Although a number of similar elements were present, Piaggio failed with an application for invalidity against a more recent Community design. No impression of Déjà-vu was created, the CFI ruled.
Piaggio & C. (Italy) lost the case Piaggio & C./v EUIPO – Zhejiang Zhongneng Industry Group (China) (T-219/18) concerning the design of an e-scooter before the European Court of First Instance (CFI). Due to the lack of individual character of a design and also due to the use of the earlier sign with distinctive character in a design (see Article 25 of Regulation No 6/2002), the decision of the EUIPO Board of Appeal rejecting Piaggio & C.’s application for a declaration of invalidity of the design of a scooter was upheld.
Lack of individual character of the design
The fact that individual features of an older design are known in advance does not preclude the individual character of a newer design, the European Court already ruled in the invalidity proceedings for a luminaire design at the beginning of 2019. The decisive question is rather: Is there a déjà vu?
The court also argued in the Piaggio case. Although there are a number of common elements, the contested design and the earlier design “Vespa LX” produce different overall impressions on the informed user, the court ruled. Therefore, the contested design of Zhejiang Zhongneng Industry Group does not lack individual character within the meaning of Article 6 of Regulation No 6/2002 in relation to the earlier design.
In particular, Piaggio could not claim that the contested design gave the impression of “déjà vu” in relation to the earlier design, the CFI stated. General design tendencies also play no role in the assessment of individual character.
In addition, distinctive features of the earlier design were claimed which were perceptible to the informed user and influenced the overall impression. Therefore, the applicant submits that there has been use of an earlier sign with distinctive character in a design (under Article 25 of Regulation No 6/2002).
No likelihood of confusion
Nor is there any infringement of Article 25(1)(e) of Regulation No 6/2002 which Piaggio raised in its appeal against the decision of the Board of Appeal.
The CFI held that the Board of Appeal was right to find that there was no likelihood of confusion on the part of the relevant public and no likelihood of association. The Board of Appeal reached its conclusions by means of an objective technical assessment of the differences between the designs at issue and also set out the reasons at the requisite legal level. More generally, the applicant submits that the average consumer will, with a high degree of attention, perceive the style, lines and appearance of the three-dimensional shape of the scooter protected by the earlier mark as visually different from that of the contested design.
Furthermore, the Court of First Instance considered that the specific overall appearance and the particular shape with ’round, feminine and ‘old’ character’ of the earlier design could not be found in the contested design, which is characterised by straight lines and angles.
It follows from all of the foregoing that the contested designs are perceived as different, the CFI held, and therefore the application of Piaggio & C. for a declaration of invalidity of the newer design was rightly rejected.
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