Jockey wins JOCKS opposition

In Jockey International Inc v Myrich Apparel Shoppe (Case 14-2006-00095, February 23 2007), the Intellectual Property Office (IPO) has upheld the opposition filed by underwear manufacturer Jockey International Inc against the application of Myrich Apparel Shoppe to register the mark JOCKS for t-shirts in Class 25 of the Nice Classification.

Jockey had anticipated that the renown of its mark JOCKEY would lead local manufacturers to adopt confusingly similar brands and accordingly applied to register various derivations of its JOCKEY trademark, such as JOCKS and JOX.

Unfortunately, Myrich had filed its JOCKS application on January 13 2004, that is, before Jockey filed its own applications for JOCKS and JOX. Upon hearing of Myrich's application, Jockey filed a timely opposition on the basis of its registered mark JOCKEY, but also on the basis of its pending applications for JOCKS and JOX. Specifically, Jockey alleged that Myrich's JOCKS trademark is derived from Jockey's own trademark and trade name, which would likely cause confusion, mistake and deception among consumers when applied to or used in connection with Myrich's goods.

The director of the IPO's Bureau of Legal Affairs confirmed that Jockey is the registered owner of the trademark JOCKEY and the applicant for the marks JOCKS and JOX. The director upheld Jockey's argument that the JOCKS mark is derived from and is confusingly similar to the registered mark JOCKEY. There is no reasonable explanation for Myrich's choice of JOCKS as a mark for t-shirts, except to cash in on the goodwill that the JOCKEY mark has gained among consumers. The director further held that consumer confusion is very likely from Myrich's use of the derivative mark JOCK for the same class of goods.

Accordingly, he upheld Jockey's opposition.

Vicente B Amador, Sycip Salazar Hernandez & Gatmaitan, Manila