Fruit of the Loom, Inc. vs. Court of Appeals

A trademark is infringed only when the use of the competing mark is likely to cause confusion or mistake among ordinary purchasers as to the origin of the goods; in determining confusing similarity, the marks must be compared in their entirety as they appear on their labels or hang tags, and substantial dissimilarities in overall design and appearance may outweigh a single common word or graphic element.

Petitioner Fruit of the Loom, Inc., a Rhode Island corporation, registered the trademark "FRUIT OF THE LOOM" in the Philippines under Certificate Nos. 6227 (November 29, 1957) and 6680 (July 26, 1958), covering men’s, women’s, and children’s underwear, and knitted, netted, and textile fabrics. Private respondent General Garments Corporation, a domestic corporation, obtained Certificate of Registration No. 10160 for "FRUIT FOR EVE" on January 10, 1963, covering women’s panties and pajamas. Both marks employed hang tags featuring a red apple. Petitioner did not oppose the registration of "FRUIT FOR EVE." Subsequently, petitioner claimed that the competing mark and its hang tag were confusingly similar to its own and constituted infringement and unfair competition.

• Registrations: Petitioner’s trademark "FRUIT OF THE LOOM" was registered for underwear and textile fabrics; it did not bear the notice “Reg. Phil. Patent Off.” Private respondent’s mark "FRUIT FOR EVE" was registered for ladies’ panties and pajamas and bore the statutory notice. Petitioner filed no opposition to the latter’s registration.
• The Accused Hang Tag: Both parties used hang tags with a red apple. Petitioner’s tag was round, light brown, with a base resembling a rolled paper; the trademark lettering was arranged in a semi-circle, and the central apple was surrounded by clusters of grapes; the apple was dark red. Private respondent’s tag was a plain rectangle, pink with a white center; the trademark appeared in a straight line in larger letters; the apple was light red and stood alone.
• Allegations and Defense: Petitioner alleged that "FRUIT FOR EVE" was confusingly similar to "FRUIT OF THE LOOM" and that the color get-up and general appearance of the hang tag were a colorable imitation. Private respondent denied confusing similarity, asserting that its mark was used solely on ladies’ panties and pajamas, whereas petitioner’s mark extended to men’s underwear.
• Trial and Appellate Rulings: The trial court found infringement and ordered cancellation of the registration, a permanent injunction, and attorney’s fees. The Court of Appeals reversed, holding that the word "FRUIT" was generic and not exclusively appropriable, and that no confusing similarity existed. Petitioner challenged this reversal before the Supreme Court, focusing on the contention that the dominant feature of both marks—the word "FRUIT" and the red apple—rendered them confusingly similar.

• Exclusive Appropriation of “FRUIT”: Petitioner argued that the Court of Appeals erred in ruling that the word “FRUIT” is generic and that a registrant cannot appropriate exclusively every word of its mark.
• Confusing Similarity: Petitioner maintained that the dominant features of both marks were the word “FRUIT” and the large red apple design, and that ordinary purchasers, upon seeing these elements on private respondent’s hang tag, would be misled into believing the goods originated from petitioner.
• Fraudulent Registration: Petitioner contended that private respondent obtained its trademark registration through fraud or misrepresentation, an issue the Court of Appeals improperly declined to address.
• Damages: Petitioner asserted entitlement to damages because private respondent had profited from the infringement of petitioner’s trademark rights.

• No Confusing Similarity: Respondent countered that "FRUIT FOR EVE," when considered in its entirety alongside its distinctive rectangular hang tag, was not confusingly similar to "FRUIT OF THE LOOM," and that its use was confined to ladies’ panties and pajamas, differentiating it from petitioner’s broader product line.
• Validity of Registration: Respondent maintained that its trademark was validly registered, bearing the required “Reg. Phil. Patent Off.” notice, unlike petitioner’s mark, and that petitioner’s failure to oppose the registration further supported its validity.

• Confusing Similarity: Whether private respondent’s trademark "FRUIT FOR EVE" and its hang tag are confusingly similar to petitioner’s "FRUIT OF THE LOOM" and its hang tag, thereby constituting trademark infringement.
• Right to Exclusive Use of “FRUIT”: Whether the Court of Appeals correctly held that the word “FRUIT” is generic and not exclusively appropriable by petitioner.
• Fraudulent Registration: Whether private respondent obtained its trademark registration through fraud or misrepresentation.
• Damages: Whether petitioner is entitled to damages as a result of the alleged infringement.

• Confusing Similarity: The trademarks, examined in their entirety as they appear on the hang tags, are not confusingly similar. The lone common word “FRUIT” is not the dominant feature; pronouncing the full marks reveals no risk of confusion. The hang tags display glaring dissimilarities: petitioner’s tag is round, light brown, with a rolled-paper base and semi-circular lettering surrounded by grapes, bearing a dark red apple; private respondent’s tag is a plain pink rectangle with a white center, straight-line text in larger letters, and a solitary light red apple. The similarities are lost in these substantial differences. An ordinary purchaser, possessed of at least a modicum of intelligence, can perceive the obvious distinctions and would not mistake one product for the other.
• Right to Exclusive Use of “FRUIT”: In light of the finding that no confusing similarity exists and that the word “FRUIT” is not the dominant feature, this issue was rendered immaterial; the appellate court’s observations on the generic nature of “FRUIT” did not constitute reversible error.
• Fraudulent Registration: The question of fraud was not reached, as the absence of confusing similarity eliminated any necessity to determine the validity of the registration or the presence of misrepresentation.
• Damages: No damages were awarded, because no trademark infringement was established.

• Likelihood of Confusion Test for Trademark Infringement — Infringement exists only where the use of the contested mark is likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin of the goods. The marks must be compared in their entirety as they appear on their respective labels, considering both predominant words and all other features, not merely isolated common terms. The discerning eye must account for the overall impression created. (Citing Co Tiong Sa v. Director of Patents, 95 Phil. 1; Bristol Myers Co. v. Director of Patents, 17 SCRA 131.)
• Ordinary Purchaser Standard — The ordinary purchaser is credited with at least a modicum of intelligence, sufficient to perceive obvious differences between two trademarks. A consumer familiar with one product will not be confused into purchasing the other when the dissimilarities are glaring and striking. (Citing Carnation Co. v. California Growers Wineries, 97 F. 2d 80; Hyram Walke and Sons v. Penn-Maryland Corp., 79 F. 2d 836.)

• “In cases involving infringement of trademark … it has been consistently held that there is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity.”
• “The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other.”
• “The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. … The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question.”
• “By mere pronouncing the two marks, it could hardly be said that it will provoke a confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE.”

• Co Tiong Sa v. Director of Patents, 95 Phil. 1 — Followed; affirmed the likelihood-of-confusion standard for trademark infringement.
• Alhambra Cigar & Cigarette Co. v. Mojica, 27 Phil. 266 — Followed; reiterated the same infringement standard.
• Sapolin Co. v. Balmaceda, 67 Phil. 705 — Followed; applied the likelihood-of-confusion rule.
• La Insular v. Jao Oge, 47 Phil. 75 — Followed; used to reinforce the definition of infringement.
• Bristol Myers Co. v. Director of Patents, 17 SCRA 131 — Followed; relied upon for the rule that trademarks must be considered in their entirety, including non-verbal features on labels.
• Carnation Co. v. California Growers Wineries, 97 F. 2d 80 — Persuasive authority cited for the “modicum of intelligence” standard for ordinary purchasers.
• Hyram Walke and Sons v. Penn-Maryland Corp., 79 F. 2d 836 — Persuasive authority adopted for the same purchaser standard.

N/A — No specific statutory or codal provisions were cited in the decision; the analysis rested on established jurisprudence defining trademark infringement.

Aquino, Concepcion Jr., Abad Santos, Escolin, and Cuevas, JJ., concurred.

None.