Victory for JHS in Gibson counterfeiting case

UK distributor JHS, has won a legal victory over US guitar giant Gibson, in a case of alleged counterfeiting against its Vintage guitar brand. 

Gibson Brands sued JHS alleging that it owned trademarks in certain body and headstock shapes and that Skewes had violated those trademarks in using them in its Vintage range of guitars.

According to Gibson, Skewes used counterfeit versions of the shapes at issue. Skewes argued that it should be granted judgment as a matter of law on the counterfeiting count, since all its guitars prominently display the Vintage brand name and all advertising and packaging states that the guitars came from John Hornby Skewes. 

The Court granted summary judgment in favour of Skewes on the counterfeiting claim. In so doing, the Court eliminated Gibson’s ability to collect $8 Million in statutory damages.

It concluded that: ”no reasonable jury could find that [John Hornby Skewes]’s guitars were counterfeits of Gibson’s guitars.”  

The Court further explained that “counterfeiting is the ‘hard core’ or ‘first degree’ of trademark infringement that seeks to trick the consumer into believing he or she is getting the genuine article, rather than a ‘colourable imitation.'”  Counterfeiting also gives the aggrieved party “wider range of statutory penalties and remedies.”

“[the] guitars in question cannot be deemed identical or substantially indistinguishable from each other. Aside from certain visual distinctions between the guitars, as both [John Hornby Skewes] and Gibson acknowledge, guitars are typically identified by the branding on the headstock. Here, [John Hornby Skewes]’s guitars are marked with the Vintage branding on the front and the [John Hornby Skewes] trademark on the back.”

A number of remaining guitar shape trademark claims, set for trial in February 2017, limit damages to profits on the sale of, as the Court noted, about “300 such guitars.”  

The Court declined to grant summary judgment to either party on Gibson’s claims of trademark infringement of the guitar body and headstock shapes. Skewes has asserted counterclaims of cancellation of the trademark registrations for the body and headstock shape, citing to rampant third-party usage throughout the guitar industry for fifty years.

Despite being contacted, JHS offered no further comment on the case.