South Africa Case Law

Adcock Ingram Limited and Others v Cipla Medpro (Pty) Limited (10455/2023)

Adcock Ingram Limited and Others v Cipla Medpro (Pty) Limited (10455/2023) [2025] ZAWCHC 170 (17 April 2025)

Court

Western Cape High Court, Cape Town

Case number

10455/2023

Judge

Lekhuleni

The court found that the applicants' URIZONE trade mark and the respondent's FURIZOME trade mark are both invented words used for identical pharmaceutical products treating urinary tract infections. The dominant elements of both marks are strikingly similar in visual, aural, and conceptual respects, with only minor differences in their prefixes and suffixes. The court held that these differences are insignificant and that the overall impression created by the marks is such that a substantial number of consumers, including patients, doctors, and pharmacists, are likely to be deceived or confus…

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• Trade Mark Infringement
• Passing Off
• Unlawful Competition
• Likelihood Of Confusion
• Pharmaceutical Regulation
• Generic Substitution

Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another (265/2011)

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)

Court

Supreme Court of Appeal

Case number

265/2011

Judges

Farlam, Nugent, Malan, Wallis, Petse

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 foun…

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• Trade Mark Expungement
• Likelihood Of Confusion
• Generic Substitution
• Pharmaceutical Regulation

Adcock Ingram Intellectual Property (Pty) Limited and Another v Cipla Medpro (Pty) Limited and Another (30763/2009)

Adcock Ingram Intellectual Property (Pty) Limited and Another v Cipla Medpro (Pty) Limited and Another (30763/2009) [2010] ZAGPPHC 249; 2010 BIP 225 (GNP) (23 December 2010)

Court

North Gauteng High Court, Pretoria

Case number

30763/2009

Judge

W R C Prinsloo

The court found that the applicants failed to discharge the onus of proving a likelihood of confusion or deception between the trade marks 'Zetomax' and 'Zemax'. The pharmaceutical market is tightly regulated, with products dispensed only by qualified professionals, and both products have coexisted for years without any reported confusion. The evidence presented by the respondent, including expert affidavits, demonstrated that similar prefixes and suffixes are common in pharmaceutical trade marks and that the distinctive element 'ZETO' is not present in 'Zemax'. Arguments regarding confusion…

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• Trade Mark Rectification
• Likelihood Of Confusion
• Pharmaceutical Products
• Onus Of Proof
• Generic Substitution

Beecham Group Plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd. and Another (48/91)

Beecham Group Plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd. and Another (48/91) [1992] ZASCA 207; 1993 (1) SA 546 (AD); (25 November 1992)

Court

Supreme Court of Appeal

Case number

48/91

Judges

Corbett, E M Grosskopf, Goldstone, Nicholas, Kriegler

The court held that a pharmacy software system’s display of registered trade marks for generic comparison did not infringe under section 44(1)(b).

• Trade Mark Infringement
• Use In The Course Of Trade
• Generic Substitution
• Statutory Interpretation
• Trade-mark-infringement
• Use-in-the-course-of-trade