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News blog7 December 2023European Innovation Council and SMEs Executive Agency4 min read

EPO Invalidates Moderna's Vaccine Patent - CJUE Upholds Vespa’s 3D trade mark

European Patent Office Invalidates Moderna's Vaccine Patent

Despite the waning of the pandemic, the pharmaceutical giants involved in the development of COVID-19 vaccines continue to battle over intellectual property rights. In the latest episode of this patent war, the European Patent Office (EPO) has invalidated one of Moderna's key patents in favour of BioNTech/Pfizer.

Moderna had sued BioNTech, based in Mainz, Germany, in several European countries, claiming that its mRNA technology copied two key features protected by Moderna's patents. However, in a recent decision, the EPO revoked Moderna's patent EP3718565B1, which covered RNA-based vaccines for respiratory diseases. In other words, this patent covers an improved substance for the prevention of COVID and other respiratory illnesses.

In 2020 Moderna developed its 'Spikevax' vaccine and Pfizer and BioNTech simultaneously began selling their COVID-19 vaccine under the Comirnaty brand. However, the first infringement lawsuits were not filed until 2022. In September 2022, BioNTech and Pfizer filed an opposition against EP 565 with the EPO in Mainz. In December of the same year, both filed a countersuit against Moderna seeking to have Moderna's lawsuit dismissed, claiming that their patents are invalid and not infringed, and that Moderna's claims "far exceed their contributions to the field". For more information on these lawsuits, we invite you to read our previous blogs which you can see here and here.

More recently, on 21 November, the Opposition Division of the European Patent Office declared Moderna’s mRNA patent invalid. BioNTech expressed satisfaction, saying that this and other Moderna patents should never have been granted in the first place. Meanwhile, Moderna has announced its disagreement with the decision and plans to appeal.

The dispute over intellectual property rights in vaccine development is an important issue, not only for the companies involved, but also for the future of the vaccine market. Both Moderna and BioNtech have emphasised the need to clarify intellectual property rights for the future, while noting that they are not seeking damages for the duration of the public health emergency.


The Court of Justice of the European Union Upholds Vespa’s 3D trade mark

A decade-long legal battle came to an end on 29th November when the CJUE ruled in favour of the Italian company Piaggio in case T-19/22. This decision overturns the previous ruling of the European Union Intellectual Property Office (EUIPO) in 2021, which had favoured the Chinese giant Zhejiang Zhongneng Industry Group (Znen) in the dispute.

In 2013, Piaggio applied to the EUIPO to register a three-dimensional sign corresponding to the iconic shape of its Vespa scooter as an EU trade mark. In January 2014, the application was accepted for products related to "scooters" and "reduced scooter models".

I in 2018 Znen acquired Moto Morini with the strategic aim of expanding its presence in the Italian market and strengthening its position in the motorcycle industry. This acquisition gave Znen a base in Bologna, Italy, and a direct access to the European market, leveraging Moto Morini's reputation and expertise in manufacturing high-quality motorcycles. Znen sought the cancellation of Vespa's three-dimensional trade mark, and in 2021, the EUIPO cancelled the trade mark, supporting Znen's claim on the grounds of "lack of evidence of distinctiveness" of the Vespa shape. However, Piaggio did not yield and appealed to the Court of Justice of the European Union.

The recent ruling by the CJUE represents a significant turn in the case, supporting Piaggio's position that the three-dimensional shape of the Vespa has an iconic character that deserves protection against imitation. The judgment considers the annulment of the registration by the EUIPO to be a " misjudgment" and emphasises that "the evidence demonstrates the distinctive character acquired through the use of the brand throughout the European Union". The Court stated that a trade mark registered in the EU cannot be declared invalid if it has acquired distinctive character after registration. Piaggio presented solid evidence, including opinion polls, sales data, presence in prestigious museums such as the Museum of Modern Art in New York and appearances in internationally acclaimed films such as "Roman Holiday", as well as the existence of Vespa clubs in numerous Member States.

All in all, Piaggio's Vespa has emerged victorious from this protracted legal battle, consolidating its position as a distinctive and iconic brand in the European landscape. However, this is not the first legal encounter between Piaggio and Znen. In an earlier case, Znen had registered with EUIPO the design for a scooter in the European Union called "Ves”. Piaggio sought the cancellation of the model in 2014, arguing that it lacked novelty and individual character due to its similarity to the Vespa Lx. The EUIPO rejected the Piaggio’s action and five years later, the Court upheld the EUIPO's decision, ruling in favour of Znen and stating that the Ves scooter was not a plagiarism of the Vespa Lx, citing numerous and significant differences between the two.



Publication date
7 December 2023
European Innovation Council and SMEs Executive Agency