By Thomas Long, J.D.
Kellogg failed to provide sufficient proof that its FROOT LOOPS mark, for cereal, had acquired a sufficient reputation in the U.K. for members of the public in that country to mentally link the parties’ marks.
The United Kingdom Intellectual Property Office (IPO) has rejected oppositions by Kellogg Company to an English brewery’s applications to register the word mark FRUIT LOOP and a logo featuring those words, for beer, ale, lager, stout, and porter, in a decision issued May 2, 2019. According to the IPO, Kellogg failed to provide sufficient evidence to establish that the U.K. public would perceive a link between the applied-for FRUIT LOOP mark and Kellogg’s mark FROOT LOOPS, for which it held a European Union registration for “preparations made from cereals” (In the Matter of Consolidated Oppositions Thereto Under Nos. 412633 & 412678 by Kellogg Company, May 2, 2019).
Applicant Fuller Smith & Turner plc applied to register its two marks for identical goods in Class 32: Beer, ale, lager, stout and porter; non-alcoholic beers. Kellogg opposed the applicants, asserting that use of the applied-for FRUIT LOOP mark “would take unfair advantage of its mark and … would ride upon the coat tails of the opponent’s reputation and marketing efforts which would provide an unfair advantage.” Kellogg additionally asserted that the applicant’s mark “would also dilute the distinctiveness of its mark, and the association of the opponent’s product with use on alcoholic beverages is likely to cause detriment to its reputation.”
The IPO first considered whether Kellogg had sufficiently proven use of its mark in the United Kingdom, as well as whether Kellogg showed that the mark had a sufficient reputation in that country for trademark protection. Although Kellogg claimed to have launched its FROOT LOOPS product in 1963 it did not clearly state in its notices of opposition that this product launch took place in the UK. Kellogg failed to provide any sales figures for the UK, and the only marketing figures were in relation to a special edition “Unicorn Froot Loops.” It was unclear how many packets were offered for sale under this limited edition, let alone how many packets were sold, said the IPO. Also, the IPO believed that the special edition product would probably be more remembered for its link to a unicorn than the name of the product.
Moreover, even if Kellogg had passed the proof of use test it would then have to show reputation in the UK. The IPO noted that the applicant made the following “surprising statement”: “Whilst 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 …” However, the applicant’s representatives made no mention of the issue of proof of use or reputation other than this single sentence. Remarking that Kellogg’s FROOT LOOPS product was “basically an American one,” the IPO took the view that the evidence did not contain proof of the brand’s reputation in the UK, and the applicant’s statement was to be taken as its opinion or its personal knowledge. However, the IPO concluded that the applicant had made an admission against interest that was sufficient to allow Kellogg to “scrape over” the proof of use and reputation hurdles.
The IPO then moved on to consideration of whether the public will form a link between the two marks—similar to the “likelihood of confusion” analysis in U.S. trademark law. The IPO considered the following factors: (1) the degree of similarity between the conflicting marks; (2) the nature of the goods or services for which the conflicting marks are registered, or proposed to be registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; (3) the strength of the earlier mark’s reputation; and (4) the degree of the earlier mark’s distinctive character, whether inherent or acquired through use.
Comparing the applicant’s word mark to Kellogg’s mark, the IPO deemed the marks “visually similar to a medium degree,” given the differences in spelling. The marks were almost identical in sound. The connotations of the marks, however, were not similar, with Kellogg’s mark evoking “loops of fruit,” and the applicant’s mark bringing to mind “a well-known term in English for someone who is a bit mad, dippy or crazy,” which the IPO noted might conjure up what the applicant’s beer will do to the drinker. The IPO considered the applicant’s logo mark to only be similar to FROOT LOOPS to a “low degree,” given the visual differences between them.
As for mark strength, the IPO decided that FROOT LOOPS had a low degree of reputation in the U.K., given the lack of evidence presented of length and extent of use in that country. The mark had not acquired distinctiveness. While the parties’ goods were dissimilar, they would both be purchased by the general public.
Weighing the factors, the IPO concluded that there was no possibility of the average consumer making a link between the marks of the two parties. Therefore, the opposition failed.
The case is Trade Marks Inter Partes Decision No. O-229-19.
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