprilia,
Moto Guzzi, Derbi, and Scarabeo.
 "The Piaggio company was founded in Genoa in 1884,
by twenty-year old Rinaldo Piaggio.
 Piaggio & C. SpA corporate headquarters are located
in Pontedera, Italy.
 Piaggio operates six research and development
centers and operates in over 50 countries.

4. VESPA –the scooter
 Vespa is an Italian brand of scooter
manufactured by Piaggio.
 The name means wasp in Italian.
 The Vespa has evolved from a single
model motor scooter manufactured in
1946 by Piaggio & Co. S.p.A. of
Pontedera, Italy.
 Now it has a full line of scooter and one
of seven companies today owned by
Piaggio

5. Vespa -from 1946 to 2016
2016
1955
1946
1988
2001
2007
1974

7. TRADEMARK AND COPYRIGHT
PROTECTION
 With decision no. 1900/17 of 4 April 2017, the IP
Court of Turin granted three-dimensional
trademark and copyright protection to the famous
“Vespa” scooter by Piaggio.
 The case was started when Piaggio, maker of the
scooter Vespa, asserted rights arising out of its 3D
mark protected by Italian mark registration
1556520 filed in August 2013:
 The proceedings from which the decision
originates were started by two Chinese companies
Zhejiang Zhongneng Industry Group (“ZZIG”)
following a criminal complaint by Piaggio.

8.  ZZIG had three scooter models seized at the EICMA trade show in 2013 for alleged
breach of the three-dimensional trademark representing the Vespa LX, registered
by Piaggio in the same year.
 ZZIG offered for sale three scooters named “Revival”, protected by a Community
design registration no. 001783655-0002, “Cityzen” and “Ves”, the shape of which
was not covered by any registered IP right in Italy or in the European Union.
 As to Piaggio, the company owns the Italian 3D trademark no.1556520 claiming
priority of the Community trademark no. 011686482, filed on 7 August 2013 and
registered on 29 August 2013.

9. THE ISSUES
 Two companies filed a negative declaratory action requesting the
Turin IP Court to declare that their scooters did not infringe the
rights of Piaggio and that the three-dimensional trademark
portraying the Vespa was void for:
i. lack of novelty, it being anticipated by the plaintiffs’ models
ii. lack of distinctive character
iii. because it consisted of a shape that could not be registered as a
trademark pursuant to Art. 9 of the Italian IP Code.

10. THE CRITERIA’S FOR JUDGEMENT
 The Court noted that while only registered in 2013,
the logo depicting the Vespa had actually enjoyed
protection as an unregistered trademark since
2005, i.e. the launch year of the Vespa LX that was
portrayed there.
 This unregistered trademark could in fact be
regarded as well-known, and therefore be granted
substantially the same protection as registered
trademark.
 The Court of Turin declared that the Vespa
trademark does not lack of novelty, as it reflects a
model of Vespa marketed since 2005, before the
commercialization of ZZIG first scooter,
i.e.“Cityzen”.

11.  The Court also recognized that the trademark when issued had four distinctive
features of the shape of the Vespa:
i. The “X” shape detectable between the side bulges and the seat
ii. The “upside down Ω” shape in the connection between the seat and the footrest
iii. The “arrow” shape of the front shield
iv. The rear contour of the body, consisting of two drop-shaped .
 Moreover, the Court of Turin excluded the existence of any absolute ground for
refusal, stating that its shape was not technical nor standard and not even
substantial as the reason why consumers chose the Vespa were not merely
aesthetical.
 Based on these findings, the Court finally affirmed that only the “Ves” scooter
constitute an infringement of Piaggio trademark.

12. VESPA AS A TRADEMARK IN INDIA

14. INDUSTRIAL DESIGN
 Vespa scooter is an industrial design product
with creative character and artistic value and
therefore protected under Art. 2 no. 10 of the
Italian copyright law.
 The exceptional and multiple awards from
numerous important cultural institutions, which
include the Vespa amongst the most important
pieces of design, confirm its creative character
and artistic value.
 It was actually heavily influenced by pre-World-
War-II Cushman scooters made in the US and
shipped to Italy by the Allies to act as field
transport for paratroopers and marines during
the war.

15. “the creative character and
artistic value of the design
work are attested and should
be assessed on the basis of
the recognition by the market
and the artistic circles,
considering the critical
acclaim, the prizes awarded,
the presence in museums, the
participation in exhibitions,
the dissemination of
publications in magazines“.

16. BIBLIOGRAPHY
 http://www.piaggiogroup.com
 http://www.vespa.in
 https://ipindiaonline.gov.in/tmrpublicsearch/tmsearch.aspx?tn=77648687&st=Wor
dmark
 https://iplens.org/2017/06/26/the-shape-of-the-worldwide-famous-vespa-obtains-
protection-in-italy-under-copyright-law/
 http://www.martinimanna.com/the-piaggio-vespa-is-granted-three-dimensional-
trademark-and-copyright-protection/