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

• Jurisdiction: South Africa
• Citation: 2012 (4) SA 238 (SCA)

Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another
2012 (4) SA 238 (SCA)

2012 (4) SA p238

Citation	2012 (4) SA 238 (SCA)
Case No	265/2011; [2012] ZASCA 39
Court	Supreme Court of Appeal
Judge	Farlam JA, Nugent JA, Malan JA, Wallis JA and Petse AJA
Heard	March 6, 2012
Judgment	March 29, 2012
Counsel	R Michau SC for the appellants.; MC Seale for the first respondent.

Flynote : Sleutelwoorde B

Intellectual property — Trademark — Expungement — Mark so similar to existing C mark that confusion or deception likely — Test — Prescription medication — Generic alternatives — Court to consider not only specialised pharmaceutical market but also patient — New mark ZEMAX so similar to existing mark ZETOMAX that patient could be deceived or confused — ZEMAX mark expunged from register — Trade Marks Act 194 of 1993, s 10(14).

D Intellectual property — Trademark — Expungement — Mark so similar to existing mark that confusion or deception likely — Test — Court to consider likelihood of confusion of notional consumer of entire class of goods in respect of which marks registered — Trade Marks Act 194 of 1993, s 10(14).

E Medicine — Medicines — Prescription medication — Trademark — Generic alternatives — Application for expungement of mark from register on ground that mark so similar to existing mark that confusion or deception likely — Test — Not only specialised pharmaceutical market but also patient to be considered — New mark ZEMAX so similar to existing mark ZETOMAX that patient (as opposed to practitioner) could be deceived or confused — F ZEMAX expunged from register — Trade Marks Act 194 of 1993, s 10(14).

Headnote : Kopnota

In deciding whether a trademark is so similar to an existing mark that it warrants expungement from the register on the ground that the similarity would render confusion or deception likely, the court (or registrar) has to consider G the likelihood of confusion among the notional consumers of the entire class of goods in respect of which the marks are registered. (Paragraphs [14] – [16] at 243B – 244E.)

Although the specific conditions that obtain in the sale of prescription medication, namely that they are prescribed and then dispensed by trained H professionals in a regulated environment, significantly reduce the likelihood of confusion, the wishes of the patient — the ultimate consumer — can no longer be discounted. The patient has a right to, and often does, participate in decisions concerning his health and treatment, and will discuss the efficacy of various medications and their generic alternatives with doctors and pharmacists. Accordingly the question whether a pharmaceutical I trademark should be removed from the register because its similarity to an earlier mark is 'likely to deceive or cause confusion' — as intended in s 10(14) of the Trade Marks Act 194 of 1993 — must be answered with reference not only to the specialised market of prescription medication, but to the patient as well. (Paragraph [30] at 251A – B.)

The court in applying the above principles held that the first respondent's ZEMAX mark was so similar to the appellants' earlier ZETOMAX mark J (both registered in class 5 — which included, but was not limited to,

2012 (4) SA p239

pharmaceuticals) that there was a reasonable probability that the patient A could be deceived or confused, with the result that the ZEMAX mark had to be removed from the register. (Paragraph [32] at 251G – 252A.) So ordered.

Cases Considered

Annotations:

Case Law B

Southern Africa

Adcock-Ingram Laboratories Ltd v SA Druggists Ltd and Another; Adcock-Ingram Laboratories Ltd v Lennon Ltd 1983 (2) SA 350 (T): overruled

Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147): compared

Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA): C referred to

Bristol Laboratories Inc v Ciba Ltd 1960 (1) SA 864 (A): dictum at 871C – E applied

Century City Apartments Property Services CC and Another v Century City Property Owners' Association 2010 (3) SA 1 (SCA): compared

Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) ([2001] 4 All SA 242): compared D

Judy's Pride Fashions (Pty) Ltd v Registrar of Trade Marks 1997 (2) SA 87 (T): dictum at 92C – E applied

Laboratoire Lachartre SA v Armour-Dial Incorporated 1976 (2) SA 744 (T): referred to

Organon Laboratories Ltd v Roche Products (Pty) Ltd 1976 (1) SA 195 (T): dictum at 200D – G qualified E

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A): referred to

Smithkline Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South Africa (Pty) Ltd) v Unilever plc 1995 (2) SA 903 (A): dictum at 910B applied F

Triomed (Pty) Ltd v Beecham Group plc and Others 2001 (2) SA 522 (T) ([2001] 2 All SA 126): referred to.

Canada

Ciba-Geigy Canada Ltd v Apotex Inc; Ciba-Geigy Canada Ltd v Novopharm Ltd G [1992] 3 SCR 120 (95 DLR (4th) 385; 1992 Canlii 33 (SCC)): compared.

England

Aristoc Ltd v Rysta Ltd 1945 AC 68 (HL) ([1945] 62 RPC 65; [1945] 1 All ER 34): referred to H

Eno v Dunn (1890) 15 App Cas 252 (HL(E)) ((1890) 7 RPC 311): dictum at 264 applied

Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 (ECJ): referred to.

European Union I

Choay SA v Boehringer Ingelheim International GmbH [2001] ETMR 693: compared.

Statutes Considered

Statutes

The Trade Marks Act 194 of 1993, s 10(14): see Juta's Statutes of South Africa 2010/11 vol 2 at 2-217. J

2012 (4) SA p240

Case Information

A Appeal against a decision in the North Gauteng High Court, Pretoria (Prinsloo J).

R Michau SC for the appellants.

MC Seale for the first respondent.

Cur adv vult. B

Postea (March 29).

Order

1.

The appeal is upheld with costs.

2.

C The order of the court below is set aside and replaced with the following order:

'(a)

The second respondent is directed to remove trademark 2004/05322 ZEMAX in class 5 from the register of trademarks in respect of the goods for which it is registered.

(b)

D The first respondent is ordered to pay the costs of the application.'

Judgment

Malan JA (Farlam JA, Nugent JA, Wallis JA and Petse AJA concurring):

E [1] This is an appeal, with the leave of Prinsloo J, against his dismissal with costs of an application by the appellants to remove from the register of trademarks the trademark ZEMAX with registration 2004/05322, dated 5 April 2004, in class 5 of Schedule 3 to the regulations under the Trade Marks Act 194 of 1993 (the Act) in respect of:

'Pharmaceutical and veterinary preparations, sanitary preparations for F medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings; material for stopping teeth, dental wax, disinfectants; preparations for destroying vermin; fungicides, herbicides.'

[2] ZEMAX is registered in the name of the first respondent (Cipla). The G second respondent, the Registrar of Trade Marks, who was cited in his official capacity, did not oppose the application.

[3] The first appellant is the proprietor of the trademark ZETOMAX with registration No 1998/14391, dated 13 August 1998 and subsequently H extended, in class 5 in respect of:

'Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medicinal use, food for babies; plasters, materials for dressings; disinfectants.'

The second appellant is a licensee of the first appellant and manufactures I and distributes pharmaceutical products. I shall refer to both appellants as Adcock. Adcock contends that the trademark registration ZEMAX is an entry wrongly made on the register by virtue of the provisions of s 24, read with ss 10(12) and 10(14), of the Act.

[4] ZETOMAX is a generic medicine. Its active ingredient is Lisinopril, an angiotensin-converting-enzyme inhibitor that is used for the treatment J of moderate hypertension and certain cardiac conditions.

2012 (4) SA p241

Malan JA (Farlam JA, Nugent JA, Wallis JA and Petse AJA concurring)

ZETOMAX is sold in dosages of 5 mg, 10 mg and 20 mg in three blister A strips of ten tablets each per pack. The medicine was sold under the name ZESTOMAX until 2001, when its name was changed to ZETOMAX.

[5] ZEMAX is also a generic medicine, containing Lisinopril as its active ingredient, and is used for the treatment of the same conditions. B

[6] Cipla was originally granted registration in terms of the Medicines and Related Substances Act 101 of 1965 by the Medicines Control Council for its generic medicine under the name Prilosin, in 5 mg and 10 mg dosages, but applied in April 2004 for a change from the name Prilosin 5 to ZEMAX 5 and Prilosin 10 to ZEMAX 10. The name change C was approved on 29 July 2004. The approval of the Council is required for the name under which a medicine is registered. [1] ZEMAX is sold in blister strips of 10 tablets with three strips per pack in dosages of 5 mg and 10 mg.

[7] Infringement proceedings were instituted against Cipla in the Cape D High Court. Judgment in favour of Adcock was given on 9 February 2009 but an appeal to the full bench is pending. These proceedings for expungement were brought because the registration of ZEMAX was only discovered after judgment was delivered in the infringement proceedings.

[8] Section 24 of the Act permits an interested party to apply for an order E removing 'an entry wrongly made in or wrongly remaining on the register', in this case for the removal of the trademark ZEMAX from the register of trademarks. For reasons that will become apparent, I need deal only with s 10(14), which prohibits the registration of —

'a mark which is identical to a registered trade mark belonging to a F different proprietor or so similar thereto that the use thereof in relation to goods or...