CANCELLATION No 11 911 C (INVALIDITY)

Hans-Peter Wilfer, Zum Hackerhof 5, 08258 Markneukirchen, Germany, (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnershaft mbB, Widenmayerstr. 47, 80538 Munich, Germany (professional representative)

a g a i n s t

Gibson Brands, Inc., 309 Plus Park Boulevard, 37217 Nashville, Tennessee, United States of America (EUTM proprietor), represented by Hogan Lovells, Avenida Maisonave 22, 03003 Alicante, Spain (professional representative).

On 21/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 12 850 814 is declared invalid for all the contested goods, namely:

Class 15:         Musical instruments.

3.        The European Union trade mark remains registered for all the uncontested goods, namely:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; recorded content; databases (electronic); media content; software; games software; computer operating systems; information technology and audiovisual equipment; apparatus and instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; measuring, detecting and monitoring instruments, indicators and controllers; audio recordings; music recordings; records (sound recordings); recorded compact discs; digital music downloadable from a computer database or the Internet; downloadable musical files and musical sound recordings; podcasts; pre-recorded audio tapes; audio-visual recordings; pre-recorded videos; animated cartoons and films; cinematic films; downloadable image files; downloadable electronic publications; downloadable graphics for mobile phones; holographic films; recorded discs bearing sound; recorded discs bearing images; computer hardware.

Class 15:         Musical accessories; musical instrument parts and fittings.

Class 28:         Sporting articles and equipment; hunting and fishing equipment; swimming equipment; festive decorations and artificial Christmas trees; fairground and playground apparatus; toys, games, playthings and novelties; video game apparatus.

        

4.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 12 850 814  (3D mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 15:         Musical instruments.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article  7(1)(b)(d) and (e)(i) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

By an application filed on 12/10/2015, the applicant requested the invalidation of the contested trade mark for musical instruments and, in the alternative, requested an oral hearing. It argues that the contested trade mark has been registered contrary to Article 7(1)(b) EUTMR and has not acquired distinctive character through use in relation to musical instruments. The trade mark consists of the shape of a guitar with headstock, fingerboard, pickguard and volume knobs. Decisions from the office or the board of appeal about refusals of registration of shapes of guitars are quoted (in particular decision R 1333/2013-1 of 06/05/2014 confirming the cancellation of EUTMR N° 8 843 311). The contested trade mark was filed three months after that decision of appeal. When comparing the marks, the proprietor tried to register the same mark incorporating further elements. The mark filed represents the goods, namely a bass guitar, and cannot serve as a badge of origin. The same shape is used by different competitors. The evidence demonstrates that the average consumer is accustomed to seeing shapes similar to the contested one and will perceive it as a simple variant of a guitar shape. The shape of the guitar or bass guitar used in the application has become customary in the bona fide and established practices of the trade. The trade mark should therefore be invalidated in accordance with Article 7(1)(d) EUTMR. The applicant has also argued that the EUTM should be invalidated in accordance with Article 7(1)(e)(i) EUTMR. This provision results from the public interest in the free use of specific shapes of the product in question, and the non-monopolisation of a whole category of goods. The trade mark consists of elements which have been used on the market for musical instruments for decades. The registration of such a shape is a monopolisation and therefore subject to Article 7(1)(e)(i) EUTMR.

In support of its observations, the applicant filed the following evidence:

• Annex 1: Copies of decisions 5625C of 17/05/2013 and R1333/2013-1 of 06/02/2014 about the shape of a guitar  among the same parties to the present case.
• Annex 2: Printouts of refused 3D EUTM application for shapes of guitars.
• Annex 3: Printouts of guitar manufacturers showing different guitars some with similar shapes, generally dated before 06/05/2014 (application date of the contested trade mark), and generally from North America magazines.

On 22/04/2016, the EUTM proprietor replies that the request for oral hearing is not admissible as an alternative to the invalidity action and would not be justified not appropriate in the present action. The EUTM proprietor then refers to the evidence already filed in other cases about the body shape of a guitar. It argues that the guitar shape, which they refer to as the ‘Explorer’, was inherently distinctive at the time of its creation in 1958 and has become famous and iconic. The EUTM proprietor then gives the background to the dispute. The applicant is a competitor. Its reasons to file the invalidity action are in retaliation for infringement proceedings brought by the EUTM proprietor.

In regards to Article 7(1)(b) EUTMR, the EUTM proprietor argues that the average consumer owns or is a potential owner or purchaser of electric guitars. The EUTM is inherently distinctive as already determined by the Office. The bell device is characteristic of the EUTM proprietor and serves as an indicator of origin even in the absence of any verbal element.

In any event, the EUTM has acquired distinctiveness through use in the European Union.

With regard to Article 7(1)(d) EUTMR, the EUTM proprietor submits that the shape was not customary in trade at the time of filing in May 2014.  As such, the claim should be disregarded.

With regard to Article 7(1)(e)(i) EUTMR, the EUTM proprietor argues that the Explorer guitar has several features which result from substantial design input, and none of the distinctive features result from the nature of the goods themselves. The Explorer guitar is an unnatural shape which does not consist exclusively of a shape which results from the nature of the goods themselves.

In support of its observations, the EUTM proprietor filed the following evidence on DVD without providing a proper list (despite the recommendations of the Office), therefore the evidence will be summarised hereafter by the Cancellation division ( while also taking into account a confidentiality request). Reference is made to the file for more details:

• Enclosure 1: Wikipedia extract in relation to Explorer.
• Enclosure 2: Article on Vintage Guitars, a US music magazine dated 2011 about the valuable Explorer guitars of 1958-59.
• Enclosure 3: Articles and videos regarding famous guitarists playing the Explorer guitar.
• Enclosure 4: Excerpts from the book ‘Guitar Heaven’ by Neville Marten
• Enclosure 5: Publication ‘Fyling V, Explorer, Firebird’ by Tony Bacon
• Enclosure 6: German article on www.zehn.de dated 2011 featuring the Explorer on page 4 among the most famous guitars in rock history.
• Enclosure 7: Post on Vintage Guitar’s, a US music magazine, about the valuable Explorer guitar, published in 11/2010.
• Enclosure 8: Articles about the Explorer guitar on www.gibson.com
• Enclosure 9: Extract from online offerings of Explorer guitars throughout the European Union.
• Enclosure 10: Wikipedia extract about Warwick GmbH & Co Music Equipment KG owned by the applicant.
• Enclosure 11: Copy of a preliminary injunction against the applicant before the Hamburg District Court with English translation about the Flying V guitar.
• Enclosure 12: Information about Gibson specific features forming part of the contested EUTM such as the neck of the Explorer, the pickguard and bridge.
• Enclosure 13: Affidavit signed by Bruce Mitchell, Gibson Brands, Inc.’s general counsel. The EUTM proprietor has sold 11 459 Explorer guitars in the UE between 2011 and 2014 corresponding to a sale volume of more than 4,787, 800 million US dollars.
• Enclosure 14: Extract from Wikipedia about the popularity of the Guitar Hero game.
• Enclosure 15: Collaboration between the EUTM proprietor and artist Catherine Lorent
• Enclosure 16: Copy of a court order of the US district court of Nashville dated 10/09/2009 confirming the injunction granted against the use of the Flying V and its shape against Tokaï.
• Enclosure 17: Injunction in the US against Wowwee and other retailers for the sale of replica of famous guitars including the Explorer.
• Enclosure 18 and 19: Press articles reporting Gibson’s legal victory to protect the ownership of some of its classic guitar shapes, including the Explorer.
• Enclosure 20: Copies of some confirmation from Hamer USA for the years 1997-2000 and 2007 of licence conditions for the production of the Explorer guitar.

In reply, the applicant answers on 04/08/2016 that while the contested shape of the guitar was launched in 1958, it was not successful until later on. Competitors began selling guitars which incorporated the Explorer guitar body. Therefore, the contested registration was not distinctive at the date of its application. The applicant insists that the perception of the relevant public is not necessarily the same in relation to a three dimensional mark consisting of the shape of the product as it is in relation to a word mark. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape. The applicant refers to several three dimensional trade marks for suitcases and other goods, which were refused because they did not differ from forms which are commonly used on the market. The applicant also stipulates that the relevant public is not necessarily made up of professional guitarists, but guitarists of average expertise who are reasonably attentive and observant. Considering the price of a guitar, the process of choosing one is long and the average consumer’s purchase would be focused on the business origins and brand name, not the shape: “Reasonably attentive average buyers of guitars do not attribute, prima facie, to the aspect of a guitar any trademark function, but product design significance.” (decision of 22/07/2010, R 1035/2004-1, ‘shape of a guitar’). In reference to the cited three dimensional trade marks which have been registered for musical instruments in class 15, the applicant argues that they are distinctive only because of additional elements, such as an additional word element. The bell device will be perceived as a decorative element but not as a trade mark. Also, the guitar shape was used by competitors at the registration date, so its use is customary in trade, and it is a common form which results from normal use of the product, consisting exclusively of the goods themselves. It is therefore a shape which consists exclusively of the shape which results from the nature of the goods. On the alleged acquired distinctiveness, the evidence provided (affidavit from Bruce Mitchell as enclosure 13) is insufficient. A trade mark has acquired distinctiveness if it is recognised by a sufficiently large part of the relevant public as a mark for one single trader. It is not simply to what extent the mark has been used.

In support of its observations, the applicant filed the following additional evidence:  

• Annex 4: Printout from Publication ‘American Guitars – An Illustrated History’ by Tom Wheeler
• Annex 5: Printout from the book ‘Gibson Flying V’
• Annex 6: Printout from the book ‘Flying V, Explorer, Firebird’ by Tony Bacon

In its last rejoinder of 23/12/2016, the EUTM proprietor argues that the contested trade mark enjoys a presumption of validity. The applicant failed to support its claims with clear and objective evidence. The actual background of these invalidity proceedings is an infringement counter-claim which the proprietor brought against the Applicant’s infringing use of the Explorer body shape pending before the District court of Frankfurt. The contested trade mark clearly functions as an indicator of origin. The relevant consumer is composed of both professionals and amateurs. The Board of Appeal’s decision R 1333/2013-1 of 06/02/2014 does not apply to the case at hand. The EUIPO is not bound by its previous decisions. The trade mark involved is different. The contested EUTM varies significantly to the norms and customs in the sector. The guitar is not symmetrical and 8 shaped, with a straight neck and a symmetrical headlock with an equal number of tuners on both sides. The Gibson Explorer is also strikingly different from the standard electric guitar shape on the market. The shape of the contested EUTM is neither a variant of a common shape nor is its shape intrinsic to the shape of a guitar. On the contrary, it is highly unusual, instantly recognizable and striking. It is known for its unique asymmetrical body-shape, which evokes a bolt of lightning. The contested EUTM is referred to as the ‘original’. The evidence submitted by the applicant in Annex 5 refers to ‘Explorer-style guitars’. Enclosure 6 refers to ‘copies of the explorer’. In the US market, the body shape of the Explorer is held to be distinctive. Alleged third party use did not influence the distinctive character of the contested EUTM. The evidence brought is insufficient. Most of the relevant third parties have undertaken in writing not to manufacture or distribute guitars in the shape of the Explorer in future. In any event, the contested EUTM has acquired enhanced distinctive character through use. The provision of Article 7(3) EUTMR also applies to distinctive character that was acquired before the application date. The consumer has been confronted with the Explorer for almost 60 years overall and at the very least almost 40 years of continuous use. The alleged initial commercial failure of the Explorer is irrelevant. It is also irrelevant that prices in the evidence are indicated in US dollars since the guitars were sold to consumers in Europe. Even if the relevant territory is the whole EU, it would be unreasonable to require proof of such acquisition for each individual Member state. The EUTM proprietor provided evidence regarding the whole EU as concern sales figures, advertising and promotional material and internet traffic on its website. It has also submitted invoices for sales of its Explorer guitar for all countries except Denmark, Estonia, Lithuania, Finland and Slovakia. The affidavit of Bruce Mitchell submitted is highly probative. In addition, the applicant provided no evidence that the sign has become customary in trade. The EUTM proprietor has consistently taken action against third parties to ensure that its Explorer guitar shape has not become customary in trade. Finally, the contested trade mark has not been registered contrary to Article 7(1)(e) EUTMR as it does not consist of a shape which results from the nature of the goods for which it is registered. The EUTM proprietor also filed the following evidence:

• Enclosure 21: Overview of norms and customs of the European guitar Market
• Enclosure 22: Printout of http://rebel-guitars.com about Rebel Guitars Business Policies with a © notice date 2016 and other companies in order to show that these companies offer international shipping.
• Enclosure 23: Printout of webpages of Rare Electrical Guitar, iOffer and Etsy online shopping platforms offering worldwide shipping.
• Enclosure 24: Non-exclusive licence agreement between the EUTM proprietor and KMC Music Inc. concerning the Explorer guitar to sell a limited number of guitars in the United States.

PRELIMINARY REMARKS

Request for oral hearing

In its first submission, the applicant requests an oral hearing as an alternative to the invalidity action. As pointed out correctly by the EUTM proprietor, the request for oral hearing is not admissible as an alternative to the invalidity action.

Article 77 EUTMR allows such a hearing to be held where it is deemed expedient. Article 77 EUTMR leaves it to the discretion of the Office to conduct oral proceedings. It is further to be recalled that oral proceedings shall be appropriate in particular when the Office considers it necessary to hear the oral evidences of the parties, of witnesses or of experts. In line with the practice of the Office that written proceedings are sufficient and that having oral proceedings is generally not necessary, the Cancellation Division considers that the granting of an oral hearing would not be expedient in the particular case at hand because the parties have had a proper opportunity to argue their case in writing. In addition, no explanation has been given of what oral evidence the EUTM proprietor would wish to present and why this evidence could not be presented in writing.

The Office decides to hear oral evidence only in exceptional cases, in particular because of the cumbersome nature of the procedure, which is liable to protract the proceedings, and because of its cost. In the case at hand, the Office deems that the parties sufficiently explained their arguments through their written statements and an oral hearing is not necessary to further clarify the matter at issue.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

The EUTM proprietor considers that the contested trade mark must benefit from a presumption of validity. The registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T-108/09, Memory, EU:T:2010:213, § 25).

Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 18).

Distinctive character – Article 52(1)(a) and Article 7(1)(b) EUTMR

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.

It is apparent from settled case-law that distinctive character must be assessed, first, by reference to the relevant goods and, second, by reference to the perception of the relevant public (see judgment of 08/052008, C-304/06,‘Eurohypo’, paragraphs 66 and 67). It should be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see judgment of 22/06/1999, C-342/97, 'Lloyd Schuhfabrik Meyer', para 26).

Relevant goods, relevant consumer and level of attention

The registered trade mark is contested for musical instruments in Class 15 and the three dimensional sign represents in fact the design of an electric guitar which is included in the general category ‘musical instruments’. This is not contested by the parties. Therefore, the contested trade mark consists of part of the goods themselves (see below developments about scope of the invalidity decision).

Both parties have provided submissions regarding who exactly the relevant public or average consumer is. Depending on which public is identified, the effect will relate to the level of attention paid to the trade mark, and subsequently, the ability of a three dimensional trade mark to possess sufficiently distinctive character.

Musical instruments including electric guitars are sold to musicians, professional or amateurs. Therefore the relevant public in the present case include musicians of average expertise. Nevertheless, the level of attention is higher than average considering the price of musical instruments and the fact that they are not consumed on a frequent basis since they are supposed to last (see decision of 22/07/2010, R 1035/2004-1, ‘shape of a guitar’).

Perception of three dimensional trade marks representing the goods

The criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those to be applied to other categories of trade mark (judgment of 18/06/2002, C-299/99, 'Philips', paragraph 48). Nevertheless, when those criteria are applied, account must be taken of the fact that the perception of the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word mark, a figurative mark or a three-dimensional mark not consisting of that appearance. Whilst the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself (see by analogy judgment of 08/04/2003, joined cases C-53/01, C-54/01, and C-55/01, 'Linde', paragraph 48).

The contested trade mark consists of the design of an electric guitar with headstock, pickguard, fingerboard and volume knobs without visible word elements. The fact that the representation is two dimensional while the trade mark was filed as a three dimensional trade mark does not preclude the mark being classified as a three dimensional mark as the filing of different views is only offered as an option.

Not all three dimensional trade marks lack the capacity to function as an indicator of origin (as previously mentioned, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those to be applied to other categories of trade mark (judgment of 18/06/2002, C-299/99, 'Philips', paragraph 48)). However, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character. Only a three dimensional mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR (see judgment of 29/04/2004, C-456-457/01, “Henkel”).

Perception of the Explorer Shape of the guitar on the date of application of the contested trade mark

The EUTM described by the EUTM proprietor as the ‘Explorer’ guitar has been deliberately designed to be an iconic shape. However, the Cancellation Division does not consider this to be in 2014 significantly different from the normal style of electric guitars. On the contrary, the public is accustomed of seeing electric guitars with different shapes and the evidence brought by the EUTM proprietor in order to show that the shape would be perceived as a unique trade origin is not sufficient to confer it with inherent distinctiveness.

Case law quoted by both parties shows that, at that date, there were many different futurist shapes of guitars on the market such as already quoted  in annex 4 (decision of 06/02/2014 in case R1333/2013-1 ‘shape of a guitar’).

According to the General Court’s case-law, it is not enough for the shape to be just a variant of a common shape or a variant of a number of shapes in an area where there is a wide diversity of designs (see judgment of 07/02/2002, T-88/00, ‘Torches’, paragraph 37). This is also true for the guitar market, which is flooded with different shapes as demonstrated by the applicant. Each manufacturer produces guitars according to dozens of different designs. This is not denied by the EUTM proprietor itself, who also manufactures guitars with different shapes.

As a consequence, the sign in question will be perceived by the relevant consumer as a simple variant of a guitar’s shape. The shape in question and the features displayed in the absence of other elements, such as a visible and distinctive word element, cannot be sufficiently distinguished from other shapes commonly used for the goods at issue.

The EUTM proprietor has also argued that the three dimensional shape of the trade mark is highly distinctive, and is a shape deliberately designed to be an iconic shape. Nevertheless, the point in time that this assessment must be made is the date of filing of the contested application on May 2014 namely more than fifty years after the creation of the guitar in the USA.

The EUTM proprietor itself demonstrated that the public is very frequently exposed to similar shapes and that it is not able to cope with all the numerous alleged copies.

Under Annex 3, the applicant provided several images of guitars which appear to be highly similar, if not identical to the EUTM. The images are of guitars which have been made mostly by companies other than the applicant or the EUTM proprietor. The EUTM proprietor has argued that this evidence should be disregarded as some is repeated, some postdates the contested trade mark and some comes from infringing use; some do not contain indications as to the actual time and place of the use; some belong to the applicant, others to the EUTM proprietor, others are not relevant for Europe, others are undated. The Cancellation Division is of the opinion that, although some of the evidence of the applicant is not relevant and must be disregarded. There is sufficient evidence that, apart from the parties, there are other manufacturers of guitars with shapes similar to the contested one, including within the European Union. For example, in its observations, the applicant mentions that competitors began selling guitars which incorporated a similar shaped guitar body. The fact that there are other similar shaped guitars on the market is confirmed by the EUTM proprietor.

The volume of manufacturers of similar shapes must not necessarily be huge in order to be relevant and what is interesting are not necessarily identical shapes that could be qualified as copies as mentioned by the EUTM proprietor, but rather similar shapes able to show that the contested shape is no longer original or striking as it probably used to be.

The evidence demonstrates that, as of May 2014, the average consumer was accustomed to seeing shapes similar to the one at issue here, in a wide variety of designs.

Taking into account the fact that several other manufacturers create guitars with a similar appearance, it is highly unlikely that the average consumer will rely solely on the shape as registered to indicate its origin. He or she would rather look for other indications, such as a brand name, to get more information on the manufacturer of the goods. The design of the guitar would have to be a far more radical departure from the norms or customs in the sector in order to fulfil the essential function of indicating the origin of the goods applied for. And it has been demonstrated by the applicant that the public is used to different shapes of electric guitars in the market.

As has been previously discussed, when buying a guitar, the average consumer will have a relatively high level of attention due to the amount of money involved with the purchase. Buyers of guitars therefore tend to be discerning when choosing and deciding which one to buy. Guitars are sophisticated products and the quality varies considerably depending on the manufacturer. Considering that there are several manufacturers creating guitars which appear similar, it may be reasonably assumed that a sensible purchaser of guitars would not rely solely on the appearance of the guitar to indicate its origin, but would rather take the time to enquire further about the manufacturer. Reasonably attentive average buyers of guitars would not attribute, prima facie, any trade mark function to this aspect of a guitar’s body shape but would rather deem it to have mere product design significance The shape of a particular guitar may indicate trade origin to a professional guitarist, but as has been established, the average consumer of the goods applied for is not the professional (see decision of 22/07/2010, R 1035/2004-1, ‘shape of a guitar’).

Considering that the average consumer in general is not used to investing much trade mark significance in three dimensional signs, in order for the EUTM to possess sufficient distinctive character it would have to be a far more radical design. A simple departure from the norm or custom of trade is not sufficient; it must rather be a significant departure (see judgment of 12/02/2004, C-218/01, “Perwoll-Flasche”). The Cancellation Division does not find this to be the case.

The EUTM proprietor argues that the guitar is not symmetrical and 8 shaped, with a straight neck and a symmetrical headlock with an equal number of tuners on both sides. Nevertheless, the shape is not that of an acoustic guitar but rather of an electric guitar which has other characteristics and which is often not symmetric. The EUTM proprietor also considers that the Gibson Explorer is also strikingly different from the standard electric guitar shape on the market. The shape of the contested EUTM is neither a variant of a common shape nor is its shape intrinsic to the shape of a guitar. On the contrary, it is highly unusual, instantly recognizable and striking. It is known for its unique asymmetrical body-shape, which evokes a bolt of lightning. As enclosure 12, the EUTM proprietor filed information about Gibson specific features forming part of the contested EUTM such as the neck of the Explorer, the pickguard and bridge. Nevertheless, there is no evidence that these specific features could serve as an indication of origin for the relevant public.

The EUTM proprietor also considers that the trade mark represents an electric guitar with specific and distinctive features. The Cancellation division considers, on the contrary, that it has not been demonstrated that the features of the electric guitar such as the neck, the pickguard and bridge would enable the relevant public to distinguish it as a badge of origin. Average consumers are not in the habit of attributing to these features a trade origin.

Finally, the EUTM proprietor considers that the fact he is actively fighting against copies of its guitars and has a controlled licence policy as per Enclosure 20 and 24 supports that the shape of the Explorer is inherently distinctive. The Cancellation division considers, on the contrary, that the multiplication of similar electric guitars on the market with different shapes including similar asymmetrical shapes argues in favour of the fact that the public is accustomed to seeing many different shapes and would not be able to inherently recognise a trade origin based on this sole element. The existence of licensee is not relevant for the assessment of inherent distinctiveness of the contested trade mark.

Scope of the invalidity

As regards the extent of the invalidity, the three dimensional trade mark represents the shape of an electric guitar while the trade mark is protected for ‘music instruments’. Nevertheless the invalidity objection applies not only to those goods for which the shape making up the trade mark applied for is directly non distinctive, but also to the broad category that (at least potentially) contains an identifiable subcategory or specific goods for which the mark applied for is directly non distinctive. In the absence of a suitable restriction by the applicant, the non-distinctive objection necessarily affects the broad category as such (see judgment of 23/11/2003, T-348/02, ‘Quick’, paragraph 34).

It follows from the above that the EUTM was registered contrary to Article 7(1)(b) EUTMR for musical instruments.

Acquired distinctiveness- Article 52(2) EUTMR and Article 7(3) EUTM

In this case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its EUTM had acquired distinctive character throughout the European Union, either on or before the date of filing of the mark on 06/05/2014 or between the date of registration on 18/09/2014 and the application for declaration of invalidity on 12/10/2015.

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant/holder. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (see judgment of 10/11/2004, T-396/02, 'Storck', paragraph 55).

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages (see judgment of 04/05/1999, joined cases C-108/97 and C-109/97, 'Windsurfing Chiemsee', paragraph 52 and judgment of 10/11/2004, T-396/02, 'Storck', paragraph 56).

In order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see judgment of 10/11/2004, T 396/02, 'Storck', paragraph 57). For marks without word elements, the relevant territory is the entire European Union. Nevertheless, it would not be reasonable to ask for evidence in single Member States when extrapolations can be made from one territory to another. The Cancellation division acknowledges that the shape is recognised by some, but this is not sufficient.

In assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied (see judgment of 10/11/2004, T-396/02, 'Storck', paragraph 58, and judgment of 22/06/2006, C-25/05 P, 'Storck', paragraph 75). In the present case, the use of the trade mark within the European Union is not contested not is the fact that it has acquired reputation among famous guitarists as per enclosure 3 of online offerings of the Explorer guitar supporting the affidavit as per enclosure 13.

As far as the affidavit is concerned, Rule 22(4) EUTMIR (applicable to cancellation proceedings by virtue of Rule 40(6) EUTMIR) expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

The remaining evidence (list of distributors in many European Union countries, spread sheets with sales figures, screenshots from websites, books, magazines, photographs, advertisement, concert videos showing celebrities playing the contested guitars) is showing at best that the Explorer guitar is sold including within the European Union. But there is no sufficient evidence about the acquired distinctiveness of the guitar as such. The fact that the guitar is known as the Explorer and sold as the Explorer does not amount the guitar itself would function as an indicator of origin.

According to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see judgment of 18/06/2002, C-299/99, 'Philips', paragraph 63 and judgment of 10/11/2004, T-396/02, 'Storck', paragraph 59)

The EUTM proprietor sent substantial evidence trying to show that the shape has become distinctive through intensive use and would today be recognised as a trade mark.

With the Witness Statement of Bruce Mitchell in enclosure 13, the General Counsel for Gibson Guitar Corp. Mr Mitchell claims that the EUTM proprietor has been in business with a large number of internationally well-known musicians being known to have used the EUTM proprietor’s guitars. The evidence of the Mr Mitchell includes lists of musicians who have played the Explorer guitar. Mr Mitchell states that although the guitar is manufactured largely in the United States it is sold throughout the world. The EUTM proprietor has sold 11 459 Explorer guitars in the UE between 2011 and 2014 corresponding to a sale volume of more than 4,787, 800 million US dollars (as per enclosure 13).

In addition, the guitar itself with its name has become iconic, famous and well known as suggested by the evidence filed (such as enclosure 3 or enclosure 4) but this does not necessarily mean that the relevant public would attribute to the guitar itself an inherent trade mark function.

The EUTM proprietor tries to demonstrate that he has contacted most of the producers of Explorer shape guitars in order for them to stop counterfeiting use of its shape in the USA (see enclosure 17 about an injunction) but the evidence is mostly about another guitar, the Flying V (see enclosure 11 and 16).

It is true that some professionals and experts might be able to identify the brand from a particular instrument or guitar just by looking at its appearance, basing themselves on slight variations in the design of the body. However, it is the perception of the average consumer, and not the professional, which counts here.

A substantial part of the evidence consists of  images of musicians playing the Explorer Gibson guitar. The images appear in magazines, or in music videos. The Cancellation Division does not, however, find the evidence to be sufficient in order to overcome a finding that the EUTM is non distinctive in accordance with Article 7(3) EUTMR.

As previously mentioned, the relevant public is not only the professional musician, but also the amateur or the average guitar buying public. The fact that the evidence includes images of famous musicians holding an Explorer guitar does not indicate that the average consumer would recognise a three dimensional outline to be the Explorer guitar. The average consumer has not stated that it recognises the three dimensional outline as being an Explorer guitar.

In fact, the evidence although quite impressive in terms of volume and quality, does not show that a significant proportion of the public within the European Union would see this particular shape as a trade origin.

The applicant argues that the guitarists buy its guitar because of its shape and the fact that the shape is copied by many is evidence of its success and of the fact that the shape has acquired distinctiveness and thus can serve as a badge of origin. The Explorer guitar has acquired distinctiveness through use, has become iconic, is famous and therefore would be recognised as an indication of origin although this is not true for most of guitars. It is also argued that the shape is so unique that it actually it has become a trade mark.

As mentioned in the previously quoted decision of 22/07/2010, R 1035/2004-1, ‘shape of a guitar’, paragraph 51, ‘guitars – and electric guitars – are highly sophisticated products, often crafted by hand, and the manufacturer who made them is a most important parameter when choosing one. A sensible guitarist will not just rely on appearance to make his choice. Doing so might delude him, as there may be lots of look-alikes on the market’.

The evidence available in the file suggests that there are many different electric guitar body shapes on the market. Each brand (or manufacturer) produces guitars according to dozens of designs and this is not contested by the EUTM proprietor.

The Cancellation division acknowledges that the reputation of the trade mark is probably high among celebrities in particular in the United States. Nevertheless, ordinary guitarists – who form the bulk of the relevant public – would look for something more tangible than just the appearance of the guitar in order to distinguish it from another make. In other words, considering the multiplicity of shapes of guitars on the market, it could not serve at the date of filing as a badge of origin.

The applicant’s position that ‘guitar shapes are used as origin indicators’ is therefore unconvincing. Guitar body shapes may perhaps function as trade marks only for a tiny club of expert and discerning guitarists, but not the average amateur, who is the relevant parameter for assessing distinctive character. The evidence filed in support of Article 7(3) EUTMR does not indicate whether the relevant public would associate the guitar itself with the EUTMR proprietor.

From the above, the evidence provided is insufficient to indicate that the three dimensional EUTM has acquired distinctiveness through use in order to overcome the Article 7(1)(b) EUTMR objection.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark and the European Union trade mark should be declared invalid for part of the contested goods namely:

Musical instruments in class 15.

As it has been found that the EUTM was registered contrary to Article 7(1)(b) EUTMR, it is not necessary to consider the other Articles claimed by the applicant.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Liliya YORDANOVA	Jessica LEWIS	Keeva DOHERTY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.