Gibson loses $8m counterfeiting lawsuit against UK firm

Guitar manufacturer Gibson has failed in an attempt to convince a court that guitar designs sold by UK firm John Hornby Skewes & Co counterfeited its brand.

Gibson sued Skewes on the grounds that the UK company had violated trademarks it holds on two-dimensional body and headstock shapes, and sought $8m in damages. However, a jury ruled that "the guitars in question cannot be deemed identical or substantially indistinguishable from each other."

According to the court, both Skewes and Gibson acknowledge that guitars are typically identified by the branding on the headstock. In this case," Skewes' guitars are marked with the 'Vintage' branding on the front and the Skewes trademark on the back," adding that "no reasonable jury" could conclude Skewes instrument were counterfeits of Gibson's designs.

The Court 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 'colorable imitation.'"

Counterfeiting also gives the aggrieved party "wider range of statutory penalties and remedies." It added.

That is not however the end of the affair. Gibson is still pursuing a claim asking Skewes to return profit on some 300 guitars that it says infringed trademarks covering guitar body and headstock shapes. That is due to come to trial in February 2017.

Skewes has also filed counterclaims seeking to cancel Gibson's trademark registrations for the body and headstock shape, citing "rampant third-party usage throughout the guitar industry for fifty years," according to its counsel Scarinci Hollenbeck.