Motorola Trademark Holdings, Inc. opposed the registration of MOTOMO filed by respondent-applicant Yuling Lin for use on “cellphone accessories namely, cellphone cover, cellphone cases, screen protector, headphones; headsets, carrying cases for headphones”. The competing marks are shown below:
In its Decision dated 22 December 2017 (IPC No. 14-2015-00026), the IPO Bureau of Legal Affairs sustained Motorola’s Opposition pointing out that “the contending marks are almost identical, as both contain the syllables “MO” and “TO”. The difference between the marks, consisting of the ending syllable “LA” in “MOTOROLA” and “MO” in “MOTOMO” do not produce a significant and distinct character to substantially distinguish one from the other. The competing marks are similar in physical and aural properties”.
The other factors considered by the IPO Bureau of Legal Affairs in denying MOTOMO’s registration are as follows:
- While “MOTOMO” particularly covers “cellphone accessories” and “MOTOROLA” covers a wider range of goods that include communication devices and communication accessories, the goods are nonetheless similar and/or related “because of the classification of goods, and other consideration such as similarity in the class of consumers and channels of trade”;
- MOTOROLA has existing registrations for its trademarks and has substantially proved its continuous and actual use of its marks in various countries and as such, “MOTOMO” should not be allowed to proceed to registration because it resembles the mark “MOTOROLA” as to likely deceive or cause confusion; and
- MOTOROLA’s mark and its variants are unique and highly distinctive and it is highly incredible for the respondent-applicant Yuling Lin to have come up with the “MOTOMO” mark by pure coincidence.
As such, Yuling Lin has to bid adieu to his ambition to register the mark “MOTOMO”.