Trademarks – Distinctive signs in the music industry
By Paula Caraffa Morando and Sol Baudino.
GIBSON and FENDER are trademarks that identify the guitars that have become iconic in the music industry. Apart from the wordmarks GIBSON and FENDER, their logos with their particular typography are also very characteristic:
Their fame was earned throughout a long path, which is reflected both in the quality of their sound and their guitar designs.
Gibson was born in the year 1894 at the home workshop of luthier Orville Gibson in Kalamazo, Michigan, while Fender was created in 1945 by Leo Fender, who started making guitars and amplifiers in his retail shop “Fender’s Radio Service” in Fullerton, California[1].
Gibson is known for being the first creator of the Spanish electric guitar, around 1936: the “Gibson ES-150”. It was named after the terms Electric Spanish and was priced at around USD$150 – and came in a package that included the EH-150 amplifier and a 15-foot cable[2].
Fender is best known for creating the first mass-market solid body electric guitar: the “Telecaster”[3]. In 1950, the “Esquire” guitar was born, which had the same shape as the Telecaster but featured a single pickup attached to its bridge. In 1951, Fender added a second pickup and called this new model the “Broadcaster”, in honor of radio stations. Due to legal problems with the name “Broadkaster”, in 1952 it was renamed Telecaster, honoring television[4]. Years later, in 1954, Fender redesigned the silhouette of this guitar, and the “Stratocaster” was born.
Both these companies did not only create the aforementioned models but many others, which have also gained recognition to the extent that international artists have chosen them in their musical careers.
As an example, it can be mentioned that the “Les Paul” guitar, one of Gibson’s most iconic models, was chosen by Jimmy Page (from Led Zeppelin), Slash (from Gun N’ Roses), and Gary Moore, among others of the most influential guitarists in the history of music.
Fender’s “Telecaster” model was chosen by Keith Richards (from The Rolling Stones), and Andy Summers (from The Police), while its “Stratocaster” model was chosen by Jimi Hendrix, Eric Clapton, among many other important guitarists.
The designs of the Gibson and Fender guitar models deserve a special mention. When talking to music fans, it is surprising how they can describe the characteristics of each design, as if they had the guitars in their own hands. This allows us to conclude that their designs are as distinctive and recognizable as their model names.
It is also interesting how these two companies have always been recognized for their innovative work in the design of their guitars, and as a side effect had to face a large number of imitations for having become well-known brands.
From what we have mentioned so far, it is clear that both the names and the designs of the distinguished GIBSON and FENDER guitar models are truly distinctive signs and, as such, worthy of special protection.
However, the trademark protection of several designs of Fender’s guitars, electric basses, and tuning pegs was denied in our country, when the TM Office mistakenly understood that said designs have passed on to the general use prior to their application for registration[5]. But the TMO did not notice, and Fender’s defense failed to prove, – according to the court ruling that confirmed the denial resolution- that there was in fact a proliferation of illegal copies and imitations, a circumstance that clearly differs from having passed on to the general use prior to the application for registration, which our local law considers as a case of loss of distinctive capacity [6] [7].
On the opposite, a ruling in the United States has rejected the argument that Gibson’s designs have passed on to the general use and thus into the public domain. The defendant’s company was therefore found responsible for infringing Gibson’s trademarks that protect the shape of the body of the guitar and the headstock[8].
Reviewing the protection of the designs of these companies in the region, we have only noted the registration of Fender’s headstock design in Chile[9], while in Brazil[10] both headstocks and bodies of Fender guitars are registered:
Chile
Brazil
This leads us to believe that there is still a long way to go to provide the proper protection that these two giants of music deserve.
We cannot fail to mention that these trademarks are recognized as well-known brands. In the Fender decision in our country, the judge did not rule on notoriety or its lack of said notoriety, limiting himself to state that his analysis should only determine whether the designs had passed on to general use prior to their application for registration.
In some Latin American countries, such as Mexico, Ecuador, and Costa Rica, the owners of well-known brands have the possibility of requesting a “declaration as a well-known trademark”, provided that it is demonstrated that the trademark has a certain level of dissemination and recognition. In Brazil, it is possible to obtain recognition as a well-known trademark in opposition or nullity proceedings. However, the level of recognition required may vary from country to country.
We have not noticed an express declaration as a well-known trademark for GIBSON or FENDER so far, nor any judicial precedent. However, we again note that they undoubtedly are well-known trademarks in the music world.
A different analysis would have to be carried out in the case of some of the names or designs of their models, and it would be up to these companies to prove how well-known they are, according to their fame and recognition.
To conclude, we would like to remind the difference between distinctive capacity and notoriety. If the names and designs are distinctive, even when they may be considered as lacking notoriety in some countries according to their internal regulations and practices, they deserve trademark protection. If, in addition, they are declared well-known trademarks, they will enjoy a stronger protection.
For further information please contact: pmcaraffa@ojambf.com
[1] Fullerton Heritage – history & information about the city of Fullerton
[2] History of the Electric Guitar – Guitar: Gibson ES 150 (riffinteractive.com)
[3] Historia de Fender Guitars : Guitarras eléctricas, acústicas, clásicas y bajos | Guitarristas
[4] Todo lo que tienes que saber sobre la Fender Telecaster – SoundsMarket
[5] Trademark application N° 2.558.570/1/2/3/4/5 for figurative trademark in class 15.
[6] “Fender Musical Instrument Corporation c/ INPI”, CCCF Sala II del 14/04/2012.
[7] LAW ON TRADEMARKS- Law No. 22,362. Article 2 – The following shall not be considered trademarks and may not be registered: (b) Names, words, signs and advertising slogans that have passed into general use before the application to register them;
[8] GIBSON BRANDS, INC. v. ARMADILLO DISTRIBUTION § ENTERPRISES, INC., and CONCORDIA § INVESTMENT PARTNERS, LLC, Civil Action No. 4:19-CV-358
[9] Chile: Trademark application for figurative trademark N° Reg 1130034
[10] Brazil: Trademark application for figurative trademark N° Reg 824652061, 825893461, 825893488, 825893470, 824652070, 824652053
