Aspen Pharmacare Holdings Group and Another v Adcock Ingram Healthcare (Pty) Ltd and Others (017055/2025) [2025] ZAGPPHC 462 (12 May 2025)

Case Note

This is a trademark dispute case between ASPEN PHARMACARE HOLDINGS GROUP and PHARMACARE LIMITED as applicants against ADCOCK INGRAM HEALTHCARE (PTY) LTD, ADCOCKINGRAMINTELLECTUAL (PTY) LTD, and THE REGISTRAR OF TRADE MARKS as respondents. The case is cited as Case No. 017055/2025 and was handed down on 12 May 2025 by Millar J at the High Court of South Africa (Gauteng Division, Pretoria). The decision was heard on 23 April 2025, and all parties received notice via email and the CaseLines system.

Reportability

This case is reportable because it deals with the significant legal question of trademark infringement and the determination of whether a newly introduced mark—namely "LENBUCOD"—is likely to deceive or cause confusion with an already established and registered trademark "MYBUCOD". The dispute raises important issues regarding the interpretation and application of the Trade Marks Act in the realm of pharmaceutical products, making it of clear interest to the judiciary and other legal practitioners. Particularly, the judgment contributes to the body of precedent on how similarity in trademarks is assessed in terms of sound, appearance, and overall market impression.

The case is also notable as it discusses the practical impact of longstanding brand reputation and recognition on consumer perception within a competitive market. Its analysis provides guidance on how courts should approach future trademark infringement cases that involve closely resembling marks in both appearance and phonetics. Finally, the judgment underscores the importance of robust trademark registration practices and the protection it affords in the business sphere.

Cases Cited

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A)
Puma AG Rudolf Dass/er Sport v Global Warming (Pty) Ltd 2010 (2) SA 600 (SCA)
Adidas AG v Pepkor Retail Limited 2013 JDR 0310 (SCA)
Roodezandt Wynmakery Ltd v Robertson Winery (Pty) Ltd 2014 JDR 2452 (SCA)
Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd 2016 JDR 1705 (SCA)

Legislation Cited

Trade Marks Act 194 of 1993

Rules of Court Cited

No specific rules of court were directly cited in the judgment text, aside from references to procedural provisions contained within the Trade Marks Act.

HEADNOTE

Summary

This judgment examines whether the applicants' long-established trademark "MYBUCOD" can be distinguished from the respondents' newly launched mark "LENBUCOD", given the near-identical appearance, packaging, and pharmacological composition of the products. The court’s analysis focused squarely on the issue of potential consumer deception that might arise from the similarity between the two marks. It critically assessed the likelihood of confusion by drawing on established precedents and interpretation of statutory provisions provided in the Trade Marks Act.

The opinion details the history of use and registration of "MYBUCOD", highlighting the product’s longstanding market presence of 17 years without challenge. The court contrasted this background with the respondents’ more recent introduction of "LENBUCOD", arguing that the close resemblance between the marks is likely to mislead consumers. This is underscored by a thorough examination of established legal tests for deception and confusion in trademark disputes.

Furthermore, the judgment emphasizes that the case is a straightforward application of section 34(1)(a) of the Trade Marks Act. It reiterates that the infringement analysis revolves around whether the similar marks are likely to cause a significant number of consumers to be deceived about the origin of the products.

Key Issues

The key issues in this case include whether or not the use of the mark "LENBUCOD" by the respondents is likely to deceive or cause confusion among consumers regarding its association with the well-known "MYBUCOD" product. The judgment addresses whether the marks are sufficiently similar in appearance, sound, and overall market impression to warrant an allegation of trademark infringement. It also scrutinizes the argument challenging the validity of the applicants’ trademark.

The court was required to consider the extent to which consumer perception plays a role in determining both deception and confusion. In addition, the case examines the impact of longstanding market presence and the evolving competitive landscape when evaluating trademark disputes. Each of these aspects is critical to understanding how established legal principles are applied in practice.

Lastly, the analysis emphasizes the importance of contextualizing the marks within the relevant market environment. The court considered factors such as the ordinary purchaser’s perception, potential for imperfect recollection, and the influence of generic descriptors when making its assessment.

Held

The court held that the similarity between "MYBUCOD" and "LENBUCOD" is sufficient to likely cause confusion among a substantial segment of consumers. It was determined that the respondents’ mark infringes upon the applicants' registered trademark under section 34(1)(a) of the Trade Marks Act because the likelihood of deception is clearly established. As a result, the applicants are entitled to the relief sought, which includes an interdict and ancillary orders to remove any trace of the infringing mark from the marketplace.

The decision reinforces the principle that even marginal differences in trademarks are not enough to overcome the risk of consumer confusion when the marks share dominant features and phonetic similarities. The court’s conclusion rests on both the legal criteria for trademark infringement and the practical implications for market conduct.

In finality, the judgment underscores the need for careful evaluation of trademark similarities and consumer perception, thereby setting an important precedent for future cases in the pharmaceutical sector and beyond.

THE FACTS

The relevant facts center around the registration and extensive use of the mark "MYBUCOD" by the applicants. Registered on 21 February 2008 under the Trade Marks Act, the mark served as a unique identifier for the applicants’ medicine for over 17 years without any significant challenge from competing entities. The product’s presentation—including its name and packaging—has been consistently recognized by consumers during this period.

On 27 January 2025, the applicants were alarmed to learn that the respondents had introduced an identical pharmaceutical product under the name "LENBUCOD". Despite the identical pharmacological composition of the two products, the only visual difference lies in the product names, which are nearly identical in sound and spelling. The respondents moved swiftly to register "LENBUCOD" as a trademark by 30 January 2025, prompting the applicants to seek legal remedies.

Furthermore, the applicants claim that the respondents deliberately selected a name that is closely associated with "MYBUCOD" to create confusion among consumers. This alleged strategy is aimed at capitalizing on the established reputation and market presence of the applicants, thereby infringing upon their trademark rights.

THE ISSUES

The primary legal question was whether the respondents' use of the mark "LENBUCOD" would likely lead to deception or confusion among consumers in the context of established market practices. The court needed to determine if the similar appearance and phonetic resemblance between the two marks were sufficient for trademark infringement under the Trade Marks Act. Another issue raised by the respondents was the contested validity of the applicants' trademark, although this was not the central point of the proceedings.

The case also required an assessment of how the mark's similarity would affect consumer perception. In this context, the court evaluated whether an average purchaser, characterized by ordinary perception and caution, would mistakenly assume the two products shared the same origin. The inquiry extended to the practical implications of any deception or confusion in a competitive marketplace.

In addressing these issues, the court compared the characteristics of both trademarks and considered prior case law that sets forth criteria for determining likelihood of confusion. This comprehensive approach was necessary to ensure that all relevant factors—including similarity in sound, appearance, and market context—were adequately considered.

ANALYSIS

The court’s reasoning was multifaceted, beginning with a detailed comparison of the trademarks "MYBUCOD" and "LENBUCOD". The analysis incorporated established tests for likelihood of deception or confusion, drawing on prominent precedents such as Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd. The court emphasized that the core of the inquiry is whether a substantial number of consumers could be misled regarding the source of the goods.

In its reasoning, the court considered three broad categories: the probability of deception or confusion, the impact of comparing key features of the marks, and the market context in which the products are sold. This framework ensured that the decision reflected both the legal standards and practical consumer behavior. The judgment highlighted that the similarities in the names are not superficial but affect the overall impression seen in a competitive market setting.

Moreover, the judgment underscored that the onus was on the applicants to demonstrate that the likelihood of confusion is significant. Through reference to previous rulings, the court reiterated that even if every consumer is not misled, a substantial portion of the target market being confused is sufficient for finding infringement. The analysis was supported by detailed commentary on consumer psychology and recollection of trademarks, further strengthening the applicants’ claim.

REMEDY

The remedy ordered by the court involves granting an interdict against the respondents from offering the "LENBUCOD" product for sale under that name. Ancillary orders are also granted, which compel the respondents to remove all traces of the infringing mark from the marketplace. These measures are intended to protect the integrity of the applicants’ trademark and prevent further consumer confusion.

The court’s remedy is designed to immediately halt any misuse of the mark while preserving the commercial reputation and goodwill of the applicants’ established product. The orders encompass both present and future infringements, thereby ensuring that the deceptive similarity between the two marks does not benefit the respondents.

Furthermore, the remedy reflects the court’s commitment to upholding the statutory protection afforded by the Trade Marks Act. It serves as a deterrent to any similar attempts in the future by emphasizing that the legal system will intervene decisively when well-established trademarks are compromised.

LEGAL PRINCIPLES

The key legal principles established and applied in this judgment include the well-recognized criterion of likelihood of deception or confusion as enshrined in section 34(1)(a) of the Trade Marks Act. The judgment confirms that the misuse of a trademark in a closely related market, where consumer confusion is likely, constitutes an infringement even if the products have identical content.

Additionally, the court reiterated that consumer perception is a critical factor in trademark disputes. The opinion reinforces the idea that it is not necessary for every potential customer to be deceived; rather, the likelihood that a substantial number of consumers will be confused—based on the overall impression of the marks—is sufficient for an infringement ruling.

Finally, the judgment emphasizes that the entire context of market practices, including product packaging and presentation, must be evaluated alongside the marks themselves. This comprehensive approach ensures that the legal protection offered by trademark registration extends to maintaining the distinctiveness and identity of a brand in a competitive environment.