Mark owner cannot avoid obligation to use mark by relying on use of similar mark

In Fruit of the Loom v Office for Harmonisation in the Internal Market (OHIM) (Case T-514/10), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had cancelled the trademark FRUIT.

In 2006 Blueshore Management SA filed an application for revocation of the mark FRUIT, registered by Fruit of the Loom Inc in 1999 in Classes 18, 24 and 25 of the Nice Classification, due to a lack of genuine use.

The Cancellation Division, the Fourth Board of Appeal of OHIM and, subsequently, the General Court came to the conclusion that the evidence submitted by Fruit of the Loom was not capable of establishing genuine use of the mark. They found that use of the figurative and verbal marks FRUIT OF THE LOOM did not constitute use of the CTM FRUIT. In addition, the website 'fruit.com' was considered to be a tool used exclusively for marketing and advertising products under the trademark FRUIT OF THE LOOM. As a consequence, the CTM FRUIT was cancelled for goods in Classes 18 (eg, leather goods and bags) and 25 (clothing).

In particular, the General Court stated as follows:

"Article 15(1)(a) of the Community Trademark Regulation (207/2009) relates to a situation where a national or Community registered trademark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the form of the trademark used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotions requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trademark to identify the goods or services in respect of which the mark was registered, constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trademark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade." (Paragraph 28)

In this case, however, the situation was slightly different: the trademark owner relied on the genuine use of other trademarks comprising the verbal element 'fruit'.

The General Court stated that Article 15(1)(a) does not allow the owner of a registered trademark to avoid its obligation to use that mark by relying on its use of a similar mark covered by a separate registration (here, FRUIT OF THE LOOM) (see Ponte Finanziaria v OHIM (Case T-194/03), Paragraph 50). The court nevertheless examined whether the word 'fruit' was the dominant element of the trademark FRUIT OF THE LOOM such that the added elements 'of the loom' did not alter the distinctive character of the trademark FRUIT. It came to the conclusion that, both for English and non-English-speaking consumers, the terms 'fruit' and 'loom' were of equal importance in the overall impression created by the trademark FRUIT OF THE LOOM, and that both words had equal distinctive character. Therefore, use of the trademark FRUIT OF THE LOOM could not help or support the trademark owner in establishing genuine use of the FRUIT mark.

Would the situation have been different if the word 'fruit' had become distinctive per se as a result of the use of the mark FRUIT OF THE LOOM? This question - namely, whether a trademark, which is part of a composite mark and has become distinctive only as a result of the use of the composite mark, can be used in such a way as to preserve the rights attached to it if the composite mark alone was used - will be answered by the Court of Justice of the European Union (ECJ) following a reference for a preliminary ruling by the German Bundesgerichtshof in Colloseum Holding AG v Levi Strauss & Co (Case C-12/12).

One may also wonder whether the trademark FRUIT was registered only for defensive reasons. The ECJ has already stated that the concept of 'defensive' trademark registrations is, as such, incompatible with the regulation (see Il porte Finanziaria v OHIM (Case C-234/06 P)). However, registering the main elements of complex or composite marks is not necessarily wrong. To the contrary, it allows trademark owners to promote their main trademark from the start without being hindered by third parties. However, once the five-year period has expired, they are vulnerable to revocation due to non-use, but this is part of the (trademark) game.

It seems obvious that Fruit of the Loom would never accept the launch of a FRUIT mark by a third party in the fashion world. Therefore, this judgment of the General Court probably has only minor importance for the company. Indeed, the trademark FRUIT OF THE LOOM has probably acquired such a reputation that the average consumer, when confronted with the later FRUIT mark, will recall the earlier mark and make a connection between the two. A defeat in revocation proceedings is not necessarily equivalent to a defeat in infringement proceedings.

Paul Maeyaert, ALTIUS, Brussels