No Fruit for You: EU Trademark Board finds Fruit of the Loom’s use of the mark “fruit” to be invalid

No Fruit for You: EU Trademark Board finds Fruit of the Loom’s use of the mark “fruit” to be invalid

Although not as exciting as a Victoria’s Secret Fashion Show, the latest trademark case involving undergarment company Fruit of the Loom has grabbed the trademark world’s attention.

Founded in 1851 in Rhode Island, United States, Fruit of the Loom is a global business which produces basic cotton clothing and textiles for customers of all ages. The brand has become well known in part due to its comedic commercials, which often feature actors dressed in apple and grape costumes serenading potential customers about the benefits of “waistbands softer than the rain.” The commercial characters are tied in with the company’s familiar apple, currant, and grape logo. As you may have noticed, it becomes quite difficult to describe the brand without referencing the word “fruit.” This is one of the reasons Fruit of the Loom argued recently in European court that it should be capable of exclusively appropriating the generic word “fruit” as a mark.

Fruit of the Loom had registered the word sign “fruit” in the European Union in 1999, but an Italian intervener, Blueshore Management SA, filed an application to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for revocation of that mark in 2006. Blueshore based its application on Article 51(1)(a) of European Trademark Regulation No 207/2009.  Article 51(1)(a) states that a mark may be revoked if it is not put to genuine use in connection with the goods in respect of which it is registered. The mark was then cancelled by OHIM in 2008. Fruit of the Loom appealed this decision several times. The company failed to obtain a favourable outcome, as the applicant’s evidence indicated that the only marks to consistently appear in promotional materials are the fruit-bearing logo and the indivisible phrase “fruit of the loom.” Contrastingly, none of the applicant’s figurative marks incorporate the “fruit” element on its own.

In its latest appeal, the clothing company relied heavily on Article 15(1)(a) of European Trademark Regulation No 207/2009 in order to persuade the Board of Appeal to reinstate the “fruit” mark. Article 15(1)(a) states that a mark may be deemed ‘used’ even in situations where a mark is presented differently, so long as the owner leaves the distinctive character of the mark unaltered. The applicant submitted that it had genuinely used the “fruit” mark as part of its overarching branding strategy because the word is not only in the company name, but it also describes the company’s logo. The company went further, stating that the word “fruit” was the most distinctive element of its brand internationally, as the phrase “fruit of the loom” is not understood in non-Anglophone languages.  This argument is quite strong, as the word  “fruit” finds nearly identical equivalents in many European languages, leading to quick identification of a particular brand.

The Board of Appeal was not sympathetic to Fruit of the Loom’s last ditch appeal effort, and with good reason. Article 15(1)(a) is viewed by the European intellectual property community as a tool meant to aid proprietors who want to change insignificant aspects of a trademark. This makes sense, as it would be burdensome on a company to re-register a trademark that had merely undergone a stylistic facelift. The rule is not meant to be used by proprietors as a way to avoid the obligation of using a registered trademark by relying on ownership of a similar mark covered by separate registration.

In this case, the Board of Appeal concluded that Article 15(1)(a) was not helpful to Fruit of the Loom, as the mark “fruit” is not merely a variation of the mark “fruit of the loom,” but a distinctive mark on its own. The addition of the words “of the loom” altered the “fruit” mark in a distinctive way (the key wording of Article 15(1)(a)) because it created a unique phrase that does not exist in any language. The phrases are thus not equivalent. The Board also concluded that Fruit of the Loom’s international linguistic argument was invalid. While it is true that the word “loom” has no counterpart in non-Anglophone languages, the uniqueness of the word is bound to attract consumers. Thus, the word “fruit” was seen as having equal importance as the word “loom” in advertising material.

This decision is particularly important to international brands that are trying to fight against similarly-sounding competitors.

Elena Iosef is a J.D. candidate at Osgoode Hall Law School