Pharma Company Thwarts Sysmex Corporation’s Application For ‘HYPHEN’ Mark

September 5, 2016

Sysmex Corporation (“Sysmex”) is headquartered in Japan and deals with the development, manufacture, sale, and distribution of diagnostic instruments, reagents and related software. It claims to be the largest supplier of hematology instrumentation and has established its branch office in the Philippines since 2000.  Hyphens Pharma Pte. Ltd. (“Hyphens Pharma”) is a Singapore-based pharmaceutical company, which asserts to be the leader in specialty pharmaceuticals throughout the South East Asia region.

The dispute between Hyphens Pharma and Sysmex stemmed from Sysmex’s filing of a trademark application for the mark “HYPHEN BIOMED”, which covers goods under Class 5, namely: in vitro diagnostic and diagnostic preparations, among others.  Hyphens Pharma opposed the application arguing that “HYPHEN BIOMED” is confusingly similar to its trademark and tradename “HYPHENS,” also covering goods under Class 5.  On the contrary, Sysmex pointed to the presence of “BIOMED” and other device elements in the parties’ respective marks, which it claimed to sufficiently distinguish them from each other.

The Bureau of Legal Affairs disagreed with Sysmex after comparing the parties’ marks.   It explained that the marks share the same dominant feature, namely the word “HYPHEN.” The Bureau further explained that confusing similarity cannot be avoided by merely removing the letter “S” and adding “BIOMED”. While it admitted that the covered goods are not identical, the Bureau still found relatedness between the goods, which is sufficient to warrant a conclusion of confusing similarity.  The Bureau elaborated that the relatedness of the goods covered by the marks may lead the public to believe that there is some connection between Sysmex and Hyphens Pharma which, in fact, does not exist.

This case follows long-standing principles in trademark law.  It reiterated the doctrine that confusion subsists not only as to the consumer’s perception of the goods, but also as to its source or origin. The case also reaffirmed the dominancy test and the basic rule that confusion cannot be avoided by merely adding, removing, or changing some of the letters of a registered mark.

While the case was able to tackle these essential principles, it failed to provide an exhaustive discussion of all the issues surrounding the dispute. Notably, the decision did not consider the right of Hyphens Pharma over its tradename as protected under Section 165 of the Intellectual Property Code. While the decision would not have been different, it is still a missed opportunity for the Bureau to address the dispute on all fronts and to expand on the jurisprudence regarding the protection of tradename as set forth in the IP Code.

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