Neither the 3D Union mark of the guitar manufacturer Gibson nor the Union figurative mark of the exclusive PSR guitar are valid before the EUIPO or the European Court for lack of distinctiveness. Famous brand guitar – but no EU trademark.
Brand Gibson Guitar
Guitar manufacturer Gibson Brands, Inc. (USA) lost the trademark dispute before the European Court (CJEU, Court of first instance) at the end of June. Gibson had registered a 3D Union mark in 2010 – among others in the Nice class 15 “Musical instruments” – which represented the classic V-shape of a Gibson guitar. Gibson is the manufacturer of the original Flying V guitar, which was absolutely original in 1958 – as confirmed by the European Patent and Trademark Office (EUIPO) and the European Court of Justice. However, the originality of a shape must be assessed in the light of the market situation arising from the filing date of a 3-dimensional trade mark application, the Court held.
And when Gibson registered the 3D brand with EUIPO in 2010, there were a variety of different shapes of guitar bodies on the market, from the traditional rounded shape to angular V or X shapes to shapes that mimic an axe.
Gibson argued that the challenged mark had a shape with a specific character and a unique and distinctive appearance which is easy to remember so that it is perceived as an indication of commercial origin and also referred to decisions of the Court of Justice and of the German Federal Supreme Court interpreting “substantial departure from the rules or customs”. Judgments in that regard had taken account of certain individual aspects of a 3-dimensional mark as compared with a conventional description.
This was rejected by the European court. The mark applied for is only one possible variant of the many existing shapes, so that the V shape did not depart significantly from the norms and customs of the sector when the application for registration of the contested mark was filed. The Court of First Instance held that it was not at all a question of whether the contested sign was a variant of the usual shape of the goods in question or not because it was a possible variant of the many existing shapes. The V-shape was therefore not at all a deviation from standards and customs.
Consequently, consumers could not base their purchasing decisions exclusively on the V shape as an indication of origin, since this shape had no inherent distinctive character, the CJEU ruled and dismissed Gibson’s action.
Brand PSR Guitar
In April, guitar manufacturer PSR (Paul Reed Smith Guitars’) with a similar trademark application had already failed before the EUIPO Board of Appeal. Although according to Wikipedia the PSR guitars are distinguished by their distinctive shape and sound, the trademark registration of an EU figurative mark “HEADSTOCK OF A GUITAR” with a silhouette of the head end of a PSR guitar was rejected. PSR had argued that each manufacturer would use one shape uniformly for its different models, such as acoustic guitars and electric guitars, and that consumers would be aware of and distinguish between them. Because applied logos or brand names are not recognizable from the relative distance in stage situations.
The Board of Appeal found that the motives of the producers were not relevant and rejected PSR’s argument. The relevant consideration is the perception of the general consumer, who would not assume that the guitars have different commercial origins.
The Board of Appeal also rejected as irrelevant the applicant’s argument that it was not possible to prove that the specific shape had been used on the market. There was no need to demonstrate that the notified shape in the range of shapes was anticipated by competitors’ products. According to the applicant, the mark applied for is not a significant departure from the shape of the head of a guitar, which is common in the market.
Maybe also interesting: further judgments on distinctiveness
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- Position mark Bottle cap: no distinctive character
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