Gibson and Warwick both score victories in legal battles
The long-running dispute over Gibson’s body shape trademarks takes a fresh twist with both sides securing victories in European courts.
Image: Eleanor Jane
The legal dispute between Gibson and Warwick over the former’s body shapes sprung back to life yesterday (4 November).
Warwick has claimed victory in German court regarding an injunction on the Wolf Hoffmann signature model, while Guitar.com has learned that Gibson has scored a series of victories in the EU Intellectual Property Office’s appeals division over its Les Paul, Flying V and ES trademarks.
Gibson first brought a case against Warwick over the Framus Wolf Hoffman signature model back in 2014. Gibson sought an injunction against the guitar being sold (which at that time was marketed as a ‘Flying V’) as well as damages, and was successful in the first two preliminary injunction hearings, as well as the first main proceedings.
Warwick then took the case to the Hamburg Higher Regional Court, which ruled in the brand’s favour that the guitar did not infringe Gibson’s trademarks, despite similarities in design. Reasons for this ruling included that potential buyers could not be regarded as ‘laymen’ and therefore understood the differences between the two guitars, and also noted the technical and physical differences between the two designs.
While agreeing that there were “indisputable similarities in the shape of the body and headstock” between the guitars, the court ruled that there were “discernible and therefore not only insignificant deviations from the complaint pattern for the overall impression”.
“After three recent decisions of the courts in Hamburg in favour of Gibson in the same matter, the Hamburg Court Of Appeal now rejected claims against Warwick based on unfair competition,” Gibson told Guitar.com.
“The court confirmed that the Flying V is individual and stands out in the market and that Warwick had copied the design. However, the court found that customers are not misled and Warwick does not take unfair advantage of the reputation of the Flying V.”
Gibson will be appealing the regional court’s ruling.
Before this setback in the Hoffman case, however, Guitar.com has learned that Gibson previously scored recent successes in its effort to protect its existing trademarks against Warwick with the European Union Intellectual Property Office (EUIPO).
Warwick had appealed against Gibson’s filing of 3D trademarks for the Les Paul, SG, Flying V and ES shapes (initially submitted in 2011), and sought to have them cancelled in the same way that it had successfully argued in case of the non-3D shapes of the Thunderbird/Firebird and Flying V in February 2020 and June 2019 respectively.
However, in this instance, the EUIPO ruled that because the 3D trademarks in question clearly sported the manufacturer’s logo in each instance, Warwick’s arguments were “insufficient to question the distinctiveness” of the trademark and in fact that the marks were “inherently distinctive” as a result of the presence of the Gibson and Epiphone logos on each mark.
Warwick was ordered to pay €1,000 costs for each of the unsuccessful appeals, while Guitar.com understands that Gibson has begun the process of appealing the Hamburg Higher Regional Court ruling in the Wolf Hoffman case at the German Federal Supreme Court.
“Gibson will continue enforcing its rights in its unique guitar designs against Warwick and any other competitor infringing its rights,” Gibson told Guitar.com.
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