German Guitar Company Successful Against Gibson Brands, Inc.

German Guitar Company Successful Against Gibson Brands, Inc.

Lyndhurst, NJ – July 2, 2019 – Warwick GmbH & Co. (“Warwick”), a German guitar company, was successful in a longstanding trademark dispute with Gibson Brands, Inc. (“Gibson”) before the Second Chamber of the EU General Court. The trademark dispute was regarding the cancellation of Gibson’s V-Shaped guitar trademark. Scarinci Hollenbeck Intellectual Property attorney Ronald S. Bienstock provided crucial assistance in the representation of Warwick in this case.

Warwick argued that the V-Shaped guitar cannot act as a trademark for a musical instrument in the EU. In a decision issued June 28, 2019, the Second Chamber agreed that numerous guitar manufacturers across the World make V-shaped guitars and, thus, the relevant public does not view V-Shaped guitars as belonging to any single guitar maker. This marks the third time Gibson has lost a decision in this case.

If this decision is not appealed by Gibson, its impact on the musical instrument industry will be profound, as guitar manufacturers will be permitted to market their own V-Shaped guitars in the European Union.

Background

In 2010, Gibson filed an application for registration of the “Flying V” guitar body shape with the European Union Intellectual Property Office (EUIPO). Later that year, it became an officially registered trademark with the EUIPO. In 2014, Hans-Peter Wilfer, the owner of Warwick, filed an application for declaration of partial invalidity of the challenged mark due to its registration under “musical instruments.”

In 2016, the Cancellation Division of the EUIPO upheld Mr. Wilfer’s application for a declaration of partial invalidity. The Cancellation Division held that Gibson, Inc. failed to establish the distinctive character required by the particular trademark in which the company applied for. Thereafter, Gibson, Inc. filed an appeal against the decision of the Cancellation Division.

In 2018, the Second Board of Appeal of the EUIPO dismissed Gibson’s appeal, holding the V-Shaped guitar body is now perceived by the market as one possible variant of the many shapes of electric guitars and is no longer a departure from the “norms and customs” of the electric guitar sector. Gibson contested this decision, which was then brought before the Second Chamber of the EU General Court.

Gibson, Inc. Files Two Pleas before Second Chamber of EU General Court

In response to the Board of Appeal’s decision, Gibson filed two pleas: one based on an infringement of Article 52(1)(a), and another claiming the Board of Appeal failed to properly apply the standard for assessing the inherent distinctiveness of the challenged trademark.

In support of its position in this matter, Warwick previously submitted thousands of images from catalogs, trade magazines, advertisements, and editorials from the United States, Canada, and the European Union, depicting non-Gibson manufactured V-Shaped guitars.  Counsel also submitted images of hundreds of famous musicians using V-Shaped guitars produced by other guitar makers.  The Second Chamber’s far-reaching decision affirmed the Board of Appeal’s determination that these publications, including those from North America, were relevant to show that the guitar market is a global one. 

Gibson’s main argument in support of its overall position was that it created the V-Shaped guitar in 1958 and, at that time, it was a unique guitar body shape.  Further, Gibson claimed that other guitars using this body shape that are not manufactured by Gibson are “counterfeit.”  The Second Chamber denied these arguments, holding any originality the shape may have had 50 years ago does not make up for the fact the relevant public now is confronted by numerous companies making similar, if not identical, V-Shaped guitars.

Scarinci Hollenbeck Partner Ronald S. Bienstock assisted in the representation of Hans-Peter Wilfer of Warwick GmbH & Co. in this matter.