G.R. No. L-20635 - Etepha, A.G. vs. Director of Patents

On April 23, 1959, Westmont Pharmaceuticals, Inc., a New York corporation, applied for registration of the trademark "Atussin" for its medicinal preparation used in the treatment of cough, containing expectorant, antihistaminic, bronchodilator sedative, and ascorbic acid (Vitamin C).
The trademark "Atussin" had been used exclusively in the Philippines since January 21, 1959.

Petitioner Etepha, A. G., a Liechtenstein corporation, objected to the registration of "Atussin."
Petitioner holds registration No. 6089 for the trademark "Pertussin," granted on September 25, 1957, used on a similar cough treatment preparation.
Petitioner argued that "Atussin" is confusingly similar to "Pertussin," likely misleading consumers into believing that Westmont's product was that of petitioner’s, which enjoys goodwill.

The purpose of a trademark is to distinctly indicate the origin or ownership of goods, reward the originator’s industry and skill, and prevent fraud.
Section 4(d) of the Trade Mark Law prohibits registration of marks that, when used on goods, are likely to cause confusion, mistake, or deception among purchasers.
Valid infringement claims must be based on "colorable imitation," meaning a close or ingenious imitation capable of deceiving ordinary purchasers.

Both trademarks include the component "tussin," which is derived from the Latin word "tussis" meaning cough.
The Director of Patents noted that pharmaceutical trademarks often incorporate syllables suggestive of ailments.
"Tussin" is considered generic and descriptive, thus not exclusively appropriable by any one party or registrable as a trademark by itself.
"Pertussin" combines the prefix "Per" with "tussin," and "Atussin" combines the prefix "A" with "tussin," making them compound marks.

"Atussin" is displayed prominently in bold, block, horizontal letters; "Pertussin" is written diagonally upward in semi-script style with flourishes and a capital "P."
The respective labels differ in colors, contents, word arrangement, sizes, shapes, and overall appearance.
Each label clearly identifies the source company and includes usage indications: "Pertussin" for bronchial catarrh, whooping cough, coughs, and asthma; "Atussin" labeled simply as cough syrup.
These differences make it unlikely for a purchaser to mistake one for the other, even if unfamiliar with the marks.

"Pertussin" and "Atussin" differ in pronunciation and sound, particularly in their prefixes "Per" and "A," which are key to the trademark's identification.
The purchasing public for these medicinal preparations usually obtains them via prescription from licensed physicians, consulting pharmacists, and reading prescriptions, thus reducing chances of confusion.
Even if obtained without prescription, buyers familiar with the products would be unlikely confused.

Whether the trademark "Atussin" may be registered when a similar mark "Pertussin" is already registered for a similar medicinal product.
Whether the trademarks "Atussin" and "Pertussin" are confusingly similar such as to cause mistake or deception among the buying public.
Whether the use of the common element "tussin" in both trademarks affects the validity of the registration of "Atussin."