CASE DIGEST: Etepha A.G. vs. Director of Patents

16 SCRA 495 (1966)

FACTS:

            On April 23, 1959, private respondent  Westmont Pharmaceuticals, Inc. sought registration of trademark “Atussin” This was objected to by petitioner Etepha, A.G. alleging that it will be detrimental on their part as it is confusingly similar to its Pertussin. Both products deal with the treatment of cough.

ISSUE:

            Whether or not Attusin may be registered as a trademark.

HELD:

            Yes. x x x The validity of a cause for infringment is predicated upon colorable imitation. The phrase “colorable imitaion” denotes such a “close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.”

            While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by combination with another word or phrase.”

            The two labels are entirely different in colors, contents, arrangement of words theeon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar with the two trademarks.

            We cannot escape notice of the fact that the two words do not sound alike – when pronounced.