Taking judicial notice of registered marks

On September 2009, Opposer introduced a new collection of body sprays, i.e., Sexy Deo Body Spray. One of the scents in its collection is OH LALA! Said mark was registered on 19 May 2011.

In Suyen Corporation v. Emmanuel Jose Maria Dela Cruz Quiblan, 19 January 2017 (IPC No. 14-2014-00375), Suyen (“Opposer”) filed an opposition to the registration of the EULALA mark filed by Emmanuel Jose Maria Dela Cruz Quiblan (“Respondent-Applicant”) for “”fragrances, perfumes, body mists, eau de toilette, colognes, lotions, hand and body wash, hand sanitizers” in Class 3.

The competing marks are provided below:

Screen Shot 2017-06-09 at 5.06.34 PM

A Notice to Answer was served on Respondent-Applicant. However, Respondent-Applicant did not file an Answer. Thus, he was declared in default.

The Adjudication Officer ruled that the marks are not confusingly similar as the only similarity between the competing marks is the term LALA. However, the presentation of the term LALA in both marks will not lead one to believe that the said term is the prevalent feature of the competing marks. Hence, both marks should be appreciated in their entirety. Consequently, confusion between the two marks is likely only if their overall presentation as to sound, appearance, or meaning, would lead consumers to believe that the goods covered by the competing marks emanate from the same source or are connected or associated with each other.

The Adjudication Officer pointed out that Opposer’s trademark consists of two separate words (i.e., OOH and LALA!), while Respondent-Applicant’s mark is composed of only one word (i.e., EULALA). Furthermore, the Adjudication Officer took judicial notice of two trademarks registered in Class 3 that use the term LALA (i.e., LU LA LA and OOH LA-LASH). Said marks were registered long before Opposer filed its trademark application for the subject mark.

Questions and Comment:

  • Are the competing marks aurally similar?
  • Does it matter if Opposer’s trademark is composed of two words, while Respondent-Applicant’s mark is composed of only one word?
  • Do the cited marks in Class 3 (i.e., LU LA LA and OOH LA-LASH) cover identical or similar goods?
  • Failing to file an Answer will not result in an automatic win for the Opposer.

 

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