Case Summary (G.R. No. L-20635)
Issue Presented
The central issue is whether the trademark "Atussin" may be registered despite the prior registration of "Pertussin," with petitioner alleging that the two trademarks are confusingly similar given their use on medicinal preparations for cough treatment. The Director of Patents allowed registration of "Atussin," prompting petitioner’s appeal.
Trademark Law Principles on Similarity and Confusion
The purpose of a trademark is to distinctly indicate the origin of goods, protect the goodwill of those marketing superior products, and prevent consumer deception and unfair competition. The question of infringement hinges on whether the accused trademark is a “colorable imitation” of the registered mark, meaning a close resemblance likely to deceive ordinary purchasers into confusing the two products.
Generic and Descriptive Elements in Trademarks
The component “tussin” found in both trademarks derives from the Latin “tussis,” meaning cough. This term is generic and descriptive, indicating the nature or effect of the medicine rather than its source. Being descriptive, "tussin" by itself is ineligible for exclusive appropriation as a trademark, preventing monopolization of the term by any one party.
Distinctive Combination of Words and Visual Presentation
While the suffix “tussin” is generic, distinctiveness arises when combined with different prefixes such as “Per” in Pertussin and “A” in Atussin. The Court evaluates the overall commercial impression considering sound, appearance, spelling, style of writing, color, and the totality of the marks as seen by the prospective buyers.
Differences in Label Design and Presentation
The labels of Pertussin and Atussin significantly differ:
- Pertussin is diagonally printed in semi-script style with flourishes and the first letter capitalized.
- Atussin appears in bold, horizontal block letters.
- Pertussin’s label shows corporate source and detailed usage indications prominently.
- Atussin’s label features the manufacturer information distinctly and uses different colors and layout.
These dissimilarities extend to color schemes, shapes, word arrangement, and overall design, making confusion unlikely.
Phonetic Distinctions
Phonetically, Pertussin and Atussin differ substantially. The prefixes “Per” and “A” produce distinct sounds that are unlikely to be confused by ordinary purchasers. This is a crucial factor as the pronunciation of the initial syllable usually dominates the auditory impression and helps prevent confusion.
Buyer Profile and Purchasing Circumstances
The Court considered the nature of the products and typical purchasers, i.e., medicinal preparations usually obtained with medical prescriptions. Buyers first consult doctors and receive prescriptions specifying the required medicine, then purchase from licensed pharmacies. This controlled trade environment minimizes the possibility of mistaken purchases. Even if the medicines are sold without prescriptions, buyers familiar with the product would unlikely confuse the two.
Precedents and Analogous Cases
The Court
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Factual Background and Procedural History
- On April 23, 1959, Westmont Pharmaceuticals, Inc., a New York corporation, applied for the registration of the trademark "Atussin" for its medicinal preparation described as an expectorant antihistaminic, bronchodilator sedative, containing ascorbic acid (Vitamin C) for treating cough.
- The product bearing the "Atussin" trademark had been used exclusively in the Philippines since January 21, 1959.
- Petitioner Etepha, A.G., a Liechtenstein corporation, opposed the registration, asserting that "Atussin" is confusingly similar to the previously registered trademark "Pertussin" (Registration No. 6089, issued September 25, 1957).
- Petitioner claims that the similarity would mislead consumers into believing that "Atussin" is petitioner’s product and that petitioner enjoys goodwill attached to "Pertussin".
- The Director of Patents ruled in favor of registering "Atussin," prompting petitioner to appeal.
Legal Issues Presented
- The central issue is whether the trademark "Atussin" may be registered despite the prior registration of "Pertussin" which allegedly causes confusion or deception among purchasers.
- The court is tasked to determine if "Atussin" constitutes a colorable imitation of "Pertussin" and whether it is likely to cause consumer confusion or mistake under Section 4(d) of the Trademark Law.
- Whether the shared component "tussin" influences the likelihood of confusing the two marks, considering common pharmaceutical trademark practices and the descriptive nature of "tussin".
Purpose and Function of a Trademark
- A trademark serves to distinctly identify the origin or ownership of the goods to which it is affixed.
- It protects the owner’s investment and reputation, prevents fraud and deception in the market, and secures the reward of industry and skill.
- Determining infringement requires assessing the likelihood of confusion caused by similarities in the marks when applied to respective goods.
Doctrine of Colorable Imitation
- "Colorable imitation" means a close or ingenious imitation calculated to deceive an ordinary purchaser or one likely to cause the purchaser to mistake one product for another.
- Infringement claims must show that the accused mark is such an imitation that an average consumer would be misled.
Significance of the Shared Component "Tussin"
- The suffix "tussin" in both trademarks derives from the Latin root "tussis," meaning cough, indicating the nature and use of the medicines.
- In pharmaceutical trademark practice, it is common to fabricate marks by combining syllables suggestive of ailments with distinctive prefixes or suffixes.
- "Tussin" is descriptive, generic, and cannot be exclusively appropriated by any single e