FROOT for thought

22nd Jul 2019

Roshani Muniweera reports a case with an interesting twist. O/229/19, FRUIT LOOP (Opposition), UK IPO, 3rd May 2019.

Froot for thought

O/229/19, FRUIT LOOP (Opposition), UK IPO, 3rd May 2019

This case concerns an opposition by Kellogg Company (Kellogg) against Fuller Smith & Turner Plc’s (Fuller) two UK trade mark applications for FRUIT LOOP marks. Fuller’s applications both cover “beer; ale; lager; stout and porter; non-alcoholic beers” in class 32. 

Kellogg opposed the applications under s5(3) of the Trade Marks Act 1994 based on its earlier EU trade mark registration for FROOT LOOPS, covering a range of goods in class 30. Kellogg claimed it had a reputation in the mark FROOT LOOPS for “preparations made from cereals” and use of Fuller’s mark would ride on the coat tails of its reputation and marketing efforts and give Fuller an unfair advantage. In addition, it claimed it would dilute the distinctiveness of the FROOT LOOPS mark and the association with alcoholic beverages would cause detriment to its reputation. Fuller denied all the claims and put Kellogg to proof of use. 

Based on the evidence filed by Kellogg, consisting of two witness statements, the Hearing Officer (HO) found against it. While Kellogg stated its Froot Loops product was launched in 1963, it failed to mention whether this was in the UK. In addition, it did not provide UK sales figures and did not set out how many packets of “Froot Loops” were sold in the UK. Consequently, the HO found that Kellogg had not submitted sufficient evidence of use of its mark even though such data must have been available. The HO found that Kellogg had also not established that its FROOT LOOPS mark has a reputation. 

However, the HO went on to consider a seemingly inadvertent statement made by Fuller in its submissions: “It is accepted that consumers of the applicant’s ale sold under the word mark and the label mark would likely be aware of the opponent’s mark for breakfast cereal by reason of the opponent’s long-standing usage of the opponent’s mark…” The HO considered this comment as an expression of Fuller’s opinion of Kellogg’s use of its mark and an admission that Kellogg’s proof of use and reputation requirements were met. As such, the HO then evaluated the requirements under s5(3) to assess whether a significant part of the public will form a link between the marks and held the following:

  • FRUIT LOOP (3288748) is similar to the Opponent’s mark to a medium degree.
  • The Applicant’s mark 3288758 is similar to the Opponent’s mark to a low degree.
  • Kellogg has a low degree of reputation in the UK.
  • Kellogg’s EUTM for FROOT LOOP has an average degree of distinctiveness but cannot benefit from any acquired distinctiveness. The goods of Kellogg and Fuller are not similar although both will be purchased by the general public.

The HO therefore found that the average consumer would not make a link between the Kellogg and Fuller marks, and the opposition under s5(3) failed.

Following the recent EUIPO decision on BIG MAC, this case also highlights that big companies cannot be complacent when filing evidence of use. Registered proprietors must draw upon all the resources they have available to provide conclusive evidence of their use of a mark or their reputation. And most importantly, every statement made in submissions should be carefully considered to avoid inadvertently assisting the other side.

Key points

  • The importance of providing conclusive evidence of use cannot be overestimated
  • If you make a claim as to reputation, make sure you submit the evidence to back it up
  • Choose your words carefully in your submissions – do not risk them unintentionally assisting the other side

Roshani Muniweera is a Chartered Trade Mark Attorney at Boult Wade Tennant LLP

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