03/12/2024
What is the product?
Italian automotive company, Pagani Automobili S.p.A. (Pagani) has produced high-end and limited edition sports cars since 1999. Since the initial models in 1999, Pagani’s cars have featured four channel exhaust pipes in the centre of the vehicles’ rear.
In 2016, Pagani filed and registered a figurative mark resembling the outer rims of the four exhaust pipes in Italy and EUIPO. These registrations are simple abstract marks and did not cover goods in Class 07 (exhaust pipes) and or vehicle parts in Class 12. Therefore, the registration would have limited effectiveness at protecting Pagani’s four channel exhaust pipes.
The application
In January 2022, Pagani filed a shape mark Italian application 302022000007064. It was registered October 2022 without objection.
An EUTM application was then filed claiming priority for 2 out of 4 views of the Italian application. It covers a wide range of goods in Class 07, including electric motors and their parts and automotive exhaust pipes, and in Class 12, including cars, parts and accessories therefor and vehicles for locomotion by land.. air.. water… rail.
In May 2023, the EUIPO Examiner issued a decision refusing the application, finding that the application lacked inherent and acquired distinctive character. The Examiner relied upon online examples of exhaust pipes with four channels from other automotive manufacturers and thus found that the mark does not depart significantly from other products shapes on the market. This is a common objection for shape marks in the EU or UK if the shape is part of the goods listed in the application.
The Examiner also found that Pagani’s evidence of use in the EU was not sufficient to establish acquired distinctive character. The Examiner claimed that the material only related to Italy, France, Spain and Germany and that not all of the material was directly related to the shape mark (rather relating to Pagani’s general commercial activity). The Examiner also claimed that some material presented as evidence showed exhaust pipes with slightly different appearances compared to the mark, for example the four exhausts being surrounded by a circular rim or the exhaust pipes configured as straight cylinders, rather than featuring vertical grooves on the outside.
BOA Decision
Pagani appealed the EUIPO’s decision, requesting it be annulled in its entirety, and restricted its specification to ‘Automotive exhaust pipes; Exhaust pipes for land vehicle motors and engines; Exhaust pipes for cars’ in Class 07 and ‘cars, parts and accessories therefor’ in Class 12.
The Board of Appeal distinguished between exhaust collectors, which are located underneath a vehicle and are categorised in Class 12, and exhaust pipes, which are visible from the rear of the vehicle and are categorised in Class 07. Subsequently, the Board found that some examples of comparably shaped goods provided by the EUIPO Examiner related to exhaust collectors rather than exhaust pipes and thus were not relevant for assessing distinctive character of the mark for goods in Class 07.
After making this procedural distinction, the Board found that exhaust collectors often have four channels and thus the mark of the application did not differ from market norms for goods in Class 12, even if the examples cited by the Examiner were not identical.
However, the Board partially reversed the EUIPO’s decision, holding that the mark of the application was distinctive for exhaust pipes, as most four channelled exhaust pipes are arranged in a single line or separated into two pairs rather than a 2×2 square.
Considering whether the shape mark had acquired distinctive character through use for car parts in Class 12 based on Pagani’s evidence, the Board reiterated EUIPO Examiner’s criticism regarding the evidence’s focus on Italy, France, Spain and Germany – noting that no evidence related to the Baltics, Bulgaria, and Ireland. The Board and ultimately upheld the Examiner’s finding that there is no acquired distinctive character for goods in Class 12.
Consequences
Following the BOA’s decision, Pagani’s mark has proceeded to publication covering exhaust pipes in Class 07. While Pagani did not secure protection in Class 12, they perhaps could still challenge an infringing exhaust collector or a similar shape mark application for goods in Class 12 by claiming similar goods.
Given the Board of Appeal’s focus on exhaust pipes being exterior and publicly visible, this mark may only protect exhaust pipes which feature curved rimmed channels visible from the outside. From Pagani’s evidence, it is clear that some of their models feature straight cylindrical exhaust pipes and for others only ends of the exhaust pipe are visible from the outside.
Pagani has registered a shape mark in Italy for four exhausts inside a circular rim. However, they have not yet applied for that mark at the EUIPO.
Pagani have also registered multiple designs with EUIPO, featuring line drawings of their vehicle exteriors and including the four channelled exhaust pipes. However they do not have design protection for the exhaust pipes alone. The test for prior design art / design infringement, whether the design produces a different overall impression or not, will have to consider the entirety of the vehicle exterior shown in the registered design, and not just the pipes.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
