In The UK Office

“ ‘R’ US” Not Such A Happy Ending

When it comes to brand names, how strong is the suffix “R US”? Can it be used by anyone notwithstanding the trade mark rights of the well-known American retail giant, TOYS “R” US? These questions were at issue recently in an opposition by Geoffrey, Inc., owners of the famous TOYS “R” US toy retail stores, to a U.K. trade mark application for HOTELSRUS for travel-related services in Class 43.

All’s Well That Ends Well—Or Is It?

Geoffrey Inc.’s opposition was based on S. 5 (3) and 5 (4) (a) of the Trade Marks Act 1994 (“TMA”). It claimed that use of HOTELSRUS would take advantage of or be detrimental to the distinctive character or repute of the TOYS “R” US trade marks, and would moreover amount to passing off, because it incorporated the suffix “-RUS.”

It was common ground that TOYS “R” US was a well-known mark. The question was whether the general public would see the “-RUS” element of HOTELSRUS and assume that the services, despite not being related to toys, were connected with Geoffrey Inc.

The applicant claimed that when he coined the name HOTELSRUS, it was his perception that several organisations used the “R US” ending in their brands, including TOYS “R” US and TILES R US. At the time, he said, he did not consider this important. Although Geoffrey Inc. asserted that this pointed to bad faith, the hearing officer disagreed. He noted, however, that his finding might have been different if the “R” in HOTELSRUS had been reversed, as in Geoffrey Inc.’s marks.

Although Geoffrey Inc. filed evidence showing that it had a “travel club” and had held joint promotions with the travel industry, these were not sufficient to prove a “natural synergy” between the toy and travel industries. In the absence of such a synergy, the general public would not be likely to assume that HOTELSRUS services were provided by or linked to Geoffrey Inc.

The opposition was dismissed. The hearing officer found that use of HOTELSRUS would not give any economic benefit to the applicant and that the applicant would not benefit from the reputation of Geoffrey Inc. It was possible that HOTELSRUS might bring the TOYS “R” US mark to mind, but this on its own was not sufficient to allow the opposition to succeed.

Comment

What does this case say about the fame of Geoffrey Inc.’s TOYS “R” US mark, and the value of the “R” US ending?

Unfortunately for Geoffrey Inc., the evidence in this case showed that the use of “R US” as a suffix to a descriptive word as a business name has become commonplace in the U.K. The rather unhappy ending for Geoffrey Inc. highlights the dangers of not policing the marketplace and, indeed, the register. No matter how original a mark is when coined, its attractiveness and originality can lead to its becoming a common descriptor if third-party use is not quelled or controlled.