di Mauro Nigro
By its decision of 28 June 2019 in case T-340/18, the General Court (EU), upholding the decision of the EUIPO Second Board of Appeal, declared the partial invalidity of shape mark no. 009179953, shown hereunder, filed with the EUIPO on 16 June 2010 and registered on 26 November 2010 by the US company Gibson Brand Inc. (“Gibson”) for goods in classes 9, 15 and 25, on the grounds that it lacked distinctive character with respect to goods claimed in class 15 (musical instruments).
Shape trademark no. 009179953 was originally the subject-matter of a claim of partial invalidity filed on 7 October 2014 by Mr. Hans-Peter Wilfer in relation to musical instruments in class 15. In its decision of 21 December 2016 the EUIPO Cancellation Division had declared the partial invalidity of said mark on the grounds that it lacked distinctive character.
The decision of the Cancellation Division was appealed by Gibson on 27 February 2017. By decision of 8 March 2018, the EUIPO Second Board of Appeal dismissed the appeal, stating that although electric guitars with the “V” shape were considered unusual when they were first launched in 1958, the shape is now considered only one of the possible shapes of electric guitars on the market. Indeed, according to the Cancellation Division the shape covered by the Gibson three-dimensional mark did not differ significantly from the other shapes on the market when the mark was filed (2010, i.e. more than 50 years after its launch) and the fact that, according to Gibson, there were counterfeit reproductions of the “Flying V” design on the market was also irrelevant. In its decision the Appeal Board also ruled that the evidence filed by Gibson by way of proving the distinctive character acquired by the mark following use made thereof was insufficient.
The conclusions of the Appeal Board were upheld by the General Court (EU), which dismissed the appeal lodged by Gibson on 31 May 2018 against said decison.
In particular, with respect to the first ground of the appeal, the Court confirmed that the originality of the shape must be evaluated taking into account the market situationwhen the three-dimensional mark wasfiled, in this case 16 June 2010. It held that the presence on the market of shapes which the appellant claimed were counterfeit was also irrelevant for the purposes of assessing the distinctive character of the mark,. Therefore, given the fact that “V” shaped guitars were relatively common on the marketwhen the mark was filed by Gibson, the shape cannot be considered relevant in the eyes of consumers for the purposes of indicating the origin of the product.
The Court also upheld the argument in the decision of the EUIPO Board of Appeal with respect to supposed acquisition by the three-dimensional mark of distinctive character following use made thereof by the appellant, stating that the documentation submitted was insufficient for the purposes of proving that the contested mark had acquired distinctive character throughout the EU among the relevant public. The Court also ruled that, due to the presence on the market of various types of “V” shaped guitars, the mere shape of the product was not sufficient per se to serve to indicate the origin of the product.
Following the above decision there is much anticipation as to what Gibson will do next: accept the verdict of the Court or make recourse to the CJEU to protect the three-dimensional mark so beloved of guitarists of the calibre of Jimi Hendrix and Carlos Santana?
What is certain is that, in the latter case, Gibson would do well to act more quickly than it did in originally filing the mark!