FRUIT OF THE LOOM, INC. , Respondent-Applicant-Appellee

Republic of the Philippines

OFFICE OF THE PRESIDENT

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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 .

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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

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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 .

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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

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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 .


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 . "

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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" ;


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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


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

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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 .


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 :

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"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

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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 .


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


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 .


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

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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


'"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 :

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"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


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 .

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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 .


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

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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 .


, "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 .

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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) .


,

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 . "

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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) .


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 ."

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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


Documents

FRUIT OF THE LOOM, INC. , Respondent-Applicant-Appellee