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Trademarks / Designs

Validity of three-dimensional trademarks: a glimpse of hope?


In its ruling of 29 November 2023, the European Court of Justice (ECJ) overturned the decision of the EUIPO Board of Appeal, which had invalidated the Vespa three-dimensional trademark of Piaggio for lack of distinctive character.

The ECJ found that the pieces of evidence submitted by Piaggo to justify the acquisition of distinctive character through use, such as the presence of the "Vespa" in the Museum of Modern Art in New York and the existence of "Vespa" clubs in numerous Member States, were sufficient to demonstrate "the iconic character of the Vespa scooter and  its global recognizability throughout the Union".

In two other decisions of 6 December 2023, the ECJ ruled on the distinctive character of the Lego 3D trademarks representing the famous toy figurine.

In this case, an invalidity application was filed against these trademarks on the grounds that they consisted exclusively of the shape which results from the nature of the goods themselves, on the one hand, and, of the shape of goods which is necessary to obtain a technical result, on the other hand.

Both claims were rejected by the ECJ which held that the shape of the toy figurine:

  • may vary according to a "broad freedom of design" and is therefore not dictated by its nature, and
  • has a dual function, namely the non-technical function of playing with a "little man" and the technical function of being assembled with other parts.

The outcome of these two rulings is encouraging for applicants of three-dimensional trademarks, which may prove very difficult to obtain.

Our teams will be happy to assist you in these steps.

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