Fruit of the Loom v OHMI - Blueshore Management (FRUIT) (Community trade mark) [2012] EUECJ T-514/10 (21 June 2012)

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(Community trade mark - Revocation proceedings - Community word mark FRUIT - Non-use - Article 15(1)(a) and Article 51(1)(a) of Regulation (EC) No 207/2009)

1 On 27 January 1998, the applicant, Fruit of the Loom, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 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, and correspond, for each of those classes, to the following description:

4 The mark at issue was registered on 27 August 1999 under number 745216 for the goods referred to in paragraph 3 above.

5 On 16 January 2006, the intervener, Blueshore Management SA, filed an application for revocation of that mark on the basis of Article 50(1)(a) of Regulation No 40/94 (now Article 51(1)(a) of Regulation No 207/2009) for the goods in Classes 18 and 25.

6 On 29 September 2008, the Cancellation Division cancelled the trade mark FRUIT in respect of the goods in Classes 18 and 25, with effect from 16 January 2006.

7 On 24 November 2008, the applicant filed an appeal at OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Cancellation Division.

8 By decision of 30 August 2010 ('the contested decision'), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it considered that none of the figurative marks owned by the applicant or the word mark FRUIT OF THE LOOM constitute use of the mark FRUIT as registered or in a variation acceptable under Article 15(1)(a) of Regulation No 207/2009 and, moreover, that none of the evidence submitted by the applicant to prove genuine use of the mark FRUIT was capable of establishing such use.

12 It should be noted as a preliminary point that by the first part of the form of order sought the intervener seeks a confirmatory ruling from the General Court. However, it follows from Article 65(2) and (3) of Regulation No 207/2009 that an action brought before the General Court seeks to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions (see judgment of 17 March 2011 in Case T-455/09 Jiménez Sarmiento v OHIM - Oxygène sport international (Q), not published in the ECR, paragraph 17 and the case-law cited); therefore such an action cannot have the objective of obtaining confirmatory or declaratory rulings in respect of those decisions.

13 Moreover, the intervener seeks an order from the General Court that OHIM revoke the applicant's rights in respect of the trade mark FRUIT. However, Article 65(6) of Regulation No 207/2009 requires OHIM to take the necessary measures to comply with a judgment of the Community judicature. Accordingly, it is not for the General Court to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part and grounds of the Court's judgments (see judgment of 10 March 2009 in Case T-8/08 Piccoli v OHIM (Shape of a seashell), not published in the ECR, paragraph 9 and the case-law cited).

14 Consequently, the first part of the form of order sought by the intervener must be dismissed as inadmissible.

15 In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 15(1)(a) of Regulation No 207/2009.

16 Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the Community trade mark are 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 trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

17 According to Article 15(1)(a) of Regulation No 207/2009, proof of genuine use of a trade mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.

18 In order to prove genuine use of the trade mark FRUIT, the applicant lodged a number of items in evidence, summarised as follows in paragraph 12 of the contested decision:

19 In the first place, the applicant submits that the Board of Appeal applied the wrong test in assessing acceptable variations of use under Article 15(1)(a) of Regulation No 207/2009. It applied a test of strict identity in the application of that article, whereas that provision allows the proprietor of a Community trade mark to use it presented differently, since the distinctive character of the mark is not thereby altered.

20 The applicant submits that the Board of Appeal did not assess the differences between the trade mark FRUIT OF THE LOOM and the trade mark FRUIT and did not determine whether those differences altered the distinctive character of the trade mark FRUIT. The Board of Appeal did not undertake a comparison of those two marks and did not compare the distinctive character of those marks.

21 According to the applicant, the Board of Appeal should have recognised that the word 'fruit' is the dominant element in all of the applicant's marks and, in particular, in the trade mark FRUIT OF THE LOOM. The word 'fruit' occupies a dominant position in the sign FRUIT OF THE LOOM and, moreover, in the case of the applicant's figurative marks, its meaning and prominence are reinforced by the figurative elements depicting fruit.

22 In addition, consumers in non-English-speaking Member States will identify and recognise the word 'fruit' in the applicant's trade marks, but will no doubt be unable to recognise the other words in those marks, particularly the word 'loom'. For those consumers, the figurative element facilitates their understanding of those marks. Therefore, for those consumers, the distinctive character of the expression 'fruit of the loom' is the same as that of the trade mark FRUIT.

24 It must be noted that, contrary to the applicant's assertion, the Board of Appeal did in fact carry out a comparison of the applicant's various trade marks in paragraphs 17 to 19 of the contested decision.

25 Thus, the Board of Appeal states that none of the applicant's figurative marks incorporates the element 'fruit' alone, and that the indivisible expression 'fruit of the loom' is included in each case (paragraph 17 of the contested decision). In addition, it takes the view that the expression 'fruit of the loom', 'either taken as a word mark or, a fortiori, as an element of the above figurative marks, gains its distinctive character from the combination of [those] four words, creating a unique expression' (paragraph 18 of the contested decision). Lastly, it considers that '[f]or those Member States where English is not spoken or understood, both terms [namely 'fruit' and 'fruit of the loom'] are meaningless and simply different overall in their length and structure' (paragraph 19 of the contested decision).

26 Accordingly it concluded that neither any of the figurative marks owned by the applicant 'nor the word mark "FRUIT OF THE LOOM" constitutes use of the mark "FRUIT" as registered or in a variation acceptable under Article 15(1)(a) [of Regulation No 207/2009]' (paragraph 16 of the contested decision).

27 The Board of Appeal did, therefore, analyse the distinctive character of the applicant's marks and determine the differences between them, and concluded from this that the added elements were such as to alter the distinctive character of the mark FRUIT.

28 It must be observed that Article 15(1)(a) of Regulation No 207/2009 relates to a situation where a national or Community registered trade mark 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 trade mark 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 promotion 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 trade mark 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 trade mark 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. However, Article 15(1)(a) does not allow the proprietor of a registered trade mark to avoid his obligation to use that mark by relying on his use of a similar mark covered by a separate registration (Case T-194/03 Il Ponte Finanziaria v OHIM - Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II-445, paragraph 50).

29 Thus, a finding of an alteration of the distinctive character of the mark as registered requires 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 trade mark (see judgment of 10 June 2010 in Case T-482/08 Atlas Transport v OHIM - Hartmann (ATLAS TRANSPORT), not published in the ECR, paragraph 31 and the case-law cited).

30 In the present case, the trade mark FRUIT gains its distinctive character from its sole element that is the word 'fruit', which, moreover, is a term that is not generally used to designate goods in Classes 18 and 25. It is necessary therefore to assess the distinctive and dominant character of the elements of the expression 'fruit of the loom', envisaged as a word mark or as an element in the applicant's figurative marks, in order to determine whether the word 'fruit' is the dominant element, such that the added elements 'of the loom' do not alter the distinctive character of the mark FRUIT, and the word mark FRUIT OF THE LOOM and the applicant's figurative marks containing that expression may be regarded as equivalent to the mark FRUIT, thus constituting an acceptable variation of that mark under Article 15(1)(a) of Regulation No 207/2009.

31 A distinction must be made in that regard between English-speaking and non-English-speaking consumers.

32 With regard to English-speaking consumers, it must be noted, as the Board of Appeal did in paragraph 19 of the contested decision, that the term 'fruit', the sole element of the trade mark FRUIT, has a precise meaning, whereas the expression 'fruit of the loom' - made up of the four words 'fruit', 'of', 'the' and 'loom' - is an expression invented by the applicant, the originality of which lies in the fact there is no such thing in nature as a fruit of a 'loom-plant'. At most, that expression might refer to the products obtained from the use of a loom.

33 That is why the expression 'fruit of the loom' cannot naturally be reduced to the single element 'fruit', since the meaning attached to the 'fruit' element is not the same as that attached to 'fruit of the loom', an expression created by the applicant. Accordingly, it is a semantic whole, in which the two words 'fruit' and 'loom' have equal distinctive character.

34 As the Board of Appeal correctly observed in paragraph 18 of the contested decision, it is the combination of four words making up the expression 'fruit of the loom' that gives it its distinctive character, creating a unique expression. That cannot be called into question by the applicant's argument that the distinctive character of the term 'fruit' is reinforced in the applicant's figurative marks by the presence of a figurative element depicting fruit.

35 Even if that figurative element could further illustrate the term 'fruit', the fact remains that, in some of the marks, the terms 'fruit' and 'loom' are written in a similar font size, whereas the elements 'of the' are smaller and placed one above the other, reinforcing the impression that the words 'fruit' and 'loom' are equally important within the expression.

36 For non-English-speaking consumers, it must be acknowledged, as the applicant did in paragraph 22 of its application, not only that the term 'fruit' has a linguistic equivalence in a certain number of European Union languages, such as French (fruit), Italian (frutta), Spanish (frutas) or Swedish (frukt), but that if there were any uncertainty in that regard, the figurative element depicting fruit would remove any such doubt. By contrast, the term 'loom' has no such linguistic equivalence.

37 However, the Court cannot accept the applicant's conclusion that the term 'fruit' is the dominant element of the expression 'fruit of the loom'. Admittedly, it must be acknowledged that the use of the term 'fruit' to designate goods in Classes 18 and 25 is unusual, but it must also be noted that since the term 'loom' has no linguistic equivalence in the non-anglophone languages of the European Union, it will not be regarded as a term of everyday language, and will attract the consumer's attention. Accordingly, the terms 'fruit' and 'loom' are of equal importance in the overall impression created by the sign.

38 In any event, it must be noted that in order for Article 15(1)(a) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character (see, to that effect, judgment of 13 April 2011 in Case T-209/09 Alder Capital v OHIM - Gimv Nederland (ALDER CAPITAL), not published in the ECR, paragraph 58).

39 In the present case, the elements 'of the loom' do not occupy an ancillary position in the word mark FRUIT OF THE LOOM or in the other figurative marks of the applicant, which, moreover, display a number of other elements and whose distinctive character is equal to that of the term 'fruit', as established in the preceding paragraphs.

40 Consequently, the addition of those elements, both as regards the word mark FRUIT OF THE LOOM and the applicant's figurative marks, alters the distinctive character of the trade mark FRUIT.

41 Furthermore the applicant, invoking the judgment in ATLAS TRANSPORT, (paragraph 36), submits that the fact that the registered mark is sometimes used with additional elements and sometimes without such elements may be one of the criteria on which to base a finding that there has been no alteration of the distinctive character of the registered mark.

42 It must be observed that the application of that case-law would presuppose that the applicant had at least succeeded in proving the use of the trade mark FRUIT without additional elements, which is not the case in this instance, as will be established below.

43 In the second place, according to the applicant, the contested decision is not in accordance with the requirements of Article 15(1)(a) of Regulation No 207/2009, in that it does not take into account the evidence that the applicant informally marketed its products under the name 'fruit', often using that mark verbally in dealings and transactions with its customers.

44 Thus, the use of the trade mark FRUIT is not merely internal, as the Board of Appeal wrongly maintains, but the word 'fruit' is used by customers and members of staff in relation to clothing, or even as a substitute in marketing the FRUIT OF THE LOOM mark. Finally, the mark has been used verbally with customers, which amounts to use, in accordance with Article 15 of Regulation No 207/2009.

46 In that regard, the Board of Appeal stated in paragraph 25 of the contested decision that '[n]one of the invoices, catalogues or advertisement extracts refers to a mark "FRUIT" on a stand-alone basis'. In particular, with regard to the statements submitted to OHIM by the applicant, the Board of Appeal noted that they were 'mostly from [the applicant's] own employees' and concluded from this that the use of the trade mark FRUIT 'is merely internal and not associated with any goods'. It adds that '[i]t has not been claimed that the goods in issue, at the point of time of their sales, were announced, even colloquially, as "fruit" products'. Lastly, with regard to the statements from non-employees, the Board of Appeal emphasised that 'third party use, which is not as intended by the proprietor, is irrelevant' (paragraph 26 of the contested decision).

47 It must be borne in mind that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and outwardly (see Case T-30/09 Engelhorn v OHIM - The Outdoor Group (peerstorm) [2010] ECR II-3803, paragraph 28 and the case-law cited).

48 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances which are relevant in establishing whether the commercial exploitation of the mark is real, and in particular whether such use is seen as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market, and the scale and frequency of use of the mark (see peerstorm, paragraph 25 and the case-law cited).

49 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of time during which the mark was used and the frequency of its use (see peerstorm, paragraph 26 and the case-law cited).

50 To examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be undertaken taking into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved using the mark was not high may be offset by the fact that such use was extensive or regular, and vice versa (see peerstorm, paragraph 27 and the case-law cited).

51 Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see peerstorm, paragraph 29 and the case-law cited).

52 Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), the evidence is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (judgment of 13 May 2009 in Case T-183/08 Schuhpark Fascies v OHIM - Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 25).

53 The question whether the Board of Appeal was right to consider that the evidence produced by the applicant does not prove the genuine use of the earlier trade mark for the goods referred to (see, to that effect, jello SCHUHPARK, paragraph 26) must be assessed in the light of those considerations.

54 First, it must be observed that the applicant challenges only the analysis carried out by the Board of Appeal of the statements which the applicant provided in order to prove the use of the trade mark FRUIT or of the evidence relating to the website www.fruit.com. Thus, the applicant does not challenge the conclusions as to lack of genuine use drawn by the Board of Appeal from other evidence, such as the catalogues produced, the invoices, the decision of the United Kingdom Patent Office or the documents relating to advertising or to promotional campaigns.

55 Next, with regard to the statements, according to the case-law, in order even to assess the evidential value of 'statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up' within the meaning of Article 78(1)(f) of Regulation No 207/2009, it is necessary to verify the credibility of the information they contain, taking into account inter alia the provenance of the document, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, it appears sound and reliable (jello SCHUHPARK, paragraph 38).

56 As the Board of Appeal pointed out, those statements, for the most part, emanate from employees of the applicant and tend to show that the trade mark FRUIT is used informally, while the mark FRUIT OF THE LOOM is used when contacting new customers, in connection with marketing or promotional material.

57 In other words, far from proving that the trade mark FRUIT is used publicly and outwardly, those statements merely prove that the mark is used internally or casually among persons working for or with the applicant, and is often used merely as an abbreviation of the trade mark FRUIT OF THE LOOM. It is the trade mark FRUIT OF THE LOOM that is used to promote the company's products.

58 The Board of Appeal was therefore fully entitled to take the view that the trade mark FRUIT is not associated with any goods. Since the verbal and informal use of the mark FRUIT is merely internal to the applicant's undertaking, it cannot be regarded as genuine use of the mark within the meaning of Article 15 of Regulation No 207/2009 (Case C-40/01 Ansul [2003] ECR I-2439, paragraph 37).

59 In the third place, the applicant submits that the contested decision is not in accordance with the requirements of Article 15(1)(a) of Regulation No 207/2009, in that it does not take into account the evidence that the applicant had used the mark FRUIT as part of its marketing website at www.fruit.com.

60 In that regard, according to the applicant, the applicant's internet site should be regarded as a tool for marketing and advertising the applicant's clothing. In addition, use in the context of advertising campaigns should be regarded as use of the mark in relation to the relevant goods. Lastly, the marketing function of the applicant's internet site can be seen from the customer enquiries.

62 The Board of Appeal stated in paragraph 27 of the contested decision that, as regards the page which the applicant printed out in relation to the domain www.fruit.com, '[i]t has not been shown what those pages feature and whether the term "fruit" appears somewhere on them'. It adds that '[i]t has not even been shown whether goods are actually offered under those other pages and if so, what goods these were'. It concludes that 'the only sign used in connection with this website as a mark, if at all, has been the ... mark [FRUIT OF THE LOOM]'.

63 It must be borne in mind that the use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (Ansul, paragraph 37).

64 In the present case, it must be noted that the page reproduced by the applicant is not sufficient to prove that the internet site www.fruit.com has a marketing or advertising function in connection with the products of the trade mark FRUIT.

65 In fact, the figurative mark FRUIT OF THE LOOM occupies a prominent position on the home page of the internet site, since it appears above the various headings - the only significant features on that page - referring to the applicant's products, stockists and contact address.

66 This arrangement is such that the headings relate to the trade mark FRUIT OF THE LOOM and not to the trade mark FRUIT. The internet site, therefore, is, at most, a means of marketing and advertising the products of the trade mark FRUIT OF THE LOOM. In any event it is not sufficient to prove genuine use of the trade mark FRUIT.

67 The fact that this is the applicant's main internet site, as the applicant emphasises in paragraph 35 of its application, is not relevant since the evidence relating to that site is not sufficient to establish the use of the mark FRUIT, but only that of the mark FRUIT OF THE LOOM.

68 Thus, the Board of Appeal was fully entitled to find that the applicant had not proved genuine use of the trade mark FRUIT. Accordingly, the action must be dismissed as unfounded.

69 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since the applicant has been unsuccessful, it must be ordered to pay OHIM's costs, in accordance with form of order sought by OHIM. Since the intervener has been unsuccessful in its submissions, it must be ordered to bear its own costs.

2. Orders Fruit of the Loom, Inc. to bear its own costs and to pay those incurred by OHIM;

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Court of Justice of the European Communities (including Court of First Instance Decisions)