The Panados and Panadon’ts of Trade Mark Registrations – Recent Developments regarding Trade Marks used in the Pharmaceutical Industry

• Published date: 16 August 2019
• Citation: (2013) IPLJ 165
• Author: Marius Roetz
• Date: 16 August 2019
• Pages: 165-169

165

THE PANADOS AND PANADON’TS

OF TRADE MARK REGISTRATIONS

– RECENT DEVELOPMENTS

REGARDING TRADE MARKS USED IN

THE PHARMACEUTICAL INDUSTRY

MarIus rOetz

*

Von Seidels Intellectual Property Attorneys

Whereas the ordi nary man on the street would say t wo trade marks look and

sound alike, those of us specialising in the eld of trade mark law are required

to raise a more substantiat ed argument when confronted w ith a similar

situation. Our weapons of choice? A specied list of grounds rendering trade

marks unreg istrable, as set out in s 10 the Trade Marks Act 194 of 1993, each

one meticulously formulated to gr ant protection in an array of scenarios. One

might even refer to them as the ‘Royal Family’ of trade mark provisions.

If so, ss 10(12) and 10(14) may be considered the King and Queen provisions.

While s 10(12) of the Act states that a trade mark shall not be reg istered where

it is inherently decept ive or where the use of such a trade mark would be likely

to deceive or cause confusion, be cont rary to law, be contra bonos mores, or be

likely to give offence to any class of persons, s 10(14) in essence prohibits the

registration of a trade m ark which is identical or similar to a register ed trade

mark, and where the use t hereof is likely to cause confusion or deception.

What follows after a trade m ark application is provisionally refused on either

one of these grounds, are hou rs of contemplation as to how one would persuade

the Registra r that the marks differ sufciently to wa rrant co-existence on the

Trade Marks Register, as well as in the ma rketplace. Deceptive and confusing

trade marks u sed in relation to pharmaceutical pro ducts are of particular

concern, consider ing the potentially harmf ul effects of an incorrect di spensing.

The application and effect of these sect ions have come under the spotlight

in recent judgments, yet the ap proach thereto by the Tribunal of the Registrar

of Trade Marks and the Supreme Cour t of Appeal (SCA) differ notably,

specically in the eld of pharma ceutical products.

DecIsIOn By tHe traDe Marks trIBunal

In a recent decision in the Tribunal of the Regis trar of Trade Marks handed

down on 13 March 2012, Ranbaxy Laboratories opposed Sano-Aventis’s

trade mark application for 2005/12493 RANTR AL in class 5 in respect of

pharmaceutic al and medicinal preparations for huma n and veterinary

* BSc LLB LLM (Stell).

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(2013) IPLJ 165

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