January 6, 2020
Gibson, master craftsman of guitars, has lost its trademark in the Firebird guitar body shape in the European Union. The loss comes on the heels of the EU’s decision in June to cancel Gibson’s trademark in the Flying V guitar body shape. The trademarks for both the Flying V and the Firebird were challenged by Hans-Peter Wilder, founder and owner of Warwick and Framus guitars.
The Cancellation Division of the EU Intellectual Property Office (“EUIPO”) recently ruled that the Firebird body shape is not “significantly different from the normal style of electric guitars”. While the EUIPO acknowledged that expert guitarists would recognize the shape, it stated that the view of the average, non-guitar playing person is what is relevant in assessing a trademark’s distinctiveness:
Guitar body shapes may perhaps function as trademarks for a tiny club of expert and discerning guitarists, but not for the average amateur, who is the relevant public in assessing distinctive character in this case.
Further, Gibson waited nearly 50 years to file a trademark for the Firebird’s shape, which was cited as a contributing factor by the EUIPO.
Despite the ruling, the Firebird body shape continues to be trademarked inside the EU on other products, such as clothing and merchandise.
Author: Scott Kerr and Daniela Cerrone