iPINTELLECTUAL PROPERTYPHILIPPINES

-versus-

PRO-LINE INTERNATIONAL, INC.,

GOLDEN ABC, INC.,Opposer,

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Respondent-Applicant, }x---------------------------------------------------------x

DECISION

IPC No. 14-2007-00221Opposition to:

Serial No. 4-2004-010115Date Filed: Oct. 27, 2004

TM: "JUST FOR ME"

Decision No. 0 s -gh

This is a VERIFIED OPPOSITION filed by Golden ABC, Inc. to theapplication for registration of the mark "JUST FOR ME" bearing ApplicationSerial No. 4-2004-010115 filed on October 27, 2004 by respondent-applicantPro-Line International , Inc. for goods under Class 03, namely, hair carepreparations, which application was published in the Trademark ElectronicGazette of the IP Phil ippines (IP Phil.) that was officially released for circulationon March 30, 2007.

Opposer is a corporation organized and existing under the laws of thePhilippines with principal address at 880 A.S. Fortuna St. , Banilad , MandaueCity , Cebu , Philippines. Respondent-applicant is a corporation organized andexisting under the laws of the State of Delaware, the United States with principaloffice at 2121 Panoramic Circle, Dallas, Texas, 75212, U.S.A.

Opposer filed its VERIFIED OPPOSITION based on the followinggrounds:

1. Opposer has been engaged in the retail businesssince 1986, selling men's and women's clothing apparel, andlater, toilette/bath products (including shampoos hair dyes ,and hair gels), hair accessories, and paper products bearingthe marks "Penshoppe" and "Oxygen " in various departmentstores, boutiques , outlets , and specialty stores nationwide;

2. In 2003, opposer adopted the mark "Forme" which itused for women's wearing apparel , bags , belts , shoes, andfashion accessories like trinkets , necklaces, earrings, andothers;

3. Opposer operates a total of twenty-four (24) "Formr~

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

boutiques nationwide, and two (2) more "Forme" boutiquesopened in September 2007 in SM Baguio City and SM CebuCity;

4. On May 24, 2004, opposer filed an application forregistration of the mark "Forme" for Classes 03, 18, 25, and35 which were granted as follows: 1) Certificate ofRegistration no. 4-2004-004437 for Class 03 dated December31, 2006, and this registration includes shampoos, hair dyes,and hair gels; 2) Certificate of Registration No. 4-2004-004438for Class 18 dated January 21, 2006; 3) Certificate ofRegistration No. 4-2004-004439 for Class 25 dated December31, 2006; 4) Certificate of Registration No. 4-2004-4440 forClass 35 dated January 21, 2006;

5. Since its adoption in 2003 and its continued use incommerce up to the present, the mark "Forme" has beendeveloped and has been extensively advertised by opposer inthe Philippines on the following products: women's wearingapparel, bags, belts, shoes, and fashion accessories liketrinkets, necklaces , earrings, and others;

6. No less than the following celebrities endorse "Forme"products : 1) Judy Ann Santos; 2) Lyn Ching; 3) Angel Jacob;4) Pia Guanio; and 5) Antoinette Ocampo;

7. The fact that someone as well-known as Judy AnnSantos is endorsing "Forme" products is eloquent proof that"Forme" is popular and well-known among retailers andconsumers;

8. Opposer is filing this opposition against the registrationof the mark "JUST FOR ME" on the ground that it createsconfusion of origin, source, and business, causing injury anddamage on the original mark "Forme";

9. The mark "JUST FOR ME" application is under Class03 for hair care preparations, and the mark "Forme" isregistered under Class 03 specifically covering products likeshampoos , hair dyes, and hair gels for which reason, thus,confusion between opposer's and respondent-registrant'srespective hair care products will be inevitable should the~

mark "JUST FOR ME" be allowed registration; / /

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10. Even a cursory look would readily reveal that the mark"JUST FOR ME" is confusingly similar to the mark "FORME":The dominant feature of the mark "JUST FOR ME" is thephrase "for me" and the word "just" is a mere adverb thatmeans "only"; "simply"; "solely"; "truly"; "clearly"; "exactly'; and"precisely", and that describes the phrase "for me" whichmakes the bottom line the words "for me" which is alreadyregistered in opposer's favor;

11. The similarity between "JUST FOR ME" and "Forme" isthe dominant phrase "for me", and the adverb "just" in "JUSTFOR ME" is a minor difference;

12. The aural impression created upon hearing the marksis definitely the words "for me";

13. The ruling in the case of McDonald's Corporation v.Macjoy Fastfood Corporation, G.R. No. 166115, February02, 2007 which upheld the Dominancy Test is applicable inthe instant case;

14. Applying the Dominancy Test, the marks "JUST FORME" and "Forme" are confusingly similar such that an ordinarypurchaser can conclude association or relation between themarks or that the products of both emanate from the samesource;

15. Whatever differences/variations in the styles and fontsof the marks "JUST FOR ME" and "Forme" are but minisculevariations that are overshadowed by the predominant words"for me";

16. When one looks at "JUST FOR ME", one's attention iseasily attracted to the words "for me" rather than to the word'just"; and

17. As "JUST FOR ME" covers goods under Class 03,there will be trademark infringement through confusion ofgoods as these are also the same products for which the mark"Forme" is also registered- Class 03- and through confusion ofbusiness as both parties are engaged in the business of rselling Class 03 products. / I

Opposer prays, thus, that respondent-applicant's application for theregistration of the mark "JUST FOR ME" be denied.

On January 02, 2008, respondent-applicant filed a verified ANSWERspecifically denying the allegations in the VERIFIED OPPOSITION and thegenuineness of the annexes attached thereto, and alleging the following :

1. The VERIFIED OPPOSITION states no cause of actionand the same, as such, should be outrightly denied: An opposerin an opposition case must be damaged by the registration of themark being opposed to have a cause of action against the subjecttrademark application but there exists no specific allegation andevidence to constitute and prove the required cause of actionpertaining to the damage which opposer may obtain in theregistration of the mark "JUST FOR ME";

2. There is no basis for any damage claim by opposer againstthe registration of the subject mark: The mark "JUST FOR ME" isdistinct/different in appearance , spelling, sound , meaning , andstyle from opposer's mark "Forme" as well as in the goodscovered ;

3. Respondent-applicant is the exclusive owner of the mark"JUST FOR ME" for Class 03 goods: Respondent-applicant hasprior adoption, use, application for , and registration of the mark"JUST FOR ME" in more than eighty (80) countries;

4. The mark "JUST FOR ME" is well-known internationally asbeing owned by respondent-applicant;

5. After undergoing a thorough process of examination ,respondent-applicant's application was found registrable by theexaminer and the same was recommended allowance, whichrecommendation was approved by the Chief Trademark Examinerand the Director of the Bureau of Trademarks (BOT);

6. Respondent-applicant is a subsidiary of the Alberto-CulverCompany which is a $1.4 billion manufacturer and marketer ofbeauty, personal care, and household products in more than one­hundred twenty (120) countries worldwide including th~

Philippines ; I /

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7. Respondent-applicant's MARK "JUST FOR ME" has beencommercially used and available in many countries around theglobe;

8. Respondent-applicant's MARK "JUST FOR ME" has beenpromoted and advertised for a considerable duration of time anover wide geographical areas;

9. Respondent-applicant has invested tremendous amount ofresources in the promotion of its mark "JUST FOR ME" throughvarious media including television commercials, well-known printpublications, and other promotional materials;

10. Respondent-applicant's mark "JUST FOR ME" comprisessixty-seven percent (67%) market share for children's chemicals inthe U.S.A. and forty-eight percent (48%) market share for children 'smaintenance in the same country;

11. Respondent-applicant's widespread commercial use of thesubject mark to distinguish and identify its various high qualityconsumer products has earned respondent-applicant a well­deserved business reputation and goodwill internationally;

12. Respondent-applicant's "JUST FOR ME" products are alsoadvertised and made available in the website www.alberto .com;

13. As America's leading multicultural haircare brand for morethan a decade, respondent-applicant's mark "JUST FOR ME" hasgained international popularity as evidenced by the creation of a"JUST FOR ME VIP CLUB" under the websitewww.jfmvipclub.com;

14. The "JUST FOR ME" products have been sold in manycountries abroad, thus, capturing significant gross sales andgaining international popularity: The mark "JUST FOR ME" is now$14 million brand;

15. Respondent-applicant's mark "JUST FOR ME" is neitheridentical nor confusingly similar to opposer's mark "Forme" as thedissimilarities between the two are so distinct making confusionvery unlikely: "JUST FOR ME" is an arbitrary mark which differs inover-all sound, spelling, meaning, style, configuration,ypresentation, and appearance from opposer's mark "Forme"; I I

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16. The involved marks are grossly different in their over-allappearance that even at a distance , a would-be purchaser couldeasily distinguish between the 'JUST FOR ME" and "Forme"marks: The presence of the separate words "for" and "me" inrespondent-applicant's mark does nor render said mark identicalor confusingly similar to opposer's mark "Forme";

17. Opposer cannot exclusively appropriate either of the words"for" or "me" considering that other marks, e.g., "For Me", "ForMen", etc. are registered, valid, and active ;

18. The goods covered by respondent-appl icant 's mark "JUSTFOR ME" under Class 03 and opposer's mark "Forme" underClasses 03, 18, 25, and 35 are likewise different as the nature,features , specific type of products , and packaging patently andsubstantially differ: Opposer 's mark which covers goods underClass 03 are "perfumery products namely roll-on and spray,cologne, toilet water and toilet lotions, shampoos, soaps , latheringand softening products for use in bath, tooth paste , cosmetics,make-up, eyeliner, eyeshadow, blush-on powder, lipstick, facialcleanser, moisturizer, hair dyes, hair gels, and nail polish" whilerespondent-applicant's mark covers hair preparations falling underClass 03 such as conditioning creme relaxer, conditioningshampoo, conditioning detangler, leave-in conditioner, oilmoisturizing lotion, scalp conditioner, and hair dress and stylingcreme; and

19. Both the channels of trade and market for opposer's goodsare significantly different from the channels of trade and market forrespondent-applicants products , and the margin of error in theacquisition of one for the other is quite remote .

Respondent-applicant prays, thus, that the VERIFIED OPPOSITION bedismissed and that its application be approved .

After prelim inary conference was terminated on February 11, 2008,Order No. 2008-267 was issued directing the parties to file their respectiveposition papers and, if desired, draft decisions within a non-extendible period often (10) days from receipt of their respective copies of said Order. Opposer wa?rsent a copy of said Order on February 20, 2008 while respondent-applicantreceived its copy of said Order on February 20, 2008.

After a careful perusal of the respective allegations of both parties , itappears that the issues to be resolved are as follows :

1. Whether respondent-applicant "JUST FOR ME" mark and Opposer's"FORME" are confusingly similar; and

2. Whether respondent-applicant is entitled to the registration of its mark"JUST FOR ME".

Before a ruling on the first issue is made, it is important to state at theoutset in the resolution of this case that opposer's and respondent-applicant'sproducts are identical and/or closely related: Opposer's products includeshampoos, hair dyes, and hair gels under Class 03 for which the mark "Forme" isregistered while respondent-applicant's products for which the subject mark"JUST FOR ME" is applied are likewise products under Class 03 namely, haircare preparations. It appears from respondent-applicant's evidence that suchhair care preparations include relaxers, shampoos, conditioners, detanglers,texture softeners, hair lotions, hair dress, and styling creams (Exhibits "16"-"19"and "23"-"24"). Opposer's and respondent-applicant's respective productspertain to hair care, maintenance, and styling .

To resolve the first issue, a comparison of both marks is necessary.

The mark applied for by respondent-applicant as submitted in itstrademark application is as follows:

JLJ

As applied in its hair care preparations/products, respondent-applicant'smark is depicted as follows:

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Meanwhile, opposer's mark is as follows ;

A circumspect comparison of both marks shows that they are confusinglysimilar: The dominant features of the mark "JUST FOR ME" are the words "forme" written below the word "Just" in such manner that said words, thoughpresented to be read as two words- "for" and "me"- creates a visual effect offorming into an albeit fancy word "forme" with a silent "e" while the mark "Forme"is written in such manner that it could be read either as "Forme" with a silent "e"or as an arbitrary and stylized two-word "For Me" in view of the uppercase letters"f ' and "m". Visually and aurally, both marks connote the same images or ideas:The dominant features "for" and "me" of the mark "JUST FOR ME", and themark "Forme" could invariably and interchangeably connote the idea "only forone's self (me)" , "solely for me" or the individual consumer to which it/theseis/are addressed; and/or the idea of a shape or form, particularly, of the humanbody such as the "inverted triangle" , the "hourglass", the "triangle", and "therectangle ". It is to be noted that as advertised, opposer's mark "Forme" appearswith the words "personally shaped" on top of said mark (Exhibits "E", "E-11", and"E-12"). With said words "personally shaped" and the word "Forme" spelled as"ForMe", the mark could indeed be read as "'personally shaped' forme" with asilent "e", giving the connotation of a shape that is specially designed; or as'''personally shaped' for me", giving the connotation that the product isparticularly suited for specific consumer that buys/patronizes it.

The visual and aural impressions created by such dominantfeatures/words "for", "me", and "Forme" are that an ordinarily prudent purchaserwould be induced to purchase one party's product in the belief that he ispurchasing the other party's product and vice-versa; or that the respective goodsof the parties orig inated from the other or that there is a relation/connectionbetween the two parties when , in fact, there is none. This is especially trueconsidering that the products of both parties belong to the same class and aresimilar or closely related: Opposer has a registration for the mark "Forme" for itsgoods under Class 03 which include, among others , toilet water and toiletlotions; shampoos; soaps: lathering and softening products for use in bath; hL

dyes; and hair gels while respondent-applicant is applying for registration, asmentioned, for the mark "JUST FOR ME" for goods under Class 03 namely, haircare preparations.

Under the Dominancy Test, the dominant features of the competingmarks are considered in determining whether these competing marks areconfusingly similar. Greater weight is given to the similarity of the appearance ofthe products arising from the adoption of the dominant features of the registeredmark, disregarding minor differences. The visual, aural, connotative, and overallcomparisons and impressions engendered by the marks in controversy as theyare encountered in the realities of the marketplace are the main considerations(McDonald's Corporation, et al. v. L. C. Big Mak Burger, Inc., et ai, G. R. No.143993, August 18, 2004; Societe De Produits Nestle, S. A., et al. v. Court ofAppeals, et aI., G. R. No. 112012, April 4, 2001) . If the competing trademarkcontains the main or essential or dominant features of another, and confusionand deception is likely to result, infringement takes place (Lim Hoa v. Directorof Patents, 100 Phil. 214 [1956]); Co Tiong Sa v. Director of Patents, et aI.,G. R. No. L-5378, May 24, 1954). Duplication or imitation is not necessary; nor isit necessary that the infringing label should suggest an effort to imitate (Lim Hoav. Director of Patents, supra, and Co Tiong Sa v. Director of Patents,supra). Actual confusion is not required: Only likelihood of confusion on thepart of the buying public is necessary so as to render two marks confusinglysimilar so as to deny the registration of the junior mark (Sterling ProductsInternational, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, et aI., G.R.No. L-19906, April 30, 1969).

As to the first issue, thus, this Bureau rules in the affirmative.

Section 123.1 (d) of the IP Code provides:

"A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filing or prioritydate , in respect of:

(i)(ii)(iii)

The same goods . .. orClosely related goods . . . orIf it nearly resembles such a mark as to be likely t~o

deceive or to cause confusion .. ." (UnderscoringSupplied.)

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Pursuant to said provision, the application for registration of the subjectmark cannot be allowed: Respondent-applicant's mark "JUST FOR ME " isconfusing ly similar to opposer's mark "Forme" and is applied to goods that aresimilar or related to opposer's goods. Opposer's mark "Forme" was initially filedon May 24, 2004 and registered on December 31, 2006 per Certificate ofRegistration No. 4-2004-004437. Therefore, considering that opposer's markwas already registered, respondent-applicant's "JUST FOR ME" mark whichnearly resembles Opposer's "FORME" mark as to likely deceive or causeconfusion as to origin and applied to goods under Class 03 which are closelyrelated to Opposer's goods cannot be allowed registration.

Section 138 of the IP Code provides that a certificate of registration of amark is prima facie evidence of the validity of the registration, the registrant'sownership of the mark, and of the registrant's exclusive right to use the samein connection with the goods and those that are related thereto specified inthe certificate (Underscoring supplied.) .

WHEREFORE, the VERIFIED OPPOSITION is, as it is, herebySUSTAINED. Consequently, Application Serial No. 4-2004-010115 filed onOctober 27, 2004 by respondent-applicant Pro-Line International, Inc. for goodsunder Class 03, namely , hair care preparations, is, as it is hereby, REJECTED.

Let the filewrapper of this case be forwarded to the Bureau of Trademarks(BOT) for appropriate action in accordance with this Decision.

SO ORDERED.

Makati City, March 31,2008.

LUTA BELTRAN-ABELARDOirector, Bureau of Legal Affairs~-

csoe/md

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