Geoffrey, LLC (“Opposer”), the owner of the “R” US marks, opposed Dolly Chotrani’s trademark applications (“Respondent-Applicant”) for the WATCH R’ US and TIME R’ US marks as follows:
The Opposer argued that “TIME R’ US” and “WATCH R’ US” are confusingly similar to its “TOYS “R” US” trademarks and its variants which are well known internationally and in the Philippines. The “TOYS “R” US mark and its variants are registered in various jurisdictions and enjoy immense good-will due in part to the Opposer’s aggressive and extensive promotions and advertisements. In the Philippines, the Opposer has registrations for “TOYS “R” US” and its other variants as early as the year 1995.
Respondent-Applicant conveniently pointed out that “TOYS R US” trademarks uses a reverse “R” with a star while the marks applied for neither consists of a reverse “R” nor a star and that the “R” us expression is not the dominant feature of “TIME R’ US” and “WATCH R’ US”. She further argued that the “TOYS R US” trademarks cover children’s toys while the “TIME R’ US” and “WATCH R’ US” marks seek to cover retail store specializing in watches, which cater to a different segment of the market.
The Bureau of Legal Affairs (BLA) debunked the Respondent-Applicant’s claim as follows:
“A comparison of the competing marks shows that they only differ in their first words, but the remaining portion, “R” US have the same spelling, except in Opposer’s trademark with an inverted letter “R”. However, the manner in which the letter “R” is written does not make any significant difference because it will still be pronounced as the letter “R” or the words “are””
Furthermore, the BLA observes:
“A further examination of the marks also reveals that the dominant portion of the competing marks are the letters “R” and the pronoun “US”, since the words like “parties”, “toys”, “babies and “time” and descriptive words or terms. Thus, standing alone, these words cannot be appropriated by any parties except when the word/s have acquired secondary meaning”.
The BLA ruled that confusion of goods is likely to occur in relation to Respondent Applicant’s use of the marks, “Time R’ US” and “Watch R’ US’. This is because Opposer’s “R” US trademarks are also used on wholesale and retail store services, which sell the same related products of watches and other time telling device and in such case, “a person’s goods or services are purchased as that of another person, and the poorer quality of the former reflects adversely on the latter’s reputation”.
Finally, the BLA took judicial notice of the declaration of Opposer’s trademark containing the dominant feature “R US” as well-known in Decision No. 2002-42 dated 26 December 2002.
(Decision rendered in IPC No. 14-2015-00234 and IPC No. 14-2015-00116)