B00

Etepha, A.G. VS. Director of Patents

G.R. No. L-20635 | J. Sanchez | March 31, 1966
Digested by: Lazaro

FACTS:
 On April 23, 1959 the Private Respondent Westmont Pharmaceutical, Inc is a New York based
corporation
o They are seeking for the registration of the trademark of “Atussin”, which is used in
the “medicinal preparation of expectorant antihistaminic, bronchodilator sedative,
ascorbic acid (Vitamin C) used in the treatment of cough”
o The trademark is used exclusively in the Philippines since January 21, 1959.
 Meanwhile the petitioner, a Liechtenstin (principality) corporation, objected to the
application by the private respondent.
o Claiming that there will be damage because Atussin is confusingly similar to the
Pertussin. The latter being used on a preparation for the treatment of coughs.
o Thus, the public may be misled into believing that the product of the respondent is
the product of the petitioner which allegedly enjoys goodwill.

ISSUE: WON the approval of Westmont’s application for the registration of trademark must be
approved.

HELD:
The court’s task is to ascertain if there is a resemblance between the two products, in which
applied to the goods it will cause confusion or deception on the part of the purchasers. Things which
serves as a guide in deciding whether or not the trademark registration will infringe a prior
registration:

1. No Colorable Imitation
 It pertains to the close imitation which was done in order to deceive ordinary
persons, or to have a resemblance which is very close to the original product to
deceive an ordinary buyer.
2. Common Practice
 It is a common practice in the pharmaceutical industries to fabricate marks by
means of syllables or even words which suggests for the ailments in which they
are intended to be used, and also the use of prefixes or suffixes.
 Tussin in both of the names was derived from the Latin word “tussis” which
means cough. Thus, Tussin on its own is descriptive, or generic which makes the
said word open for appropriation by anyone.
 The court said that the petitioners would be having a monopoly over the word
“tussin” in a trademark.
3. Visual Impression
 The court mentioned that a practical approach to the problem of similarity or
dissimilarity is to compare the two trademarks, looking into their manner of
display.
 More so, the trademark complained must be compared with the purchaser’s
memory of the trademark to be infringed.
 In the case at hand, the respondent’s trademark are written in bold, block letters
horizontally written. On the other hand, the petitioner’s is printed diagonally
upwards and across in a semiscript style, and the letter P is capitalized.

Page 1 of 2
  In other words, the words in question has different styles of writing and methods
of design.
4. Phonetic Similarity
 It is a fact that the two words do not sound alike, when pronounced. Thus, there
is no phonetic similarity between them.
5. By prescription
 The court ruled that the class of persons who will buy the product must be taken
in consideration.
 In the case at hand the medicines or the products in question cannot be bought
normally over the counter, a medical prescription is needed before it can be
bought. To which the medical prescription is obtained only through a licensed
doctor of medicine.
The court ruled in favor of the respondents. As they ruled that no person can buy Pertussin or Attusin
without the proper prescription coming from a doctor. When this happens, then the buyer must be
one thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a
medicine — specifically needed to cure a given ailment. In which case, the more improbable it will be
to palm off one for the other. For a person who purchases with open eyes is hardly the man to be
deceived.

DISPOSITIVE POSITION: For the reasons given, the appealed decision of the respondent Director
of Patents — giving due course to the application for the registration of trademark ATTUSIN is
hereby affirmed. Costa against petitioner. So ordered.

Page 2 of 2