~iPGEOFFREY, LLC., }

Opposer, }}

-versus- }}

MICHAEL SIYT AOCO }Respondent-Applicant }

x - - - - - - - - - - - - - - - - - - - - - - - - - -x

IPC No. 14-2008-00336Case Filed: 08 Dec 2008Opposition to:Appl. Serial No : 4-2008-000583Date Filed: 17 January 2008Trademark: SOCKS R' US

Decision No. : 2009- ~

This pertains to the Opposition filed by GEOFFREY LLC., a corporationorganized and existing under the laws of the State of Delaware, USA, withprincipal address at No. 2002 W. 14th Street, Wilmington, Delaware, USA,against the registration of the mark SOCKS R US covering socks and stockingsunder Class 25, with Application Serial No. 4-2008-000583 and filed on 17January 2008 in the name of MICHAEL SIYTAOCO, a. Filipino citizen withaddress in No. 523 Elcano Street, San Nicolas, Binondo, Manila, Philippines.

The grounds for opposition to the registration of the mark SOCKS R USare as follows:

1. "Opposer is not doing business in the Philippines but has thecapacity to sue under Section 160 of Republic Act No. 8293,known as the Intellectual Property Code of the Philippines.Opposer's home country where it is domiciled, grants, by treaty,convention or law, to persons of the Philippines, the privilege tobring an action in that country for infringement, unfaircompetition or false designation of origin and false descriptionwithout the need of a license to do business in that country.Notices and processes relative to the instant case may beserved thru the undersigned counsel as the duly authorizedrepresentative of Opposer in the Philippines.

2. "Opposer's principal place of business is in the United States ofAmerica, which country and the Philippines are members-signatory to the WTO (Uruguay Round) - TRIPS Agreement.Under Article 2.1 in relation to Article 16 and Article 42 of saidAgreement. [M]embers shall make available to right holders civiljudicial procedures concerning the enforcement of intellectualproperty rights. Said Agreement further provides that [e]ac~Member shall accord to the nationals of other Member~treatment no less favorable than it accords to its own national~ J./with regard to the protection of intellectual property, subject t~'J

1Republic of the PhilippinesINTEllECTUAL PROPERlY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 PhilippinesTelephone: +632-7525450 to 65 Facsimile: +632-8904918 Email: mail@ipophil.gov.ph

http://www.ipophil.gov.ph

the exceptions already provided in, respectively, the ParisConvention (1967).

3. "The aforesaid provisions of the TRIPS Agreement have beencarried into effect by Section 3 of Republic Act 8293, as follows:

"Section 3. International Conventions and Reciprocity. - Any person whois a national or who is domiciled or has a real and effective industrialestablishment in a country which is a party to any convention, treaty oragreement relating to intellectual property rights or the repression of unfaircompetition to which the Philippines is also a party, or extends reciprocalrights to nationals of the Philippines by law, shall be entitled to benefits to theextent necessary to give effect to any provision of such convention, treaty orreciprocal law, in addition to the rights to which any owner of an intellectualproperty right is otherwise entitled by this Act."

4. "Respondent-Applicant purports itself as an individual withaddress of record as above-stated, and where Respondent-Applicant may be served with notices and processes of thisHonorable Office.

5. "On January 17, 2008, Respondent-Applicant filed anapplication for the mark "SOCKS R US" covered by TrademarkApplication Serial No. 4-2008-000583, covering goods inClasses 25, specifically for "socks and stockings", whichapplication was published for opposition in the e-Gazette onAugust 8, 2008. Accordingly, Opposer has until September 7,2008 to file its Verified Notice of Opposition subject to the threeextensions of time as provided under the rules. A printout ofTrademark Application Serial No. 4-2008-000583 is attachedherewith as Exhibit "C".

6. "On September 5, October 2 and November 6, Opposer, inaccordance with the Rules and Regulations on Inter PartesProceedings, filed with the Honorable Bureau of Legal Affairsthree (3) Motions for Extensions of Time to File its VerifiedNotice of Opposition, all of which were granted. Thus, Opposerhas until December 6, 2008 within which to file its VerifiedNotice of Opposition to the application for the mark "SOCKS RUS" in the name of Respondent-Applicant. Considering,however, that December 6, 2008 is a Saturday, Opposer hasuntil the next working day or until December 8, 2008 withinwhich to file its Verified Notice of Opposition. Opposer believesthat it would be damaged by the registration of the mark"SOCKS R US" in the name of Respondent-Applicant.

Opposer relied on the following facts and circumstances to support theircontentions in this Opposition:

1. "Opposer is a Limited Liability Corporation duly organized under thelaws of the State of Delaware, United States of America, formerlyknown as Geoffrey Inc., and owns the registered trademarks andservice marks TOYS 'R' US, TOYS R US, TOYS "R" US, KIDS "R"US, BIKES "R" US, BABIES "R" US, "R" lONE, and the family of"R" US marks, among others.

2. "TOYS "R" US and the other stores under the "R US" group hasbeen a favorite destination for kids and grown-ups alike with itsimpressive assortment of toys, games, sporting goods, electronics,software, baby products, children's apparel and juvenile furniture.

3. "To date, Toys "R" Us and the "R US" group is one of the leadingretailers of toys and baby products with more than 1,400freestanding destination toy and baby specialty stores worldwide.The company sells merchandise through 586 toy stores in the U.S.and over 650 international toy stores, including licensed andfranchised stores, as well as through its Internet site atwww.toysrus.com.

4. "With over 650 Toys "R" Us and almost 35 Babies "R" Us stores in31 countries outside of the United States, TOYS "R" US is acompany that has successfully translated its business abroad.Since joining the international scene in 1984 with stores in Canadaand Singapore, TOYS "R" US has become a worldwide toyphenomenon, embodying the same customer philosophy of quality,value and selection under one roof that resonates with parentsaround the globe. The certified copy of the Affidavit-DirectTestimony of Opposer's Vice-President, Louis Lipschitz, is attachedhereto as Exhibit "0", also attached is the Affidavit-Direct Testimonyof Peter Weis, secretary and vice-president for Taxes of Opposer,as Exhibit "E", attesting to the allegations herein set forth. Theoriginal of the aforementioned Exhibits has been previouslysubmitted to this Honorable Office in IPC Case No. 3666 captioned"Petition for Cancellation, Toys "R" Us Inc., vs. Clothes "R" Us".

5. "In 1998, TOYS "R" US launched Toysrus.com which became oneof the leading online stores for toys, video games and othermerchandise. Today, TOYS "R" US' considerable Internetpresence also includes www.babiesrus.com. offering a wideselection of baby products and supplies and an online babyregistry; www.imaginarium.com. featuring a variety of learning an~educational toys; www.sportsrus.com. one of the widest selectionsof youth sporting equipment, apparel and memorabilia; andwww.personalizedbyrus.com. personalized gifts for the whole fami~

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ranging from stuffed animals and baby gifts to clothing and homedecor. Other websites of TOYS "R" US includewww.birthdaysrus.com, and www.giftsrus.com, as well as manyindividual country websites such as: www.toysrus.com.au(Australia); www.toysrus.ca (Canada); www.toysrus.de (Germany);www.toysrus.at (Austria); www.toysrus.fr (France); www.toysrus.es(Iberia); www.toysrus.co.jp (Japan); www.toysrus.co.uk (UnitedKingdom), etc. Sample printouts of Opposer's websites areattached hereto as Exhibits F.

6. "Opposer's country licensees also maintain the following websitesfor TOYS "R" US: www.toysrus.co.il (Israel); www.toysrus.co.za(South Africa); www.toysrus.nl (Netherlands); www.toysrus.com.hk(Hong Kong); www.toysrus.com.sg (Singapore);www.toysrus.com.my (Malaysia); www.toysrus.co.th (Thailand);www.toysrus.com.cn (China); www.toysrus.com.tw (Taiwan); etc.Copies of websites printouts are attached hereto as Exhibits G.

7. "Opposer is the registered proprietor of the distinctive trade mark"R" US", in addition to a series of marks incorporating the "R" USsuffix, throughout the world.

8. "Opposer's active and pending registrations in the United States,include registrations not only for the mark Toys "R" Us, but alsoKids "R" Us, Babies "R" Us, Lights "R" Us, "R" Us, Birthdays "R" Us,Goodies "R" Us, I am a Toys "R' Us Kid, Mathematics "R" Us,Sports "R" Us and Stickers "R' Us, among others.

9. "Opposer has registered the trademark TOYS "R" US and its familyof "R" US marks not only in its home country, the United States ofAmerica, but in other countries all over the world including thePhilippines. The countries where the TOYS "R" US and the familyof "R" US marks are registered or has a pending application forregistration in the name of Opposer includes Andorra, Angola,Argentina, Aruba, Australia, Austria, Azerbaijan, Bahamas, Bahrain,Barbados, Benelux, Bermuda, Bhutan, Bolivia, Botswana,Brazil,Brunei, Cayman Islands, Canada, Chile, China, Colombia,Costa Rica, Croatia, Cyprus, Czech Republic, Oem. Republic ofCongo, Denmark, Dominican Republic, Ecuador, Egypt, EISalvador, Ethiopia, European Union, Federation of Russia, Finland,France, Germany, Greece, Grenada, Guatemala, Guernsey,Honduras, Hong Kong, Hungary, Iceland, Indonesia, India, Iran,Ireland, Israel, Italy, Jamaica, Japan, Jersey, Jordan, Kazakhstan, .;;;;;;?Kenya, Kuwait, Lebanon, Lesotho, Liberia, Macao, Malawi, ~Malaysia,Malta,Mauritius,Mexico,Morocco,Namibia,Netherland~rAntiiles, New Zeaiand, Nicaragua, Northern Cyprus, Norway;I

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Oman, Pakistan, Panama, Paraguay, Peru, Poland, Portugal,Qatar, Romania, Saudi Arabia, Serbia and Montenegro, Singapore,Slovak Republic, Slovenia, South Africa, South Korea, Spain, Stateof Virginia, Sudan, Swaziland, Sweden, Switzerland, Taiwan,Tajikistan, Tanzania (Tanganyika), Tanzania (Zanzibar) Tangiers,Thailand, Trinidad and Tobago, Turkey, Turkmenistan, Ukraine,United Arab Emirates, United Kingdom, United States of America,Uruguay, Uzbekistan, Venezuela, Vietnam, Yemen, YemenSouthern, Zambia and Zimbabwe.

10. "In the Philippines, Toys "R" Us stores are located in Robinson'sGalleria, Ortigas, Metro Manila, Robinsons Place Lipa, RobinsonsMetro East in Pasig and Robinsons Bacolod. Opposer hasregistered the TOYS "R" US trademark in the Philippines. It hasalso registered or applied for registration, the following "R" UStrademarks in the Philippines, namely TOYS 'R' US, TOYS R US,TOYS "R" US, KIDS "R" US, BIKES "R" US, BABIES "R" US, "R"ZONE. Details of the aforementioned Philippine registrations aresummarized below:

Application Registration Trademark Nice ClassNumber Number

1 42004003324 42004003324 uRnZONE 352 42004003326 42004003326 BABIES uRnUS 25 353 42004003325 42004003325 BIKES uRnUS 354 42005009003 42005009003 KIDS uRn US 255 42004003322 42004003322 KIDS uRnUS 356 058604 058604 KIDS uRnUS 257 42001001899 42001001899 TOYS uRnus 288 061966 061966 TOYS 'R' US 429 41995098645 41995098645 TOYS R US 28

11."Opposer is the true and actual owner of the well-known trademarkTOYS "R" US registered under Certificates of Registration Nos.61966 and 4-2001-001899 issued by the Intellectual Property Office("IPO").

12. "Opposer's world famous "R" US registrations and applicationscover such services as: distribution of advertising materials,information and advisory for the business of selling toys, sportingequipment and children's products, etc., and insurance servicesetc., as well as such goods as printed matters, paper, stationery,marking chalk, crayons, ink markers, adhesive tapes for stationery,children's books, greeting cards, audio and video tapes, videogames, games, toys, playthings; microscope and scientificinstruments; sporting goods and equipment; children and baby~supplies (which includes wipes and tissues); furniture; physical and~chemicalmachines;opticalmachines;photographicmachinesanr

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instruments; motion pictures machines and instruments;confections, bread; paper stationery; printed matters, drawings andpainting, sculptures, photographs and accessories of these goods;time pieces, eyeglasses and parts; personal ornaments, buttons,bags,' pouches; artificial flowers; toilet articles; interior furnishings;pants; sets, paint brushes; woven fabrics; soaps; industrialmachines; bleaching preparations and other substances for laundryuse and many others.

13. "The popularity or well-knownness of Opposer's TOYS "R" US andthe family of "R" US marks has been affirmed not only abroad butalso in the Philippines.

14. "Respondent-Applicant's trademark application for "SOCKS R US"covered by Trademark Application Serial No. 4-2008-000583 filedon January 17, 2008 covering goods in Classes 25, specifically for"socks and stockings" respectively, should be REJECTED as it isidentical to the internationally and locally well-known trademarkTOYS "R" US and the family of R' US marks owned by the Opposerwhich when applied to or sued in connection with the goods ofRespondent-Applicant will cause confusion or mistake or deceivethe purchasers.

15. "The registration of the trademark "SOCKS R US" in the name ofRespondent-Applicant will violate the following provisions of RA8293, to wit: Section 123.1 pars (d), (e), (f) and (g) which provides:

(d) Is identical with a registered mark belonging to a differentproprietor or a mark with an earlier filing or priority date, in respect of:

(i) The same goods or services, or(ii) Closely related goods or services, or(iii) If it nearly resembles such a mark as to likely to

deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes atranslation of a mark which is considered by the competent authority ofthe Philippines to be well-known internationally and in the Philippines,whether or not it is registered here, as being already the marks of aperson other than the applicant for registration, and used for identical orsimilar goods or services: Provided, That in determining whether a markis well-known, account shall be taken of the knowledge of the relevantsector of the public, rather than of the public at large, includingknowledge in the Philippines which has been obtained as a result of thepromotion of the mark;

(f) Is identical with, or confusingly similar to or constitute a ~translation of a mark considered well-known in accordance with (e),which is registered in the Philippines with respect to goods or service~

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which are not similar to those with respect to which registration is appliedfor: Provided, That the use of the mark in relation to those goods orservices would indicate a connection between those goods or services,and the owner of the registered mark: Provided further, That the interestof the owner the registered mark are likely to be damaged by such use."

(g) Is likely to mislead the public, particularly as to the nature,quality, characteristics or geographical origin of the goods or services.

16. "The identity or confusing similarity of Respondent-Applicant's mark"SOCKS R US" and Opposer's well-known TOYS "R" US and "R"US marks is undeniable. Respondent-Applicant, in fact, simplymisappropriated Opposer's "R" US designation and affixed thesame to the descriptive word SOCKS.

17. "It should be noted that the first word of Respondent-Applicant'smark "SOCKS" merely refers to the product where its mark will beapplied, i.e., "socks and stockings". In fact the term "SOCKS" wasdisclaimed by Respondent in its trademark application, thus,effectively leaving only the elements "R US".

18. "Clearly, Respondent-Applicant's mark "SOCKS R US" is simply anillegal appropriation of the distinctive "R" US designation fromOpposer's well-known mark TOYS "R" US and the family of "R" USmarks.

19. "In McDonald's Corporation vs. L.C. Big Mak Burger, Inc. 437SCRA 10, the dominancy test was used to determine whether amark is confusingly similar. The Supreme Court held:

"This Court, however, has relied on the dominancy test rather than theholistic test. The dominancy test considers the dominant features in thecompeting marks in determining whether they are confusingly similar. Under thedominancy test, courts give greater weight to the similarity of the dominantfeatures of the registered mark, disregarding minor differences. Courts willconsider more the aural and visual impressions created by the marks in thepublic mind, giving little weight to factors like prices, quality, sales outlets andmarket segments."

20. "In view of the fact that the dominant elements of the Opposer'smark TOYS "R" US and the "R US" group is the "R" US elementand the fact that Opposer has valid registrations of its well-knownTOYS "R" US and the family of "R" US marks, there is no doubt thatRespondent-Applicant's mark "SOCKS R US" is confusingly similarto Opposer's marks, if not identical.

21. "In view of the fact that the dominant elements of the Opposer's Jmark TOYS "R" US and the "R US " group is the "R" US element ~and the fact that Opposer has valid registrations of its well-know~

TOYS "R" US and the family of "R" US marks, there is no doubt thatRespondent-Applicant's mark "SOCKS R US" is confusingly similarto Opposer's marks, if not identical.

22. "At this juncture, it is worth to point that this is not the first time thatOpposer has defended and successfully won its well-known marks,not only abroad, but also in the Philippines before the Departmentof Trade and Industry and before this Honorable Bureau of LegalAffairs. Opposer's success in defending its mark is evidenced byits oppositions to the applications to register marks including the "R"US suffix in various fields of business and/or class of goods.

23. "In the United States, noteworthy is the decision of the district Courtof California on 25 July 1990, in the case of Geoffrey, Inc. vs.Stratton, where the said court ruled that herein Opposer's long andcontinuous use of its registered "R" Us" family of marks renders thepresumption of secondary meaning irrefutable. This decision wasaffirmed by the United States Ninth Circuit, Court of Appeals whichgranted Opposer's prayer to enjoin the Respondent from using themark PHONES "R" US which the court found to have infringedupon Opposer's mark TOYS "R" US.

24. "In the Philippines, Opposer's exclusive right to its "R" US mark hasbeen affirmed in such cases as Toys "R" Us vs. Shoes "R" Us (InterPartes No. 3775 and 3810); Geoffrey, Inc. vs. Cars "R" US(Administrative Case No. 96-10); Geoffrey, Inc. vs. Books "R" US(Administrative Case No. 96-20), Inter partes case for Opposition toApplication No. 95925 for the trademark Fries "R" Us, IPC Case no.14-1999-00040, for the cancellation of business name Computers"R" Us, Administrative case No. 99-26 (Cars R' Us), Administrativecase No. 03-10 (Gardens R Us) by the Department of Trade andIndustry, National Capital Region, Geoffrey Inc. vs. Wipes R US(IPC No. 14-2007-00314).

25. "Opposer's ownership of the distinctive "R" Us mark was alsoacknowledged in the cases of Geoffrey, Inc. vs. Jimarico, Inc.(Adm. Case No. 97-100).

26. "The mark TOYS "R" US has been declared a well-known mark inthe cases of Computers "R" Us, Colors R' Us (ADM Case No. 97-100) and Gardens R' Us (ADM Case No. 03-10 -still pendingappeal before the Office of the President).

27. "This Honorable Office has likewise ruled on the international fame~of the TOYS "R" US and the other R' US marks and declared thesame as well-known in IPC Case No. 14-1999-00040 (Fries Rur

8

and IPC Case No. 14-2003-00033 (Kids R' Fun). Finally, thisHonorable Office also recognized the ownership of Opposer overthe "R" US mark in the IPC Cases No. 3666 and 3958 against themark "Clothes "R" US".

28. "Consideration should be taken of the pronouncement of the DTI inthe case of Geoffrey, Inc. vs. Edgar Ramirez (Computers "R" US"),which held that: "The evidence is clear that Complainant (hereinOpposer) has legally registered and has Philippine registration forthe mark TOYS "R" US and KIDS "R" US. In view thereof, the useof the word "R" US has been exclusively reserved in favor of theComplainant (herein Opposer). It can be discerned that the word"R" US is neither generic nor descriptive and therefore, capable ofexclusive appropriation, thus, in view of the protection accorded theComplainant, respondent cannot unilaterally appropriate the same.It follows, therefore, that the word "R" US is dominant, hence, nolonger registrable, pursuant to Rule V, Sec. 11 paragraph b of theRevised Rules and Regulations implementing Act No. 3883, asamended, otherwise known as the Business Names Law ... "(emphasis supplied). Thus, Respondent-Applicant's mark "SOCKSR US" is an illegal appropriation of Opposer's exclusive right overthe mark TOYS "R" US and the "R US" group and their dominantelement "R" US.

29. "In the case of Geoffrey, Inc. vs. CARS "R" US (Adm. Case No. 96-100), the DTI-OLA hearing officer even directed DTI-NCR "not toregister any business names confusingly similar to complainant's(herein Opposer) registered business name." This ruling clearlyaffirms the right of Opposer over the mark TOYS "R" US and the "RUS" group and their dominant element "R" US to the exclusion ofothers, including herein Respondent-Applicant, Michael Siytaoco.

30. "In view of the above world-wide registrations, herein Opposer isundoubtedly the true and actual owner of the internationally well-known mark TOYS "R" US and the "R US" group and theirdominant element "R" US. Hence, it would be inconsistent andunjust to have a similar trademark/tradename bearing the fancifulfeature registered in the Philippines in the name Respondent-Applicant, which is unrelated to and unauthorized by Opposer.

31. "As has been shown, Opposer has been very active in protecting itswell-known mark. It has filed numerous complaints and/oropposition cases against infringers in the Philippines which resulted win favorable judgments in favor of Opposer. In addition, the '"'infringers have also recognized Opposer's right to the "R" US mark; ~as evidenced by the compromise agreements, Opposer has/ I

entered into with said infringers including Bikes "R" US, BikesCycles "R" Us, Toys "R" Us Trading, Paint's "R" Us, Hotels "R" Us,Signs "R" Us, Fries "R" Us, Babies "R" Us, Shirts "R" Us, Boys "R"Us, Feet R' Us, Dogs R' Us, Water R' US, Soups R' Us. Attachedherewith as Exhibit "H" are copies of some of the decisionsrendered by this Honorable Bureau recognizing the well known-ness of Opposer's "R US" family of marks.

32. "Aside from spending large sums of money to maintain the superiorquality of the products and services sold under the TOYS "R" USand the "R US" group of marks, Opposer spends hundreds ofthousands of dollars annually to advertise and promote theproducts and services sold under the TOYS "R" US and "R" USfamily of marks. By reason of its high quality products and servicesand heavy advertisement and promotion, the TOYS "R" US and the"R" US trademarks have become distinctive and internationallywell-known, securing for the said trademarks, tremendous valuablegoodwill, fame, consumer recognition and acceptance.

33. "Hence, in view of (1) the valid and existing registration ofOpposer's marks, (2) the similarity of the goods covered byOpposer and Respondent-Applicant's mark (3) the identity and/orconfusingly similarity of both marks; (4) the well-knownness ofOpposer's mark in the Philippines and abroad, Respondent-Applicant's mark cannot be registered by virtue of Section 123.1 (d)(e) (f) and (g) of R.A. 8293.

34. "Opposer will be damaged in its proprietary rights/interest andbusiness reputation by the registration of the mark "SOCKS R US"in the name of Respondent-Applicant considering that Opposer'swell-known mark has long been established and has obtaineddecades-old goodwill and consumer recognition not only in thePhilippines, but internationally as well. The distinctiveness of saidwell-known mark will be diluted, and will allow Respondent-Applicant to unfairly benefit from and get a free ride on the goodwillof Opposer's well-known mark, thereby causing irreparable injury tothe Opposer.

35. "By reason of the fact that Opposer's TOYS "R" US and the familyof "R" US marks are well-known internationally and in thePhilippines, the registration of Respondent-Applicant's "SOCKS RUS" mark will create confusion in the minds of purchasers andconsumers, who will be deceived into believing that Opposer and~Respondent-Applicant are affiliated entities, or that Respondent-Applicant has the sponsorship of Opposer, to the latter's greatJI'Uprejudice. / I

36. "In view of the foregoing, Respondent-Applicant's trademarkapplication for "SOCKS R US" under Application Serial No. 4-2008-000583 filed on January 17, 2008 covering goods in Classes 25,specifically for "socks and stockings", in the name of MICHAELSIYTAOCO, should be rejected, in accordance with Section 123.1(d), (e), (f) and (g) of RA 8293.

The Notice to Answer dated 09 January 2009 was sent to Counsel onrecord of Respondent-Applicant, Atty. Edward T. Ong, which notice was in factreceived by said Counsel on 28 January 2009. For failure of Applicant to file anAnswer to the Verified Notice of Opposition despite receipt, this Bureau in OrderNo. 2009-1150 considered the case submitted for decision based on theopposition, affidavits of the witnesses and documentary evidence submitted bythe opposer, pursuant to Section 11 of the amended Rules on Inter PartesProceedings.

1. Certificate of Authentication2. Verification and Certification3. Print-Out of Application No. 42008000583 -4. Affidavit-Testimony of Louis Lipschitz

together with the attached documents5. Affidavit of Peter W. Weiss

ExhibitExhibitExhibit

'~";"B";"C";

- Exhibits '~" to "UUU-67";Exhibits "1" to "8"

For consideration in particular is the propriety of Application Serial No. 4-2008-000583. Resolution by this Office is called for on the following issues:

1. whether or not there is confusing similarity between Opposer'strademarks, TOYS "R" US and the family of R US marks, andRespondent-Applicant's mark, SOCKS R' US;

2. whether or not Opposer's trademarks, TOYS "R" US and thefamily of R US marks, are well-known;

On the basis of the evidence presented, there is shown clear andconvincing proofs that the two (2) competing trademarks, TOYS "R" US and thefamily of "R" US marks of the Opposer and Respondent-Applicant's SOCKS R'US are confusingly similar. Opposer, when it coined its famous TOYS "R" UStrademark, opted for a shortened version of the word "ARE" by simply retainin~the letter "R" followed by the object pronoun US, hence, you will find the "R" uS'component in almost, if not all, of Opposer's trademarks. This "R" u~

component resembles that of Applicant's mark, SOCKS R' US, presented in thiswise:

Opposer's company name, as well as its registered trademarks andservices marks bear the "R" US component. Shown below are some ofOpposer's registered trademarks in the Philippines:

TOYS "R" US

By allowing Opposer's TOYS "R" US and other "R" US marks to co-existwith Respondent-Applicant's mark, SOCKS R' US, and applied on similar and/orrelated goods, there is likelihood that the buying public may confuse or deceiveRespondent-Applicant's mark to be under the sponsorship of or is associatedwith the family of "R" US marks of the Opposer.

A trademark application should be outrightly denied if the mark sought tobe registered is confusingly similar to a mark already registered or previouslyused in the Philippines. In Chuanchow Soy & Canning Co. vs. the Director ofPatents, no less than the Supreme Court ruled that:

"when one applies for the registration of a trademark or label whichis almost the same or very closely resembles one already used andregistered by another, the application should be rejected anddismissed outright, even without opposition on the part of the ownerand user of a previously registered label or trademark, this is notonly to avoid confusion on the part of the public, but also to protect ~an already used and registered trademark and an establishedgoodwill. There should be no halfway measures, as when anexaminerof the Office of the Directorof Patentsdirects anf

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applicant to amend or modify the label or trademark he seeks toregister by eliminating some portions thereof."

The word "SOCKS" is descriptive of the articles or product of Respondent-Applicant namely socks and stockings, and is not capable of exclusiveappropriation being a generic word, hence, the word should be disclaimed. If aword which is required to be disclaimed is associated or added to a mark whichthe applicant can not appropriate, at this instance the R US component whichOpposer has already acquired exclusive property rights through long andcontinued use, the circumstance therefore does not bestow on the new markdistinctiveness and identity.

The trademark SOCKS "R" US applied for by Respondent-Applicantalthough not identical with Opposer's mark TOYS "R" US will neverthelessimpress upon the unwary public that they are of the same or related as to sourcebecause the label presentation of Respondent-Applicant is such as may likely bemistaken to be the mark of or related to or an offshoot or a derivative ofOpposer's trademarks bearing the "R" US component. Respondent-Applicant'smark likewise constitutes the dominant part of Opposer's trademark, thedominant part being the component "R" US is present in the questioned mark.Of significance are US decisions (Exhibits UUU-05 to UUU-21, Opposer) whichheld that the word "R" US is not generic but a fanciful mark coined by Opposer,hence, only the latter can exclusively appropriate the same.

The Supreme Court in EMERALD CASE tersely stated that: Whether ornot a trademark causes confusion and is likely to deceive the public is a questionof fact which is to be resolved by applying the "test of dominancy", meaning, ifthe competing trademark contains the main or essential or dominant features ofanother by reason of which confusion and deception are likely to result, theninfringement takes place; that duplication or imitation is not necessary, asimilarity in the dominant features of the trademark would be sufficient.

Likewise in the case of Co Tiong Sa vs. Director of Patents, 95 Phil. 1, 4(1954); and reiterated in Um Hoa vs. Director of Patents, 100 Phil. 214, 216-217(1956), the dominancy principle in trademark was formulated when it ruled that:

"It has been consistently held that the question of infringement ofa trademark is to be determined by the test of dominancy.Similarity in size, form and color, while relevant, is notconclusive. If the competing trademark contains the main or _'-.?essential or dominant features of another, and confusion and ~deception is likely to result, infringement takes place." A~

In this regard, the court in a long line of cases ruled thus: . ~

"Those who desire to distinguish their goods from the goods ofanother have a broad field from which to select a trademark fortheir wares and there is no such poverty in the English language orpaucity of signs, symbols, numerals etc. as to justify one who reallywishes to distinguish his product from the other entering the twilightzone of or field already appropriated by another (Weco ProductsCo., Milton Ray Co., 143 F. 2d. 985, 32 C.C.P.A. Patents 1214).

"why of the millions of terms and combinations of letters anddesigns available, the appellee had to choose those so closelysimilar to another's trademark if there was no intent to takeadvantage of the goodwill generated by the other mark" (AmericanWire & Cable Co., vs. Dir. of Patents 31 SCRA 544)

" xxx why, with all the birds in the air, and all fishes in the sea, andall the animals on the face of the earth to choose from, thedefendant company (Manila Candy Co.) elected two roosters as itstrademark. Although its directors and managers must have beenwell aware of the long continued use of a rooster by the plaintiffwith the sale and achievement of its goods? X x x a cat, a dog, acarabao a shark, or an eagle stamped upon the container in whichcandies are sold would serve as well as rooster for the product ofdefendants factory. Why did defendant select two roosters as itstrademark? (Clarke vs. Manila Candy Co., 36 Phil 100)."

Another issue in point is TOYS "R" US, and other "R" US marks of theOpposer are well-known entitled to protection under the law. As the recordeloquently shows, Opposer's marks are well-known. The trademarks, TOYS "R"US and KIDS "R" US have registrations not only abroad but in the Philippines aswell, having obtained the same under the old trademark law, R.A. 166, asamended. Under Republic Act 166, as amended, a mark can be consideredwell-known when anyone of the following conditions or criteria or anycombination thereof mentioned in the Ongpin Memorandum is met:

a declaration by the Minister of Trade and Industry that the trademarkbeing considered is already well known in the Philippines such thatpermission for its use by other than its original owner will constitute areproduction, imitation, translation or other infringement;

That the trademark is used in commerce internationally, supported by~proof that goods bearing the trademark are sold on an internationa~scale, advertisements, the establishment of factories, sales offices, ~distributorships and the like, in different countries, including volume orother measure of international trade and commerce;

6.3 That the trademark is duly registered in the industrial property officers)of another country or countries, taking into consideration the dates ofsuch registration;

6.4 That the trademark has been long established and obtained goodwilland general international consumer recognition as belonging to oneowner or source;

6.5 That the trademark actually belongs to a party claiming ownership andhas the right to registration under the provisions of the aforestatedParis Convention."

Having met the foregoing requirements substantially as well as the homeregistration, the United States of America, being a member country of the ParisConvention, it can be concluded inevitably that Opposer's TOYS "R" US, the "R"US element and its derivatives are internationally and locally well-known.

Note should be taken as well of the fact that Respondent-Applicant wasvalidly served with summons, and was afforded the opportunity to refute the claimof and/or controvert the allegation of confusing similarity between the subjecttrademarks if he filed an Answer but that he defaulted. Obviously, therefore,pursuant to Office Order No. 79, the case shall be decided on the basis of theopposition, affidavits of the witnesses and documentary evidence submitted byOpposer.

The Opposer having sufficiently corroborated its claim, there being evidenceenough to convince this Office that Opposer is the first registrant, user and firstadopted the trademark TOYS "R" US , KIDS "R" US and the "R" US element incountries throughout the world, including the Philippines. Necessarily therefore,given all the foregoing, Application Serial No. 4-2008-000583 can not have anyright superior to that of the trademark registrations with the "R" US componentissued in favor of Opposer.

WHEREFORE, premises considered, the Notice of Opposition is, as it ishereby SUSTAINED. Consequently, application bearing Application Serial No.4-2008-000583 filed by Michael Siytaoco on January 17, 2008 for the registratiO~of the mark SOCKS R' US for socks and stockings under Class 25, is, as it ishereby REJECTED.

Let the filewrapper of SOCKS R' US, subject matter of this case togetherwith a copy of this Decision be forwarded to the Bureau of Trademarks forappropriate action.

UTA BELTRAN-ABELARDO~Director