On 13 November 2014, Livingstone Healthcare Corporation (“Respondent-Applicant”) filed an application for the mark “HYGENIC” for use on “dental rubber dam” under Class 10 of the International Classification of Goods and Services.

HYGENIC CORPORATION (“Opposer”) opposed the trademark application on the basis that it is the registered owner of the registered mark “HYGENIC Design”, the mark is well-known internationally and in the Philippines, and that it has manufactured dental rubber dam for international sale since 1988 under the trademark “HYGENIC”. The Opposer has no Philippine registration for “HYGENIC Design” but has registered the mark in 23 jurisdictions such as in the United States, Brazil, Canada, Denmark, France, Finland, Germany, Great Britain, Malaysia Spain, Sweden and Venezuela.

The Bureau of Legal Affairs granted the opposition and pointed out that Respondent-Applicant’s mark HYGENIC is not only similar, but is identical with Opposer’s HYGENIC trademark. It added that the Respondent-Applicant uses or will use the mark on goods that are exactly the same as the goods the Opposer deals in, particularly, dental dam in Class 10. As such, “it is likely that the consumers will have the impression that these goods originate from a single source or origin”.

And, it does not matter that Respondent-Applicant filed the trademark application ahead since “it is not the application or the registration that confers ownership of a mark, but it is ownership of the mark that confers the right of registration” xxx. “The registration system is not to be used in committing or perpetrating an unjust and unfair claim. A trademark is an industrial property and the owner thereof has property rights over it. The privilege of being issued a registration for its exclusive use, therefore, should be based on the concept of ownership. The IP Code implements the TRIPS Agreement and therefore, the idea of “registered owner” does not mean that ownership is established by mere registration but that registration establishes merely a presumptive right of ownership. That presumption of ownership yields to superior evidence of actual and real ownership of the trademark and to the TRIPS Agreement requirement that no existing prior rights shall be prejudiced”.

In this instance, the Opposer proved that it is the originator and owner of the contested mark while the Respondent-Applicant failed to explain how it arrived at using the mark HYGENIC.

Finally, the Bureau of Legal Affairs ruled that the Opposer has been using HYGENIC not only as a trademark but as a trade name or business name and such use must be protected under Section 165 of the IP Code.

(IPC No. 14-2015-00404, 18 April 2018)