Gibson will be Flying Very low for a while (pardon the pun) given the outcome of its most recent Trademark dispute. For those of you newbies to the world of Guitars, the Gibson Flying V is an electric guitar model introduced by Gibson in 1958. The model offered a "futuristic" body design which was a radical alternative to its counterparts at the time. You may have seen Jimmie Hendrix, Lenny Kravitz play the Flying V or more locally Aussie Rockers "Jet" and the Principal of our law firm Sam Rees play a Gibson Flying V.
In June 2010 Gibson filed a patent application for the Flying V with the European Union Intellectual Property Office (EUIPO). While it was initially granted, in October 2014 the owner of Warwick and Framus (Hans-Peter Wilfer), challenged the registration of the mark in the class of musical instruments. In 2016, the case went before the EUIPO's Cancellation Division and the mark was declared invalid with respect to musical instruments. The EU General Court found that the Flying V body shape has "no demonstration of distinctive character". The court also stated in the judgement that while the Flying V "was very original when it was released on the market in 1958, it cannot however deny the evolution of the market during the following 50 years, which was henceforward characterized by a wide variety of available shapes." In other words, the Flying V three-dimensional body shape can no longer be claimed unique to the Gibson tribe. The Second Chamber of the EU General Court ruled that "when the application for registration of the challenged mark was filed, the V-shape did not depart significantly from the norms and customs of the sector."
The shape applied for therefore did not enable the relevant trade circles to distinguish the appellant's goods immediately and with certainty from those of a different brand. Some have argued otherwise those in the industry claim that a Flying V is an iconic and easily distinguishable shape. So what's in a shape? Trademarking is often heavily associated with brands and logos; however, there is significant value in protecting a shape. A shape trade mark is a three-dimensional shape used to distinguish the goods or services of one merchant from those another. If you take a second there is probably a handful of distinct shapes that will come to your mind when you think of a particular brand or product hint hint* (doritos, Toblerone, Pringles).
A shape that is already in common use and required in the normal course of trade can't be protected for example a normal wine bottle or a standard shoe box. In Australia, when applying for a shape trade mark, you may need to show that the shape:
1) distinguishes your goods or service from other traders; and
2) that it is not a copy of a shape already existing as an item in the marketplace.
To the detriment of all the Gibson Flying V fanatics out there, the lesson learned is that the distinctive character of a shape will be a foundational element in maintaining trade mark protection. Now Rock on!