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Etepha v. Director of Patents
Etepha v. Director of Patents
4. The "tussin" (in Pertussin and Atussin) was derived from the Latin root-word
G.R. No. L-20635 | 16 SCRA 495 | March 31, 1966 "tussis" meaning cough.
Petitioner: ETEPHA, A.G. 5. "Tussin" is merely descriptive; it is generic; it is open for appropriation by
Respondents: DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, anyone. It is accordingly barred from registration as trademark.
INC. a. HOWEVER, "tussin" by itself cannot be used exclusively to identify
one's goods, it may properly become the subject of a trademark
DOCTRINE "by combination with another word or phrase".
To constitute infringement, it is not necessary that the whole or even a large portion of 6. The two labels are entirely different in colors, contents, arrangement of words
the work shall have been copied. If so much is taken that the value of the original is thereon, sizes, shapes and general appearance.
sensibly diminished, or the labors of the original author are substantially and to an 7. The medicinal preparation clothed with the trademarks cannot be obtained by
injurious extent appropriated by another, that is sufficient in point of law to constitute anyone, anytime, anywhere, unlike ordinary goods, i.e. soft drinks.
piracy. 8. An intending buyer must have to go first to a licensed doctor; he receives
instructions as to what to purchase; he knows what he is to buy.
FACTS 9. Thus, the margin of error in the acquisition of one for the other is quite remote.
1. On April 1959, Westmont Pharmaceuticals, Inc., a New York corporation,
sought registration of trademark "Atussin" placed on its "medicinal DISPOSITION
preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic For the reasons given, the appealed decision of the respondent Director of Patents —
acid (Vitamin C) used in the treatment of cough". The trademark is used giving due course to the application for the registration of trademark ATTUSIN is hereby
exclusively in the Philippines since January 21, 1959. affirmed. Costa against petitioner. So ordered.
2. Etepha, A. G., a Liechtenstin corporation, objected and claimed that it will be
damaged because Atussin is so confusedly similar to its Pertussin. Which is
also used on a preparation for the treatment of coughs. SIDE NOTES: Comparison
o “Pertussin” is registered and owned by Etehpa, issued on
September 1957. As to the Label:
3. Etepha also claimed that the buying public will be misled into believing that -Etepha’s label underscores the trademark Atussin in bold, block letters horizontally
Westmont's product is Etepha’s product which it enjoys goodwill. written. While Westmont’s label, Pertussin is printed diagonally upwards and across in
4. Director of Patents approved the registration of “ATUSSIN” semiscript style with flourishes and with only the first letter "P" capitalized.
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