The European Union Intellectual Property Office (EUIPO) has rejected the Piaggio Group’s attempt to register a three-dimensional trademark for the shape of a scooter. The Piaggio Group, manufacturer of the iconic Vespa, had filed an application to protect the shape of a scooter in classes 12 (scooters) and 28 (scooter models). However, the EUIPO refused the registration, citing that the shape of the scooter does not deviate significantly from industry standards and is therefore not distinctive.
The EUIPO noted that the relevant public does not perceive a shape mark in the same way as a word mark, and that only a trademark that deviates significantly from the norm or practices of the sector is not devoid of distinctive character. The Piaggio Group had argued that three features of its scooter stood out from industry standards, but the EUIPO dismissed these arguments, finding that the overall impression of the scooter is very similar to other scooters on the market.
This decision highlights the difficulty of protecting non-traditional trademarks, such as three-dimensional marks, color marks, and pattern marks. The EUIPO has consistently held that such marks must acquire distinctive character through use in order to be registrable. However, this can be a challenging and costly process, requiring evidence of use across all EU member states.
The Piaggio Group had referenced an earlier registration of a similar three-dimensional trademark, but the EUIPO noted that this mark had been maintained in the register due to its distinctive character acquired through use. The EUIPO found that the new mark was almost identical to the earlier mark and therefore could not be registered.
The key takeaway from this decision is that brand owners face significant challenges in protecting their non-traditional trademarks. While it may be possible to acquire distinctive character through use, the level of proof required by the European authorities is high, and the process can be complex and costly. Brand owners will be hoping for further relaxation of the requirements for assessing distinctive character in order to allow for more effective defense of their rights across the EU.