EU - Trademarks - Community trademark
Fruit of the Loom Inc v Office for Harmonisation in the Internal Markets (Trademarks and Designs): Court of Justice of the European Union (Fifth Chamber) (Judges Papasavvas (president), Vadapalas (rapporteur), O’Higgins): 21 June 2012
On 27 January 1998, the applicant company filed an application for registration of a community trademark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) 40/94 (on the community trade mark) (regulation 40/94), as amended by Council Regulation 207/2009 (on the community trade mark) (regulation 207/2009).
The mark in respect of which registration was sought was the word sign ‘FRUIT’. The goods in respect of which registration was sought fall within classes 18, 24 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. On 16 January 2006, the intervener company filed an application for revocation of that mark on the basis of article 50(1)(a) of the regulation for the goods in classes 18 and 25. By decision of 30 August 2010 (the contested decision), the Fourth Board of Appeal of OHIM dismissed the applicant’s appeal against the decision by the cancellation division to cancel the trademark FRUIT in respect of classes 18 and 25.
In particular, it considered that none of the figurative marks owned by the applicant or the word mark FRUIT OF THE LOOM constituted use of the mark FRUIT as registered or in a variation acceptable under article 15(1)(a) of regulation 207/2009, which provided that the rights of the proprietor of the community trademark were to be declared to be revoked on application to OHIM or, on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trademark had not been put to genuine use in the EU in connection with the goods or services in respect of which it was registered, and there were no proper reasons for non-use. Moreover, the Board found that none of the evidence submitted by the applicant to prove genuine use of the mark FRUIT was capable of establishing such use. The applicant brought proceedings before the Court of Justice of the European Union (the CJEU), claiming that the CJEU should annul the contested decision. OHIM contended that the CJEU should dismiss the action.
In support of its action, the applicant raised, in essence, a single plea in law, alleging infringement of article 15(1)(a) of regulation 207/2009 and lodged a number of items in evidence, including, inter alia, internet extracts from its main website, www.fruitoftheloom.be, and printouts concerning that website. Consideration was given to Commission Regulation (EC) 2868/95 implementing regulation 40/94, and article 78(1)(f) of regulation 207/2009. The action would be dismissed.
It should be observed that article 15(1)(a) of regulation 207/2009 related to a situation where a national or community registered trademark was used in trade in a form slightly different from the form in which registration had been effected. The purpose of that provision, which avoided imposing strict conformity between the form of the trademark used and the form in which the mark had been registered, was to allow its proprietor in the commercial exploitation of the sign to make variations which, without altering its distinctive character, enabled it to be better adapted to the marketing and promotion requirements of the goods or services concerned.
However, article 15(1)(a) did not allow the proprietor of a registered trademark to avoid his obligation to use that mark by relying on his use of a similar mark covered by a separate registration. Accordingly, a finding of an alteration of the distinctive character of the mark as registered required an assessment of the distinctive and dominant character of the added elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trademark (see ,  of the judgment).
In the instant case, the elements ‘of the loom’ did not occupy an ancillary position in the word mark FRUIT OF THE LOOM or in the other figurative marks of the applicant, which, moreover, displayed a number of other elements and whose distinctive character was equal to that of the term ‘FRUIT’, as established in the preceding paragraphs. Consequently, the addition of those elements, both as regards the word mark FRUIT OF THE LOOM and the applicant’s figurative marks, altered the distinctive character of the trademark FRUIT.
Further, the page reproduced by the applicant was not sufficient to prove that the website www.fruit.com had a marketing or advertising function in connection with the products of the trademark FRUIT. In fact, the figurative mark FRUIT OF THE LOOM occupied a prominent position on the home page of the website, since it appeared above the various headings - the only significant features on that page - referring to the applicant’s products, stockists and contact address. That arrangement was such that the headings related to the trademark FRUIT OF THE LOOM and not to the trademark FRUIT. The website, therefore, was, at most, a means of marketing and advertising the products of the trademark FRUIT OF THE LOOM. In any event, it was not sufficient to prove genuine use of the trademark FRUIT (see , , - of the judgment).
The Board of Appeal had been fully entitled to find that the applicant had not proved genuine use of the trade mark FRUIT (see  of the judgment).