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IP Cases & Commentary – Details

10 September 2012

The FRUIT Case Goes Pear-Shaped - Fruit of the Loom Inc v OHIM (T-514/10)

Jeremy Pennant

The FRUIT Case  Goes Pear-Shaped - Fruit of the Loom Inc v OHIM (T-514/10)

This case concerned whether use of the composite mark, FRUIT OF THE LOOM was sufficient to save a registration for FRUIT alone from a challenge on the ground of non-use. This is an interesting question and notwithstanding the supposed harmonised laws within the EU, views differ from country to country even with guidance from a number of cases decided before the Court of Justice of the European Union (CJEU). 

After a challenge by a third party, the registration for FRUIT was cancelled by the Office for Harmonisation in the Internal Market (OHIM ) on the grounds of non-use for goods in classes 18 and 25 in 2008. The proprietor showed substantial use of the mark FRUIT OF THE LOOM in various forms and, additionally, provided some use of FRUIT alone including extracts from its website at www.fruit.com which had been active since late 1995.

Notwithstanding the evidence filed by Fruit of the Loom, Inc, the Cancellation Division concluded that there had been no genuine use of the mark FRUIT alone and that the registration should be revoked. This decision was upheld by the Board of Appeal and, on the 21 June 2012, by the General Court (GC) of the CJEU.

The owner’s appeal was dismissed on the basis that use of FRUIT OF THE LOOM (both word only and in logo form) did not constitute use of FRUIT or a variation thereof. The Board of Appeal had stated that the phrase FRUIT OF THE LOOM was indivisible and the phrase could not be reduced to the single element FRUIT. They also pointed out that the word FRUIT by itself has a different meaning.

The owner argued that FRUIT is the dominant element of the composite mark and is reinforced by the figurative elements – this was not accepted by the GC who held that the word LOOM was equally important. Further the Court said that the words OF THE LOOM are not in an ancillary position and their addition alters the distinctive character of the word FRUIT. The GC considered whether the use of FRUIT alone was genuine and concluded it was informal, internal use and thus dismissed the appeal.

As readers will be aware it is not uncommon for well known brands to be used primarily, and sometimes always, in conjunction with a house mark. Could this decision infer that such well known marks might be vulnerable if they are never used alone as separate trade marks in their own right? In our view, such a conclusion is very unlikely.

In the CRISTAL case of Castellblanch v OHIM, case T-29/04 the General Court confirmed that there is nothing in the Community Trade Mark system that obliges use of a trade mark to be on its own, independent of any other. It is acceptable for two or more trade marks to be used simultaneously without altering the distinctive character of the marks.

“Fruit of the Loom was founded in 1851 by two brothers in Rhode Island, USA...Five years later the Fruit of the Loom brand name was born, inspired by paintings of fruit created by the daughter of one of the company’s customers. In 1871 Fruit of the Loom became official and was registered as trademark number 418. This makes the company one of the world’s oldest trademarks and also means it is older than Coca-Cola, the light bulb and even the humble paper bag.” Source: http://www.fruitoftheloom.eu/imprint2012/en/worldoffruit/history

The HAVE A BREAK decision related to the distinctiveness of HAVE A BREAK when used as part of the phrase HAVE A BREAK …. HAVE A KIT-KAT. The analogy, however, is the same. Merely because HAVE A BREAK is always used as part of the longer slogan and in conjunction with the words HAVE A KIT-KAT does not mean that it cannot acquire its own independent distinctive character or be regarded as use of the mark alone in terms of maintaining a registration against a challenge for non-use.

There is a clear case for differentiating the outcome in the FRUIT OF THE LOOM decision; however, we anticipate there will be more challenges along the lines discussed in this article and we will report on developments as they occur.

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