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Republic of the Philippines
OFFICE OF THE PRESIDENT
•
•
FRUIT OF THE LOOM, INC. ,Opposer-Appellant, INTER PARTES CASE NO. 3636
Opposition to:
- versus - Application Serial No. 68729Filed : July 27, 1989Applicant : Vicenta Villanuev a
VICENTA VILLANUEVA, Trademark: "LOOMS"Respondent-Applicant-Appellee. Goods: Infants & children's
wear, etc .
x- ---------------------------------------------------x
DECISIO N
This is an appeal by Opposer-Appellant FRUIT OF THE LOOM, INC .,
("Appellant" for brevity), from the Decision of the Bureau of Legal Affairs (BLA)
dated 24 December 1998 denying the Opposition filed by the Appellant, and
thereby giving due course, to the application of Respondent-Applicant-Appellee
VICENTA VILLANUEVA ("Appellee", for brevity) for registration of the trademark
"LOOMS" .
The main issue to be resolved in this case is :
WHETHER OR NOT THE TRADEMARK "LOOMS" IS CONFUSINGLY OR
DECEPTIVELY SIMILAR TO THE TRADEMARK "FRUIT OF THE LOOM" .
* • INTELLECTUAL PROPERTY OFFICEIPO Building, 35 1 Sen . Gil Puyat Avenue. Makati City, Philippines
Runk Line : 752-5450 to 65 Fax: 890-4862- mailnalnonhil ttov ph Website : http: //ipophil gov ph
The facts are undisputed . Records show that on 27 July 1989, the
Appellee filed with the defunct Bureau of Patents, Trademarks, and Technology
Transfer (BPTTT) of the Department of Trade and Industry an application for
registration of the trademark "LOOMS" for use on infants and children's wear .
The Appellee claimed in the Trademark Application that the mark's first use as
well as use in the Philippines, was on 02 January 1954 . After the formality
examination the application was allowed for publication .' It appeared in the
November-December 1990 issue of the Official Gazette .
•
•
On 30 January 1991, Appellant, a foreign corporation duly organized
under the laws of the State of New York, United States of America (USA), filed
an Unverified Notice of Opposition claiming therein that :
1 . The trademark "LOOMS" so resembles Appellant's registered
trademark and tradename "FRUIT OF THE LOOM" which has
been previously used in commerce in the Philippines and other
parts of the world and not abandoned such that, when applied to
or used in connection with the goods of Appellee, will cause
confusion, mistake and deception on the pa rt of the purchasing
public;
2 . The registration of the trademark "LOOMS" will violate Section
37 of Republic Act No. 166, as amended, and Section 6bis and
other provisions of the Paris Convention for the Protection of
Industrial Property to which the Philippines and the USA ar e
parties ;
1 See Registrability Report dated 29 May 1990 .
Page 2 of 17LOOMS/Fruit of the Loom
3 . The registration and use of the trademark "LOOMS" will
diminish the distinctiveness and dilute the goodwill of
Appellant's trademark and tradename "FRUIT OF THE LOOM" ;
and
4 . The registration of the trademark "LOOMS" is contrary to other
provisions of the Trademark Law . 2
•
•
The Appellant also alleged in its Opposition that it is the owner of the
trademark and tradename "FRUIT OF THE LOOM" which was previously
registered with the BPTTT under Registration Certificate No . 37087 dated 08
April 1987 . It also claimed that the trademark "FRUIT OF THE LOOM" was
registered and in use for clothing in the USA.3
On 14 March 1991, the Appellee filed its Answer to the Notice of
Opposition specifically denying the allegations in the Opposition . The Appellee
contends in her Answer that the application is merely for the re-registration of the
trademark "LOOMS" which she has not abandoned having continuously used the
same since 1954 to identify her goods and to distinguish them from those sold
and made by others, by prominently displaying the marks on her goods, their
wrappers and the displays and various types of advertising materials associated
therewith .4 According to her, by reason of her long, prior and continued use in the
Philippines of the aforesaid trademark and extensive advertising thereof, the said
trademark has acquired a meaning exclusively identified with the goods or
products of hers and has gained wide acceptance among the consuming public .
3 pp . 1-2 .pp . 2-3 .
' pp . 4-5 .
Page 3 of 17LOOMS/Fruit of the Loom
Having established an extensive goodwill of her own, she cannot possibly, nor
does she intend to, trade on the alleged goodwill of the Appellant .
is
Subsequently, the Appellant filed a Verified Notice of Opposition on 26
March 1991 to comply with the requirements for filing an opposition .
After the hearings and the submission by the parties of their respective
evidence, the BLA rendered the assailed Decision, the dispositive portion of
which reads, as follows :
"WHEREFORE, the notice of opposition is, as it is hereby
DENIED. Accordingly, Application Serial No . 68729 for the
trademark 'LOOMS' used for infant's and children's wear, etc . is
GIVEN DUE COURSE . "
•
Let the filewrapper subject matter of this case be forwarded
to the Administrative, Financial and Human Resources
Development Bureau for appropriate action in accordance with this
Decision, with a copy to be furnished the Bureau of Trademarks for
information and update of its record ."
Unsatisfied with the said Decision, the Appellant filed this appeal, allegin g
that the BLA erred in not finding that :
1 . The mark "LOOMS" is confusingly or deceptively similar to
Appellant's registered trademark "FRUIT OF THE LOOM &
DEVICE" ;
Page 4 of 17LOOMS/Fruit of the Loom
•
lJ
2 . Registration of the mark "LOOMS" will cause great damage to
the Appellant since respondent obviously intends to trade, and
is, in fact already trading on, Appellant's goodwill ;
3. Registration of the mark "LOOMS" will cause confusion,
deception and damage to the general consuming public ; and
4 . Registration of the mark "LOOMS" will be in violation of Section
37 of Rep. Act No. 166, as amended and Article 6 (bis) and
other provisions of the 1967 Paris Convention for the Protection
of Industrial Property on internationally well-known marks .
The Appellant argues that:
"23. As stated, opposer (Appellant) is the first user of the trademark
'FRUIT OF THE LOOM & DEVICE' in and outside the Philippines .
By virtue of opposer's prior, exclusive and continued use of the
trademark 'FRUIT OF THE LOOM & DEVICE' not only in the
Philippines, but also in other pa rts of the world as well, the same
has become a popular and internationally well-known mark. As a
matter of fact, opposer has established valuable and precious
goodwill in the trademark 'FRUIT OF THE LOOM & DEVICE'
among consumers who routinely identify opposer as the one and
only source of goods bearing this trademark .
24 . However, respondent's 'LOOMS' mark is so closely associated
with, and a colorable imitation of, opposer's 'FRUIT OF THE LOOM
& DEVICE' trademark that consumers will be led to believe that
goods with the 'LOOMS' mark originate from opposer. In other
words, respondent's 'LOOMS' mark is so closely associated with,
and a colorable imitation of, opposer's 'FRUIT OF THE LOOM &
DEVICE' trademark that the possibility that consumers wil l
Page 5 of 17LOOMS/Fruit of the Loom
conclude that products bearing the 'LOOMS' mark emanate from
opposer is very likely . It is therefore respectfully submitted that this
is a clear case of deception, or at the very least, confusion, which is
not only damaging (or has already damaged) the business and
commercial standing of opposer but is, more importantly, damaging
to the general consuming public ."5
is
•
According to the Appellant, the trademark "FRUIT OF THE LOOM &
DEVICE" has become world famous such that the Appellee, in selecting the word
"LOOMS", seeks to "cash-in" on the popularity of the la tter's trademark and well-
earned reputation as the two trademarks are used on identical goods . To warrant
a denial of an application for registration, says the Appellant, the law does not
require that the competing trademarks be so identical as to produce actual error
or mistake as it would be sufficient for purposes of the law that the similarity
between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it . The Appellant cites
the case of American Wire & Cable Company vs . Director of Patentss, which
ruled that :
"xxx The determinative factor in a contest involving registration of
trademark is not whether the challenged mark would actually cause
confusion or deception of the purchasers but whether the use of
such mark would likely cause confusion or mistake on the part o f
the buying public . "
5 Appellant's Brief, p . 6 .6 G .R. No. L-26557, February 18, 1970 .
Page 6 of 17LOOMS/Fruit of the Loom
The Appellant also insists that the registration of the mark "LOOMS" in the
name of the Appellee will violate Section 37 of Rep . Act No. 166, as amended,'
and the other provisions of the 1967 Paris Convention on internationally well-
known marks . Incidentally, Section 37 of Rep. Act No. 166, as amended, which is
the governing law at the time of the application for registration of the opposed
trademark, provides :
•
"Sec. 37. Rights of foreign registrants.-
xxx xxx xxx
Any person designated in the first paragraph of this section
as entitled to the benefits and subject to the provisions of this Act
shall be entitled to effective protection against unfair competition,
and the remedies provided herein for infringement of marks and
trade-names shall be available so far as they may be appropriate in
repressing acts of unfair competition xxx ."
Article 6(bis) of the 1967 Paris Convention on internationally well-know n
I
marks, meanwhile, provides :
"(1) The countries of the Union undertake, either administratively if
their legislation so permits, or at the request of an interested party,
to refuse or to cancel the registration and to prohibit the use of a
trademark which constitutes a reproduction, imitation or translation,
liable to create confusion, of a mark considered by the competent
authority of the country of registration or use to be well-known in
that country as being already the mark of a person entitled to th e
' AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADEMARKS,TRADENAMES AND SERVICE MARKS, DEFINING UNFAIR COMPETITION AND FALSEMARKING AND PROVIDING REMEDIES AGAINST THE SAME, AND FOR OTHER PURPOSES .
Page 7 of 17LOOMS/Fruit of the Loom
benefits of the present Convention and used for identical or similar
goods . These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or
an imitation liable to create confusion therewith . xxx"8
For her part, the Appellee contends that :
"A. RESPONDENT HAS ESTABLISHED OWNERSHIP AND
GOODWILL OVER THE MARK 'LOOMS' AND IS
ENTITLED TO RE-REGISTRATION OF THE SAME .
isB. 'LOOMS' IS NOT A COLORABLE
IMITATION/CONFUSINGLY SIMILAR TO 'FRUIT OF THE
LOOM & DEVICE' .
1 . There are substantial and glaring differences in the
two marks that eliminate any likelihood of confusion in
the mind of the consuming public .
is
2. In appearance and sound, utilizing both the
dominancy and entirety tests, there is no confusing
similarity.
3 . The purchasers of the goods involved in this case
ought to be credited with sufficient intelligence and
are the type who will take their time in scrutinizing the
products .
4. The distribution channels and pricing of the goods
covered by the respective marks should also b e
Appellant's Brief, p .15
Page 8 of 17LOOMS/Fruit of the Loom
considered in resolving the issue of confusing
similarity .
C. THE REGISTRATION OF RESPONDENT'S TRADEMARK
'LOOMS' DOES NOT VIOLATE SECTION 37 OF
REPUBLIC ACT NO. 166 AND SECTION 6BIS AND
OTHER PROVISIONS OF THE PARIS CONVENTION ."
1:1
According to the Appellee, under Rep . Act No. 166, as amended, the
owner of a trademark used to distinguish his goods, business or service from
those of others shall have the right to register the same on the principal register .9
The Appellee cites and quotes a part of the Decision, to wit :
"xxx, As borne by evidence, respondent-applicant's 'LOOMS'
trademark has been in continuous use since 1954 . It was
registered in the Supplemental Register on 21 November 1958
under SR No. 208 (Exh . "I") , and was thereafter registered in the
principal register under No . 2306 for children's and ladies panties
on 12 May 1976 (Exh. "2-a") . It is only due to respondent's failure to
file an affidavit of use on the 15th anniversa ry from registration in
the principal register which thus resulted in the cancellation of the
said Registration no . 2306 that herein applicant is re-applying for
registration of the same . (Exh. "2"). However, respondent
continued to use the mark "LOOMS" by engaging in various sales
in the Philippines during this period as shown by Exhibits "5", "6" ,
711, "890, „9,. , i,10„, ,i11 „1 «12 „
Appellee's Brief, p .5 .
Page 9 of 17LOOMS/Fruit of the Loom
These pieces of evidence would only show that applicant
had established ownership of the mark "LOOMS" which had been
known to have originated from the herein applicant .xxx"10
E
The Appellee caps her case by stating that the substantial and glaring
differences in the two contending marks eliminate any likelihood of confusion in
the mind of the consuming public . Hence, there would be no confusing similarity
in the appearance and sound of the two trademarks if scrutinized using both the
dominancy and entirety tests .
Thereafter, the parties submitted their respective Reply-Brief an d
Rejoinder, which merely reiterate their earlier arguments.
After consideration of the foregoing and a review of the records, this Office
•
finds no cogent reason to disturb the assailed decision .
It must be emphasized that in the history of trademark cases in the
Philippines, particularly in ascertaining whether one trademark is confusingly
similar to or is a colorable imitation of another, no set rules can be deduced.
Each case must be decided on its own merits ." The crucial determining factor is
whether or not a trademark meets the criterion of distinctiveness .
As defined under Rep . Act No. 166, the term "trade-mark" includes any
word, name, symbol, emblem, sign or device or any combination thereof adopte d
Page 10 of 17LOOMS/Fruit of the Loom
'"Decision, p .6.Emerald Garment Manufacturing Corporation vs. Court of Appeals, 251 SCRA 600 [1995] .
and used by a manufacturer or merchant to identify his goods and distinguish
them from those manufactured, sold or dealt in by others .12 If a trademark filed
under Republic Act No . 166 meets and squarely falls under this definition, the
trademark is registrable . The exception is provided under Section 4(d) of Rep .
Act No. 166, as amended, that is, a trademark is not registrable in the principal
register if it :
0
•
"xxx (d) Consists of or comprises a mark or trade-name which
so resembles a mark or trade-name registered in the Philippines or
a mark or trade-name previously used in the Philippines by another
and not abandoned, as to be likely, when applied to or used in
connection with the goods, business or services of the applicant, to
cause confusion or mistake or to deceive purchasers ; or xxx"
The law clearly prescribes a more stringent standard in that there should
not only be confusing similarity but that it should not likely cause confusion or
mistake, or deceive purchasers.13 In other words, a mark cannot be registered if
it nearly resembles a previously registered mark belonging to a different
proprietor as to likely deceive or cause confusion, or if it is likely to mislead the
public, particularly as to the nature, quality, characteristics or origin of the goods
or services .
In the case at bar, the Appellant contends that the trademark "LOOMS" is
confusingly or deceptively similar to the trademark "FRUIT OF THE LOOMS"
and, therefore, should not be registered . The Appellant would maintain that th e
Page 11 of 17LOOMS/Fruit of the Loom
12 Rep. Act No . 166, as amended, Sec . 38 .SOCIETE DES PRODUITS NESTLE VS . CA, ET . AL., G.R. NO. 112012, April 4, 2001 .
dominant feature of its mark is the four-word "FRUIT OF THE LOOM" and the
use of the word "LOOMS" by the Appellee in her products will ce rtainly give the
mistaken impression that there is a connection between the Appellee's product
and the Appellant's when there is none .
This Office disagrees .
•
•
This Office sustains the finding by the BLA that applicant's trademark
"LOOMS" is neither identical to, nor confusingly similar with, nor a colorable
imitation of the opposer's "FRUIT OF THE LOOM" trademark. The said Bureau
could not have stated it better, that:
°The distinctions in the aforementioned comparison are so
glaringly prominent to cast away any iota of doubt as to the
variance in the source or origin of these trademarks, to the extent
that regular and new purchasers of the products bearing the subject
marks would be drawn by the appearance of the fruit device in the
mark FRUIT OF THE LOOM, or of the multi-colored backdrop in the
trademark LOOMS more than the sight of the word LOOM found in
both marks (Exhs . "B-24" to "B74", including sub-markings ; "2-s",
"2-t" and "2-t-1 ") "' a
While the competing trademarks both refer to the same class of goods,
this Office is not disposed to conclude that the trademark "LOOMS" will cause
confusion or mistake or deceive purchasers to the prejudice of the owner of the
trademark "FRUIT OF THE LOOM" and the buying public . Indeed, the
14 Decision, p . 5 .
Page 12 of 17LOOMS/Fruit of the Loom
complexities attendant to an accurate assessment of likelihood of confusion
requires that the entire panoply of elements constituting the relevant factual
landscape be comprehensively examined .1 5
i
•
In determining whether marks are confusingly or deceptively similar or
whether colorable imitation exists, jurisprudence had prescribed two kinds of
tests - the Dominancy Test and the Holistic Test . The test of dominancy focuses
on the similarity of the prevalent features of the competing trademarks, which
might cause confusion or deception and thus constitute infringement . On the
other hand, the holistic test requires that the entirety of the marks in question be
considered in determining confusing similarity .16 It must be emphasized,
however, that the aforementioned tests are not to supersede each other but that
they apply to a specific case in point . In the instant case, whether we use the
dominancy or holistic test, the conclusion would be the same . The two
trademarks are entirely different and are not confusingly or deceptively similar .
This Office compared the contending trademarks on the basis of visual,
aural, connotative comparison and over-all impressions . The size of the letters,
the colors, the pictorial arrangements, grammatical presentation, pronunciation of
the words and the entire features of the two trademarks are very different to be
confusingly or deceptively similar. The surgical dichotomy of these trademarks
made by the BLA is worth quoting, to wit :
15 Supra, SOCIETE DES PRODUITS NESTLE VS . CA, ET. AL., citing Thompson Medical Co . v . Pfizer,
Inc ., 753 F. 2d 208, 225 USPQ 124 (2d Cir . 1985) .16 Supra, Emerald Garment Manufacturing Corporation vs . Court of Appeals .
Page 13 of 17LOOMS/Fruit of the Loom
, "A cursory comparison of the two marks LOOMS of
respondent and Opposer's FRUIT OF THE LOOM; (Exhibits B-14,
B-14a to B-17, inclusive of sub-markings ; Exhibit "7" to "11",
inclusive of sub-markings) would disclose the following
obse rvations:
1 . AS TO SIZE OF LETTERS - The trademark LOOMS
is printed in bold capital letters with similar and uniform sizes inside
an oval, whereas the mark FRUIT OF THE LOOM is wri tten in fine
le tters also within an oval ;
E2. AS TO COLORS - The mark LOOMS consists of
bands of black/blue, red and yellow colors, whereas the mark
FRUIT OF THE LOOM is characterized by a variety of fruits in
green, violet, red and dark brown colors appearing above the name
FRUIT OF THE LOOM ;
3. AS TO PICTORIAL ARRANGEMENTS - The mark
LOOMS is situated within a middle red band in-between bands of
black/blue on top, and yellow below, whereas the mark FRUIT OF
THE LOOM is laid out in a white oval with different types of fruits on
top edge ;
E4 . AS TO GRAMMATICAL PRESENTATION - The word
LOOM in the mark LOOMS is a one-word plural noun, whereas the
word LOOM in the mark FRUIT OF THE LOOM is part of a
compound of words in singular noun .""
While the Appellant claims that the dominant feature of its trademark is the
four-word "FRUIT OF THE LOOM", the dominant feature of the Appellee is the
word "LOOMS". Similarly, the word "LOOMS" does not appear in the Appellant' s
17 Decision, pp . 4-5 .
V
Page 14 of 17LOOMS/Fruit of the Loom
.
trademark "FRUIT OF THE LOOM" . Conversely, the four-word "FRUIT OF THE
LOOM" does not appear in the Appellee's trademark . There is, therefore, no
similarity in the dominant features of both trademarks .
This Office might as well cite a case decided by the Supreme Cou rt where
the same trademark "FRUIT OF THE LOOM" was the object of scrutiny . In
FRUIT OF THE LOOM, INC. vs. Cou rt of Appeals,18 the High Court held :
"In the trademarks FRUIT OF THE LOOM and FRUIT FOR
EVE, the lone similar word is FRUIT. We agree with the
respondent court that by mere pronouncing the two marks, it could
hardly be said that it will provoke confusion, as to mistake one for
the other. Standing by itself, FRUIT OF THE LOOM is wholly
different from FRUIT FOR EVE . We do not agree with petitioner
that the dominant feature of both trademarks is the word FRUIT for
even in the printing of the trademark in both hang tags, the word
FRUIT is not at all made dominant over the other words . "
In another case, Asia Brewery, Inc. vs. Court of Appeals,19 the Court held that :
"There is hardly any dispute that the dominant feature of
SMC's trademark is the name of the product : SAN MIGUEL PALE
PILSEN xxx
On the other hand, the dominant feature of the ABI's
trademark is the name: BEER PALE PILSEN xxx . The trial court
" G.R. No. L-32747 . November 29, 1984 .19 224 SCRA 437 ( July 5, 1993) .
Page 15 of 17LOOMS/Fruit of the Loom
,
perceptively observed that the word "BEER" does not appear in
SMC's trademark, just as the words "SAN MIGUEL" does not
appear in ABI's trademark . Hence, there is absolutely no similarity
in the dominant features of both trademarks . "
•
•
Also, this Office takes note of the fact that the Appellee has been using
the trademark "LOOMS" since 1954 . As correctly found by the BLA, the Appellee
is merely applying for the re-registration of the trademark "LOOMS" which was
previously registered in the Supplemental Register on 21 November 1958 under
SR No. 208 and subsequently in the principal register under No . 2306 on 12 May
1976 . These facts are supported by the evidence, particularly the Affidavit of the
Appellee dated 06 September 1995, Certificate of Registration for the trademark
"LOOMS", affidavits of use, Certificate of Filing and Amended Articles of
Incorporation of Looms, Intl ., invoices, purchase orders and samples of products
bearing the trademark "LOOMS", advertisements, etc . 20 and which are never
disputed by the Appellant. Indeed, the long, prior and continued use of the
trademark "LOOMS" has given Appellee the reputation of owning the trademark
"LOOMS" that the public would not be deceived or be mistaken that the products
with trademark "LOOMS" belong to the Appellant . Prior use by one will controvert
a claim of legal appropriation by subsequent users . 21 And, as held in the case of
Arce Sons and Company vs . Selecta Biscuit Co ., Inc. 22
'Where the petitioner and its predecessor have used since
1933 the name "Selecta" as the name of its restaurant and as th e
20 See Exhibits "1" to "12" (with sub-markings) .
21 Unno Commercial Enterprises, Inc . vs. General Milling Corporation, 120 SCRA 804 (February 28,
1983) .22 1 SCRA 253 (January 28, 1961) .
Page 16 of 17LOOMS/Fruit of the Loom
mark for its dairy and bakery products, the conclusion is that it has
used that name as a trademark to distinguish its products from
those sold by other merchants or businessmen ."
•
•
This Office does not even see the need to deal with the other arguments
of the Appellants . The conclusion that the contending marks are not confusingly
similar rather rendered moot the other errors assigned by the Appellant .
WHEREFORE, premises considered, the instant appeal is hereby denied
and the Decision of the Bureau of Legal Affairs dated 24 December 1998 is
hereby AFFIRMED .
Let a copy of this Decision be furnished the Director of the Bureau of
Legal Affairs and the trademark application as well as the records be returned to
her for proper disposition . Further, let the Director of the Bureau of Trademarks
and the Director of the Administrative, Financial and Human Resources
Development Bureau be furnished copies hereof for information and guidance .
SO ORDERED .
07 May 2003, Makati City, Philippines .
A C!YRANCISCOirector eneral
Page 17 of 17LOOMS/Fruit of the Loom