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PLEASE NOTE: Information in this article is correct at the time of publication, please contact DFA Law for current advice on older articles.
When considering a trade mark, it is the mark as a whole which needs to be looked at. The obviousness of this point was illustrated by a recent case in the General Court of the European Union.
The Court had to consider a claim that the trade mark of major US underwear manufacturer Fruit of the Loom was sufficient justification for an application to obtain a Community Trade Mark for the word ‘Fruit’ with regard to textiles on the basis that it had made ‘genuine use’ of the word in relation to its goods in the EU.
The Court ruled that the use of Fruit of the Loom in EU countries was not sufficient to make ‘Fruit’ a trade mark and that ‘none of the evidence submitted by the applicant to prove genuine use of the mark FRUIT was capable of establishing such use’.
In a lengthy decision, the Court concluded that a distinction must be made in that regard between English-speaking and non-English-speaking consumers. For the former, the Court found that the term ‘fruit’, the sole element of the trade mark FRUIT, has a precise meaning, whereas the expression ‘fruit of the loom’ is an expression invented by the applicant, the originality of which lies in the fact that 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.
As the word ‘fruit’ was determined not to be the dominant element of the trade mark, the application was refused.
This clearly has implications for owners of ‘complex’ trade marks, especially those where there is not an obviously dominant element.
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