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ETEPHA, A.G., petitioner, vs.

respondents .



(G.R. No. L-20635, March 31, 1966)


FACTS: Respondent Westmont Pharmaceuticals, Inc., a New

York corporation, sought registration of trademark "Atussin"
placed on its "medicinal preparation of expectorant
antihistaminic, bronchodilator sedative, ascorbic acid
(Vitamin C) used in the treatment of cough". The
trademark is used exclusively in the Philippines since January
21, 1959.

It is admitted that plaintiffs trade name as evidenced by the

certificate issued under the Spanish regime, consists solely of
the words La Flor de la Isabela. Plaintiff does not claim that
the word Isabela has been registered by it as a trade name
or that it has a title from any source conferring on it the
exclusive right to use that word.

Petitioner, Etepha, A. G., a Liechtenstin (principality)

corporation, objected claiming that it will be damaged
because Atussin is so confusedly similar to its Pertussin used
on a preparation for the treatment of coughs, that the buying
public will be misled into believing that Westmont's product is
that of petitioner's which allegedly enjoys goodwill. The
Director of Patents ruled that the trademark ATUSSIN may
be registered even though PERTUSSIN had been previously
registered from the same office, hence, this appeal.
ISSUE: Whether or not ATUSSIN may be registered?
HELD: We are to be guided by the rule that the validity of a
cause for infringement is predicated upon colorable imitation.
The phrase "colorable imitation" 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. A practical approach to the
problem of similarity or dissimilarity is to go into the whole of
the two trademarks pictured in their manner of display.
Inspection should be undertaken from the viewpoint of
a prospective buyer. Confusion is likely between trademarks,
however, only if the over-all presentations in any of the
particulars of sound, appearance, or meaning are such as
would lead the purchasing public into believing that the
products to which the marks are applied emanated from the
same source. We concede the possibility that buyers might be
able to obtain Pertussin or Attusin without prescription. 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. 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.
Cost against petitioner. So ordered.

Defendant began the manufacture of cigarettes, offering them

to the public in packages on the front side of each of which
appeared the words Alhambra Isabelas.
Action is brought to enjoin the defendant from using the word
The exclusive right to use this name, plaintiff claim arises
from two causes: First, the contraction of the phrase La Flor
de la Isabela into the word Isabela by popular expression
and use; and second, the use for more than twenty years of
the word Isabela.
Judgment was for plaintiff and defendant appealed.
ISSUE: Whether defendants use of the word Alhambra
Isabela is an infringement to the use of trade name.
The statute prohibits the registration of a trade name when
the trade name represents the geographical place of
production or origin of the products or goods to which the
trade name refers, or when it is merely the name, quality or
description of the merchandise with respect to which the
trade name is to be used. In such cases, therefore, no trade
name can exist.
The two claims of the plaintiff are identical; for, there could
have been no contraction brought about by popular
expression except after long lapse of time. The contraction of
the phrase in to the word would create no rights, there being
no registration, unless it resulted from long use.
The opinion of the plaintiff must fail. It shows that in not a
single instance in the history of the plaintiff corporation, so
far as is disclosed by the record, has a package of its
cigarettes gone into the market, either at wholesale or retail
with the word Isabela alone on the package as a separate or
distinct word or name.
Even admitting that the word Isabela may have been
appropriable by plaintiff as a trade name at the time it began
to use it, the evidence showing that it had been exclusively
appropriated by the plaintiff would have to be very strong to
establish the fact of appropriation and the right to exclusive
use. The law as it stands and has stood since the Royal
Decree of 1888 prohibits the use of a geographical name as a
trade name.
The judgment appealed from is reversed.