Trademark Must-Haves: Clean Underwear and Supporting Evidence

Fruit of the Loom successfully appealed a decision from the Registrar of Trademarks finding no likelihood of confusion between its registered mark, “UNDERWEAR THAT’S FUN TO WEAR”, and LRC Products Limited’s trademark application, “FUNDAWEAR”.

Fruit of the Loom uses UNDERWEAR THAT’S FUN TO WEAR in connection with “top and bottom sets and t-shirts marketed to children and adults”, featuring superheroes for children and “sexually suggestive” slogans for adults.

The Respondent, LRC Products, uses FUNDAWEAR in connection with sexual wellbeing products, ranging from creams and gels to clothing, t-shirts, underwear, nightwear, and costumes. Before the Registrar, the Respondent claimed that FUNDAWEAR was “intended to be used as a sub-brand of the DUREX brand”.

Upon considering the factors under s 6(5) of the Trademarks Act, the Registrar found no likelihood of confusion between the two marks: “The Registrar had particular regard for the difference between the trademarks in appearance and sound, the limited inherent distinctiveness of [Fruit of the Loom’s] trademark, and the limited evidence of acquired distinctiveness and length of time in use of [its] trademark.” More importantly, the Appellant failed to produce evidence demonstrating use of UNDERWEAR THAT’S FUN TO WEAR before the Respondent’s priority filing date.

On appeal, Fruit of the Loom filed a further affidavit with evidence of sales in Canada related to UNDERWEAR THAT’S FUN TO WEAR and evidence of its promotion and advertising expenses from 1980 to the present. LRC Products did not appear on the appeal or file evidence.

Justice Phelan found Fruit of the Loom’s evidence cured the defects in its original material that had “left the [Appellant’s] trademark application exposed”. The new evidence “show[ed] a greater likelihood of confusion because the Applicant’s trademark acquired distinctiveness based on use in Canada, became known by longstanding use and was sold through channels of trade which overlapped those used by the Respondent.”

The Court reviewed the Registrar’s decision de novo in light of this new evidence and found a likelihood of confusion between the marks. Justice Phelan especially noted the resemblance between the marks and the perspective of “the casual consumer somewhat in a hurry and having an imperfect recollection of the original trademark.” He emphasized, “[the test for confusion] is a real world test based on the common sense of the common person,” and such a person could mistakenly believe that the source of UNDERWEAR THAT’S FUN TO WEAR is the same as a FUNDAWEAR product.

Notably, the Court found “the surrounding circumstances” had little bearing on the result, including the Respondent’s intention to use FUNDAWEAR in connection with the umbrella brand DUREX. The Court also did not consider the marks’ different beginnings, focusing solely on their similar endings.

A copy of the decision can be found here.