Guitar headstock not distinctive for … guitars, says EUIPO Board of Appeal

The EUIPO Fourth Board of Appeal recently issued an interesting – yet unsurprising –decision concerning the distinctive character of three-dimensional marks. In particular, the question before the Board was whether the headstock of a guitar could be registered as a figurative mark for guitars. 

With an application filed in February 2017, Paul reed Smith Guitars (the applicant) sought to register the following sign as an EU trade mark (EUTM):

Registration was sought for goods in Class 15 (Musical instruments; Guitars) of the Nice Classification.

In June 2018, the EUIPO examiner rejected the application on the ground that the sign was devoid of any distinctive character under Article 7(1)(b) and 7(2) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)). In particular, the examiner reasoned that the sign applied for consisted of a combination of elements that were typical of the goods in question. The shape ‒ a headstock of a guitar ‒ was considered not to be significantly different from other basic shapes of headstocks commonly used in trade. It could therefore not be sufficiently distinguished from other shapes and would not enable the relevant public immediately and with certainty to distinguish the goods from those of another commercial origin. 

The applicant appealed the decision to the Board, requesting that the Board annul the decision and allow the EUTM application to proceed for publication. This argued, inter alia, that:

• The relevant consumer could not be defined as the ‘general consumer’ and the products would not be certainly ‘known by anyone’. The goods in question would not be everyday consumer goods, but highly specialized goods advertised towards and acquired by a rather narrow, specific group of consumers only. For this reason alone, the degree of attention of the relevant public at the time of purchase must clearly be considered to be higher than usual and, therefore, to be quite high;

• It is common practice for guitar manufacturers to use the shape of their headstock as an identifier. In this regard, all leading manufacturers use their individual headstock shapes as a stamp of origin, i.e. as their trade mark, by which the relevant consumers recognize the various brands and generally use the same shape of headstock across all their models; and

• The shape of the headstock is important as a source of origin since any such name or logo would not be recognized or apparent from a distance, for instance through a shop window. The distinctive shape of the appellant’s headstock immediately enables the relevant consumer, who is, at least, reasonably well informed and reasonably observant and circumspect to distinguish the applicant’s product from those of other manufacturers, without conducting an analytical examination and without paying particular attention.

The Board’s decision

Article 7(1)(b) EUTMR provides that, in order for a sign to possess distinctive character, this must be capable of identifying the goods or services covered by it as originating from a particular undertaking and to distinguish those goods or services from those of other undertakings.

Therefore, a sign’s distinctiveness must be assessed (i) by reference to the goods and services claimed and (ii) by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (C‑363/99, ‘Postkantoor’ and C‑25/05 ‘Bonbonverpackung’).

Distinctiveness in relation to goods and services

The Board dismissed the applicant’s claim that the sign at issue would not be a shape: “Although the mark applied for is deemed to be a figurative mark and not a three-dimensional shape mark, it still clearly depicts the shape of a distinct guitar headstock”. It then held that the criteria for assessing the distinctive character of three-dimensional marks are no different than those applicable to other categories of marks. However, the average consumer’s perception is not necessarily the same in relation to three-dimensional signs. This is because consumers are not in the habit of making assumptions concerning the origin of products on basis of their shape. It may therefore prove significantly more difficult to establish distinctiveness in relation to a three-dimensional mark than in relation to a word or figurative mark.

Accordingly, the more 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. Such a sign must depart significantly from the norm or customs of the sector in order to fulfil its function of indicating origin and therefore also possess distinctive character. This means that attention must be drawn to design features that are conventional on the market. What is conventional on the market depends on the public’s knowledge of available product designs and market conditions (C-456/01 P ‘Henkel/Waschtabletten’).

Distinctiveness in relation to the perception of the relevant public

A trade mark must also enable purchasers of the goods in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention. The overall impression given by the trade mark applied for to the relevant public must be taken as a basis (C‑136/02 P ‘Maglite’). 

In light of the above, the Board reasoned that, contrary to the appellant’s arguments, guitars, including electric guitars’ are addressed to the general public interested in playing this instrument. The goods range from very cheap to more expensive items. The price for a simple model starts at approximately EUR 50. Even if a guitar is not a product purchased on a daily basis, the attention of the public is not necessary higher than average. In any case, even if the public’s attention would be higher, this would not allow the conclusion that the assessment of distinctive character would be different. 

Furthermore, the public is not able to distinguish between a simple model and a top-shelf model. The attribute ‘luxury’ depends solely on the marketing strategy of the proprietor of a trade mark. Since a marketing concept is purely a matter of choice for the undertaking concerned, it may change after a sign has been registered and it cannot therefore have any bearing on the assessment of the sign’s registrability.

In its entirety, the sign was regarded as no more than a combination of different features which, taken on their own, did not depart from the features typical of headstocks and therefore, even when taken together, did not represent an appreciable departure from the shape of a headstock customary in 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 commercial origin.

Conclusion

This decision confirms the challenges facing registration of three-dimensional elements as EU trade marks. As the Board in the present case noted, the average consumer’s perception is not necessarily the same in relation to three-dimensional trade marks compared to figurative marks. Consumers are not necessarily in the habit of making assumptions concerning the origin of products on basis of their shape. Whether the same assessment for distinctiveness is appropriate in relation to three-dimensional marks can indeed be subject for further discussion.