Cipla Medpro (Proprietary) Ltd v Nycomed Austria GmbH

• Jurisdiction: South Africa
• Judge: Tuwe AN
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2395 (TRM)
• Docket Number: 2006/12167

Tuwe AN:

The Applicant is Cipla Medpro (Pty) Ltd, a South African company. The Applicant has applied for the registration of the trade mark FEXO DEVICE under trade mark application no. 2006/12167 in respect of the following goods in class 5: "pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietectic substances adapted for medical use, food for babies, plasters, material for dressing, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides".

The Opponent is Nycomed Austria GmbH. an Australian company. The

2015 JDR 2395 p2

Tuwe AN

Opponent relies on its trade mark registration for the mark XEFO under trade mark registration no. 1998/05349 in class 5 in respect of the following goods: "Pharmaceutical preparations and substances, analgesic and/or anti-inflammatory agents for medical use".

The opposition is directed at the same goods to which the Opponent's trade mark registration for the mark XEFO relates, all the goods in question have been listed above.

The Opponent opposes the registration of the subject trade mark application in terms of the provision of section 10(14) of Trade Marks Act 194 of 1993 ("the Act''). The section relied on provides as follows:

10.

Unregistrable trade marks: - The following trade marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of section 3 and 70, be liable to be removed from the register:

(14)

subject to the provisions of section 14, a mark which is identical to a registered mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in

2015 JDR 2395 p3

Tuwe AN

respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such mark consents to the registration of such mark.

The Applicant's contention is that there is no likelihood of confusion or deception between the use of the mark FEXO DEVICE, in view of the existence of the trade mark XEFO, which has heen registered in relation to the same goods as those in respect of which the Applicant is seeking registration.

It is trite that the onus rests upon the Applicant for registration to satisfy the Registrar that there is no reasonable probability of confusion or deception, and that his trade mark otherwise qualifies for registration. If the Applicant does not satisfy the Registrar on a balance of probabilities on the issue of the likelihood of confusion or deception, it is the Registrar's duty to refuse registration (Webster & Page par 8.41)

Counsel for the Opponent contends that the effect of this onus is that, should the Applicant not be able to tip the scales of probabilities in its favour, or if the Registrar is of the view that the probabilities are equal, the subject trade mark must be refused. The Applicant has the onus of proving that the trade mark qualities for registration. If there is any doubt whether the mark should be registered, the application should be refused.

2015 JDR 2395 p4

Tuwe AN

What the Applicant has to establish is that there is no reasonable probability i.e. no likelihood of consumer deception or confusion (The Upjohn Company v Mere and Another 1987 (3) SA 221...