Aspen Pharmacare Holdings Group and Another v Adcock Ingram Healthcare (Pty) Ltd and Others (017055/2025) [2025] ZAGPPHC 462 (12 May 2025)

Aspen Pharmacare Holdings Group and Another v Adcock Ingram Healthcare (Pty) Ltd and Others (017055/2025) [2025] ZAGPPHC 462 (12 May 2025)

The court found that the dominant 'BUCOD' element in both 'MYBUCOD' and 'LENBUCOD' is unique and has been exclusively associated with the applicants' products for 17 years. The respondents' adoption of 'LENBUCOD' for an identical product creates a substantial likelihood of confusion or deception among consumers and pharmacists, who typically recall and request products by the dominant portion of the name. The respondents failed to provide credible evidence to challenge the distinctiveness of 'BUCOD', and their argument that it is a generic descriptor was rejected. The court held that the applicants' trademark registration is valid and capable of distinguishing their product. The...

Citation
[2025] ZAGPPHC 462
Parties
Applicant: Aspen Pharmacare Holdings Group; Applicant: Pharmacare Limited; Respondent: Adcock Ingram Healthcare (Pty) Ltd; Respondent: Adcock Ingram Intellectual (Pty) Ltd; Respondent: Registrar of Trade Marks
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
12 May 2025
Case Number
017055/2025
Procedural Posture
Urgent Application / Final Interdict Application With Ancillary Relief
Outcome
Application granted. The respondents are interdicted from infringing the applicants' trademark and ordered to deliver up infringing materials. Costs awarded to the applicants, including costs for two counsel.
Judges
Millar
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Distinctiveness of Mark, Pharmaceutical Products, Interdict, Registration Validity
Intellectual Property Trade Mark Infringement Likelihood of Confusion Distinctiveness of Mark Pharmaceutical Products Interdict Registration Validity

Case Brief

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Parties

Aspen Pharmacare Holdings Group

Applicant

Pharmacare Limited

Applicant

Adcock Ingram Healthcare (Pty) Ltd

Respondent

Adcock Ingram Intellectual (Pty) Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Urgent Application / Final Interdict Application With Ancillary Relief

Legal Issues

  1. 1 Whether the respondents' use of 'LENBUCOD' infringes the applicants' registered 'MYBUCOD' trademark under section 34(1)(a) of the Trade Marks Act.
  2. 2 Whether the inclusion of 'BUCOD' in the respondents' mark creates a likelihood of confusion or deception among consumers.
  3. 3 Whether the applicants' trademark registration is valid and capable of distinguishing their product.

Ratio Decidendi

The court found that the dominant 'BUCOD' element in both 'MYBUCOD' and 'LENBUCOD' is unique and has been exclusively associated with the applicants' products for 17 years. The respondents' adoption of 'LENBUCOD' for an identical product creates a substantial likelihood of confusion or deception among consumers and pharmacists, who typically recall and request products by the dominant portion of the name. The respondents failed to provide credible evidence to challenge the distinctiveness of 'BUCOD', and their argument that it is a generic descriptor was rejected. The court held that the applicants' trademark registration is valid and capable of distinguishing their product. The...

Court Disposition

Application granted. The respondents are interdicted from infringing the applicants' trademark and ordered to deliver up infringing materials. Costs awarded to the applicants, including costs for two counsel.

Orders

  • The first respondent is interdicted and restrained from infringing the first applicant’s rights acquired through trademark registration no. 2004/20795 MYBUCOD in class 05 by using any trade mark confusingly similar thereto, in particular the 'LENBUCOD' mark.
  • The first respondent is ordered to deliver up for destruction to the first applicant’s attorneys within seven days any packaging, catalogues, advertising, promotional material or other materials bearing or incorporating a trademark identical or confusingly similar to the MYBUCOD trademark.