On June 16 2010, the applicant, Gibson Brands Inc., filed an application for a tridimensional EU trademark which represented the shape of a guitar body as follows:

The goods embodied in the application of the EUTM, are those in Class 9, 15 and 25. In particular is sought the protection of musical instruments (Class 15).

EUIPO accepted the registration of the subject mark on July 20, 2010 under Registration No. 9179953. On October 7, 2014, a third party filed an action for a declaration of partial invalidity for the goods embodied in Class 15 pursuant to Article 59(1)(a) of Regulation 2017/1001 in conjunction with Article 7(1)(b), (d) and (e) of the aforementioned Regulation. In first Instance it was upheld the application for a declaration of partial invalidity in so far as the challenged mark was not distinctive enough for the registered goods in Class 15 and the applicant failed to prove the acquired distinctiveness through use as to maintain the registration in force.

Subsequently, an Appeal was filed which was entirely dismissed by the Second Board of Appeal. It was upheld that the trademark shape would be immediately recognized by the consumer with the shape of an electric guitar V-shaped taking into account the market sector as well as that the body of evidence were not sufficient to be considered by the Office to prove the acquired distinctiveness through use.

The Second Chamber of the General Court of the European Union has now ruled the judgement dated June 28, 2019, matter T340/18. The Court replies to the two pleas in law alleged by the Appellant as follows:

  • Infringement of Article 59(1)(a) of the Regulation in conjunction with Article 7(1)(b) thereof and breach of the duty to state reasons. The Court considers that the body of evidence submitted by the counterparty as to be able to assess the level of distinctiveness of the subject mark by the Office, were sufficient to assess the consumers’ perception within the European Union in relation to the sign and the market sector (electric guitars), as the market is to be considered as a global market. Likewise, highlights that the Office has duly argued the statements and thus the plea is entirely rejected.
  • Infringement of Article 59 (2) of the Regulation read in conjunction with Article 7(3) thereof. The Appellant states that the influence of his trademark reputation (a V-shaped guitar) has not been taken into consideration in the Appeal submitted before the Office when assessing the body of evidence. The Court quotes one more time well-known case law in relation to the territory that should be covered by the proves of use. In this regard, the Appellant only showed the presence of dealers in 2 Member States, not providing with sales data such as invoices, sales numbers… and those cannot be extrapolated to the remaining Member States.

Judgement of the General Court (Second Chamber) of June 28, 2019, Matter T340/18.

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