Etepha v. Director of Patents
REITERATIONFacts
The Antecedents: Respondent Westmont Pharmaceuticals, Inc. sought to register the trademark "Atussin" for its medicinal preparation used in the treatment of cough. Petitioner Etepha, A.G. objected, claiming that "Atussin" is confusingly similar to its registered trademark "Pertussin," which is also used for a cough preparation, and that such similarity would mislead the public and damage its goodwill. Procedural History: The Director of Patents answered affirmatively to the question of whether "Atussin" could be registered despite the prior registration of "Pertussin." This led to the present appeal. The Petition: Petitioner appealed the decision of the Director of Patents, arguing that the similarity between "Atussin" and "Pertussin" would cause confusion among purchasers.
Issue(s)
Whether the trademark "Atussin" is confusingly similar to the registered trademark "Pertussin" such that its registration would cause confusion or deceive purchasers. Whether the common component "tussin" in both trademarks is generic or descriptive and thus open for appropriation.
Ruling
The Court affirmed the decision of the Director of Patents, allowing the registration of the trademark "Atussin." The Court found no confusing similarity between "Atussin" and "Pertussin" based on their overall presentation, sound, and the nature of the products and their purchasers.
Ratio Decidendi
On the issue of confusing similarity between "Atussin" and "Pertussin": The Court held that the overall presentation of the two trademarks, when viewed from the perspective of a prospective buyer, does not create confusion. The labels of "Atussin" and "Pertussin" are entirely different in colors, contents, arrangement of words, sizes, shapes, and general appearance, presenting distinct pictorial effects. Furthermore, the Court noted that the words themselves do not sound alike when pronounced, with "Per" in "Pertussin" being the most pronounced part, differing significantly from the initial "A" in "Atussin." This lack of phonetic similarity, coupled with the visual dissimilarities, prevents the likelihood of purchasers being misled into believing the products emanate from the same source. The Court emphasized that trademark infringement is predicated upon "colorable imitation," which requires a resemblance calculated to deceive ordinary persons or purchasers. On the nature of the common component "tussin": The Court agreed with the Director of Patents that the word "tussin" is merely descriptive and generic, derived from the Latin root-word "tussis" meaning cough. It was observed that it is common practice in the pharmaceutical industry to use syllables or words suggestive of ailments, adding distinctive prefixes or suffixes. As a descriptive and generic term, "tussin" furnishes no indication of the origin of the goods and is open for appropriation by anyone. Allowing exclusive use of "tussin" in a trademark would grant a practical monopoly, which is contrary to trademark principles. While "tussin" alone cannot be exclusively used, it may be part of a trademark when combined with another word or phrase, as seen in "Pertussin" and "Atussin."
Main Doctrine
The trademark ATUSSIN is not confusingly similar to the previously registered trademark PERTUSSIN, considering the distinct visual and phonetic differences between the marks, the generic nature of the common suffix 'tussin' derived from 'tussis' (cough), and the careful purchasing habits of consumers for pharmaceutical products, thus affirming the registration of ATUSSIN.