Novartis v Cipla Medpro (Pty) Ltd (728/17) [2018] ZASCA 64; 2018 BIP 268 (SCA) (24 May 2018)

Novartis v Cipla Medpro (Pty) Ltd (728/17) [2018] ZASCA 64; 2018 BIP 268 (SCA) (24 May 2018)

The Supreme Court of Appeal held that the marks CURIDA and CURITAZ are sufficiently similar, particularly due to the uncommon and striking prefix 'CURI', which is the dominant feature in both. The differences in the suffixes 'TAZ' and 'DA' are not sufficient to dispel the likelihood of confusion, especially considering imperfect recollection and pronunciation. The court found that the onus was on Cipla Medpro, as the applicant for registration, to prove the absence of confusion, which it failed to do. The court rejected the argument that the regulated nature of the pharmaceutical market and the involvement of healthcare professionals would eliminate confusion, noting that patients are...

Citation
[2018] ZASCA 64
Parties
Appellant: Novartis AG; Respondent: Cipla Medpro (Pty) Ltd; Respondent: Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
24 May 2018
Case Number
728/17
Procedural Posture
Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria
Outcome
Appeal upheld; opposition to registration of CURIDA succeeded; costs awarded to Novartis AG.
Judges
Lewis, Ponnan, Leach, Saldulker, Mathopo
Legal Topics
Trade Mark Opposition, Likelihood of Confusion, Onus of Proof, Pharmaceutical Products
Intellectual Property Trade Mark Opposition Likelihood of Confusion Onus of Proof Pharmaceutical Products

Case Brief

Summary, issues, holding and outcome

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Parties

Novartis AG

Appellant

Cipla Medpro (Pty) Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria

Legal Issues

  1. 1 Whether the trade marks CURIDA and CURITAZ are so similar that their use would be likely to deceive or cause confusion under s 10(14) of the Trade Marks Act 194 of 1993.
  2. 2 Which party bears the onus to prove the absence of likelihood of confusion or deception in trade mark opposition proceedings.
  3. 3 Whether the differences in the suffixes of the marks are sufficient to avoid confusion among consumers, including healthcare professionals.

Ratio Decidendi

The Supreme Court of Appeal held that the marks CURIDA and CURITAZ are sufficiently similar, particularly due to the uncommon and striking prefix 'CURI', which is the dominant feature in both. The differences in the suffixes 'TAZ' and 'DA' are not sufficient to dispel the likelihood of confusion, especially considering imperfect recollection and pronunciation. The court found that the onus was on Cipla Medpro, as the applicant for registration, to prove the absence of confusion, which it failed to do. The court rejected the argument that the regulated nature of the pharmaceutical market and the involvement of healthcare professionals would eliminate confusion, noting that patients are...

Court Disposition

Appeal upheld; opposition to registration of CURIDA succeeded; costs awarded to Novartis AG.

Orders

  • The appeal is upheld with costs, including the costs of two counsel.
  • The order of the court a quo is set aside and substituted with: (a) The opposition to trademark application no 2009/23111 CURIDA in class 5 is upheld; (b) Trademark application no 2009/23111 CURIDA in class 5 is not permitted to proceed to registration; (c) Cipla Medpro (Pty) Ltd is ordered to pay the costs of...