Novartis AG v Cipla Medro (Pty) Ltd (39036/14) [2016] ZAGPPHC 371; 2016 BIP 152 (GP) (12 May 2016)

Novartis AG v Cipla Medro (Pty) Ltd (39036/14) [2016] ZAGPPHC 371; 2016 BIP 152 (GP) (12 May 2016)

The court found that the applicant had properly authorised its attorneys to institute proceedings and that the deponents were competent to testify. The applicant was deemed an interested person as the registered proprietor of the CURITAZ trade mark in South Africa. However, the court held that the marks CURIDA and CURITAZ, while sharing the prefix 'CURI', are sufficiently differentiated by their suffixes 'TAZ' and 'DA', which are visually and phonetically distinct. Both products are restricted to scheduled medicines dispensed only by medical professionals, further reducing the likelihood of confusion or deception among the public. The evidence showed that the prefix 'CURI' is commonly...

Citation
[2016] ZAGPPHC 371
Parties
Applicant: Novartis AG; Respondent: Cipla Medro (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
12 May 2016
Case Number
39036/14
Procedural Posture
Review Application / High Court Review of Registrar's Referral Under Section 59(2) of the Trade Marks Act
Outcome
Application dismissed; registration of CURIDA trade mark permitted subject to limited specifications.
Judges
M A Makume
Legal Topics
Trade Mark Opposition, Likelihood of Confusion, Authority to Institute Proceedings, Interested Person Status, Pharmaceutical Classification
Intellectual Property Trade Mark Opposition Likelihood of Confusion Authority to Institute Proceedings Interested Person Status Pharmaceutical Classification

Case Brief

Summary, issues, holding and outcome

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Parties

Novartis AG

Applicant

Cipla Medro (Pty) Ltd

Respondent

Procedural Posture

Review Application / High Court Review of Registrar's Referral Under Section 59(2) of the Trade Marks Act

Legal Issues

  1. 1 Whether the applicant has properly authorised the institution of these proceedings and whether the deponents to the founding affidavit are qualified to testify.
  2. 2 Whether the trade mark CURIDA is likely to cause deception or confusion as contemplated in section 10(14) of the Trade Marks Act in respect of the applicant’s CURITAZ trade mark.
  3. 3 Whether the applicant is an interested person as contemplated in section 21 of the Trade Marks Act.

Ratio Decidendi

The court found that the applicant had properly authorised its attorneys to institute proceedings and that the deponents were competent to testify. The applicant was deemed an interested person as the registered proprietor of the CURITAZ trade mark in South Africa. However, the court held that the marks CURIDA and CURITAZ, while sharing the prefix 'CURI', are sufficiently differentiated by their suffixes 'TAZ' and 'DA', which are visually and phonetically distinct. Both products are restricted to scheduled medicines dispensed only by medical professionals, further reducing the likelihood of confusion or deception among the public. The evidence showed that the prefix 'CURI' is commonly...

Court Disposition

Application dismissed; registration of CURIDA trade mark permitted subject to limited specifications.

Orders

  • The application opposing the registration of the trade mark CURIDA is dismissed.
  • The Registrar of Trade Marks is directed to register the respondent’s trade mark CURIDA subject to the limited specifications: 'antibiotics, pharmaceutical preparations containing a combination of amoxicillin and clavulanic acid.'