Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another (265/2011) [2012] ZASCA 39; 2012 (4) SA 238 (SCA); [2012] 3 All SA 1 (SCA); 2012 BIP 113 (SCA) (29 March 2012)

Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another (265/2011) [2012] ZASCA 39; 2012 (4) SA 238 (SCA); [2012] 3 All SA 1 (SCA); 2012 BIP 113 (SCA) (29 March 2012)

The Supreme Court of Appeal held that the trade marks ZEMAX and ZETOMAX are confusingly similar, both visually and phonetically, and that their registration in respect of a broad class of goods creates a reasonable likelihood of confusion or deception among a substantial number of consumers. The court rejected the narrow approach limiting the relevant consumer to medical practitioners and pharmacists, finding that patients are also part of the notional consumer, especially in light of statutory provisions granting patients a participatory role in generic substitution decisions. The court found that the similarity between the marks is sufficient to cause confusion, particularly when...

Citation
[2012] ZASCA 39
Parties
Appellant: Adcock Ingram Intellectual Property (Pty) Ltd; Appellant: Adcock Healthcare (Pty) Ltd; Respondent: Cipla Medpro (Pty) Ltd; Respondent: The Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
29 March 2012
Case Number
265/2011
Procedural Posture
Civil Appeal / Appeal From North Gauteng High Court, Pretoria
Outcome
Appeal upheld; order of the court below set aside and replaced.
Judges
Farlam, Nugent, Malan, Wallis, Petse
Legal Topics
Trade Mark Expungement, Likelihood of Confusion, Generic Substitution, Pharmaceutical Regulation
Intellectual Property Commercial and Corporate Trade Mark Expungement Likelihood of Confusion Generic Substitution Pharmaceutical Regulation

Case Brief

Summary, issues, holding and outcome

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Parties

Adcock Ingram Intellectual Property (Pty) Ltd

Appellant

Adcock Healthcare (Pty) Ltd

Appellant

Cipla Medpro (Pty) Ltd

Respondent

The Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From North Gauteng High Court, Pretoria

Legal Issues

  1. 1 Whether the trade mark ZEMAX is so similar to the registered trade mark ZETOMAX that its use would be likely to deceive or cause confusion under s 10(14) of the Trade Marks Act.
  2. 2 Whether the relevant notional consumer includes the patient, not only medical practitioners and pharmacists, in the assessment of confusion.
  3. 3 Whether the registration of ZEMAX should be limited to certain goods or removed entirely from the register.

Ratio Decidendi

The Supreme Court of Appeal held that the trade marks ZEMAX and ZETOMAX are confusingly similar, both visually and phonetically, and that their registration in respect of a broad class of goods creates a reasonable likelihood of confusion or deception among a substantial number of consumers. The court rejected the narrow approach limiting the relevant consumer to medical practitioners and pharmacists, finding that patients are also part of the notional consumer, especially in light of statutory provisions granting patients a participatory role in generic substitution decisions. The court found that the similarity between the marks is sufficient to cause confusion, particularly when...

Court Disposition

Appeal upheld; order of the court below set aside and replaced.

Orders

  • The appeal is upheld with costs.
  • The second respondent is directed to remove trade mark 2004/05322 ZEMAX in class 5 from the register of trade marks in respect of the goods for which it is registered.