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[2010] ZAGPPHC 249
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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)
NOT
REPORTABLE
IN
THE HIGH COURT OF SOUTH AFRICA
/ES
(
NORTH
GAUTENG HIGH COURT. PRETORIA
)
CASE
NO: 30763/2009
DATE:23/12/2010
IN
THE MATTER BETWEEN
ADCOCK
INGRAM INTELLECTUAL PROPERTY
(PTY)
LIMITED
…......................................................................................
1
st
APPLICANT
ADCOCK
INGRAM HEALTHCARE (PTY) LIMITED
.............................
2
nd
APPLICANT
AND
CIPLA
MEDPRO (PTY)
LIMITED
............................................................
1
st
RESPONDENT
THE
REGISTRAR OF TRADE MARKS
….............................................
2
nd
RESPONDENT
JUDGMENT
PRINSLOO.
J
[1]
The applicants are applying for an order directing the second
respondent to expunge from the Register of Trade Marks a trade
mark
registered in the name of the first respondent, in respect of the
goods for which it is registered.
[2]
Before me, Mr Michau appeared for the applicants and Mr Seale
appeared for the first respondent. There was no appearance for
the
second respondent, who did not take an active part in the
proceedings.
Introduction
[3]
The application is based on the provisions of
section 24
of the
Trade
Marks Act no 194 of 1993
, read with
section 10(12)
and
10
(14)
thereof.
[4]
Section 24(1)
of the
Trade Marks Act
("the Act") reads
as follows:
"General
power to rectify entries in register - (1) In the event of
non-insertion in or omission from the register of any entry,
or of an
entry wrongly made in or wrongly remaining on the register, or of any
error or defect in any entry in the register, any
interested party
may apply to the court or. at the option of the applicant and subject
to the provisions of
section 59
, in the prescribed manner, to the
Registrar, for the desired relief, and thereupon the court or the
Registrar, as the case may
be, may make such order for making,
removing or varying the entry as it or he may deem fit"
[5]
Section 10
, with the relevant subsections, reads as follows:
"Unregistrable
trade marks - The following marks shall not be registered as trade
marks or. if registered, shall, subject to
the provisions of
sections
3
and
70
, be liable to be removed from the register: ... (12) a mark
which is inherently deceptive or the use of which would be likely to
deceive or cause confusion, be contrary to law, be
conira
bonos mores,
or
be likely to give offence to any class of persons;
(14)
subject to the provisions of
section 14
, a mark which is identical to
a registered trade 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 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."
[6]
For purposes of these proceedings. Mr Michau limited his
argument to a reliance on the provisions of
section 24
read with
section 10(14)
of the Act.
[7]
The first and second applicants are companies within the Adcock
Ingram Group ("Adcock Ingram"). Adcock Ingram
is a leading
South African health care group that develops, manufactures, markets
and distributes a wide range of health care products
for Southern
Africa and the export market.
[8]
The first respondent is also a prominent participant in the South
African pharmaceutical industry. It has an annual turn-over
of
approaching Rl billion and by volume is one of the largest
pharmaceutical companies in South Africa. The first respondent's
core
business is the supply of generic medicines and the first respondent
is well-known in the medical industry for this.
[9]
The applicants contend that a trade mark of which the first
respondent is the registered proprietor is confusingly and/or
deceptively
similar to a trade mark registered in the name of the
first applicant. The applicants submit that the first respondent's
trade
mark is an entry wrongly made on the Trade Marks Register by
virtue of the provisions of
sections 24
and
10
of the Act, and ought
to be removed from the register.
The
competing trade marks and their use
[10]
The first applicant is the registered proprietor in South Africa of
trade mark registration no 1998/14391 Zetomax dated 13
August 1998 in
Class 5 in respect of:-
"Pharmaceutical,
veterinary and sanitary preparations; dietetic substances adapted for
medical use, food for babies; plasters,
materials for dressings;
disinfectants."
[11]
Zetomax is a hypertensive pharmaceutical product. It is used in the
treatment of mild to moderate hypertension, the management
of
congestive heart failure in combination with other medicines and the
prevention of left ventricular dysfunction following myocardial
dysfunction.
[12]
The Zetomax pharmaceutical product is registered with the Medicines
Control Council ("MCC") in terms of the Medicines
and
Related Substances Control Act, no 101 of 1965 ("the Medicines
Control Act").
[13]
The Zetomax product was first registered and launched by the company
Parke-Med in January 2000 under the name Zestomax. The
product name
was changed from Zestomax to Zetomax in 2001.
[14]
Zetomax is what is termed a "generic" medicine with
Lisinopril being the active ingredient. Lisinopril is an
angiotensin-converting
enzyme ("ACE") inhibitor. Inhibition
of ACE results in the lowering of blood pressure. Hypertensive
products that contain
Lisinopril as the active ingredient are
categorised as "ACE inhibitors".
[15]
The Zetomax trade mark was acquired by the first applicant from
Parke-Med with effect from 1 August 2003.
[16]
The second applicant uses the trade mark Zetomax under licence from
the first applicant.
[17]
Zetomax is sold in blister strips of 10 tablets, packed in 3 strips
per pack. It is sold in dosages of 5mg, lOmg and 20mg.
[18]
In the founding affidavit it is alleged that the second applicant had
spent an amount of some R5 million in marketing and advertising
the
Zetomax product. Zetomax has also been advertised primarily in
industry journals such as the MIMS. It is alleged that Zetomax
is
available, and has been since 2001, in more than two thousand
pharmacies in South Africa. This includes all the major
pharmaceutical
chains, wholesalers and industrial clinics. More than
375 000 units of the Zetomax product was sold over the period August
2003
to August 2004 generating a turn-over of some R17 million. Since
August 2004, Zetomax products to the value of tens of millions
of
rands have been sold in South Africa.
[19]
I now turn to the mark of the first respondent. It goes by the name
Zemax with date of registration 5 April 2004, also in class
5. It was
registered in respect of the goods "pharmaceutical and
veterinary preparations, sanitary preparations, sanitary
preparations
for 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".
[20]
Like Zetomax, Zemax is also an ACE inhibitor. It is also a generic
medicine with the active ingredient Lisinopril. It is manufactured
and dispensed in tablet form as either 5, 10 or 20mg tablets.
[21]
Like Zetomax, Zemax is prescribed for mild to moderate hypertension,
congestive heart failure and left ventricular dysfunction
following
myocardial dysfunction.
[22]
Like Zetomax. Zemax is also a Schedule 3 substance.
[23]
On 5 August 2002 the first respondent was granted registration by the
MCC for Lisinopril under the name Prilosin in 5 and lOmg
dosages.
[24]
In April 2004 the first respondent applied to the MCC for a change in
the proprietary name of Prilosin 5 to Zemax 5 and Prilosin
10 to
Zemax 10. The proprietary name change was found to be acceptable by
the MCC on 29 July 2004.
[25]
According to the deponent to the opposing affidavit, the reason for
the name change and the adoption of Zemax is that the name
was
suggested by a medical doctor at a conference hosted by the first
respondent during 2004.
[26]
With regard to this name change, it is pointed out on behalf of the
first respondent in the opposing affidavit that an application
for
registration of a pharmaceutical product submitted to the MCC is sent
to a number of different committees who then report back
to the MCC.
One such committee is the "Naming Committee". In an
information document issued by the MCC the statement
is made that
"mistaking one drug for another" because of similar
proprietary names can have serious consequences. From
this it is to
be understood, according to the first respondent, that one of the
tasks of the Naming Committee is to ensure that
the name chosen for
the pharmaceutical product which the applicant is seeking to register
is not such that there can be confusion
between it and the name of a
product registered at an earlier date. In the policy document,
attached to the opposing affidavit,
the MCC also states "since
many medication errors are caused by look-alike and sound-alike
medication names, it is evident
that public health considerations
should be paramount in determining whether a particular proprietary
name may be used for a medicinal
product". It is further stated
that "the proposed proprietary name should not be liable to
cause confusion in print,
handwriting or speech with the proprietary
name of another product".
It
is submitted on behalf of the first respondent that during the change
of name procedure in respect of Zemax no objection was
raised by the
Naming Committee based on the prior registration of Zetomax. In the
result, so it is submitted, it can be concluded
that neither the MCC
nor its Naming Committee considered that Zemax would be confused with
Zetomax.
[27]
In the same vein, it was argued on behalf of the first respondent
that the Registrar of Trade Marks (the second respondent)
appeared to
adopt the same stance as the MCC: it was submitted that the Registrar
conducts a search through registered marks and
pending applications
with a view to locating and citing any marks which are believed to be
in conflict with the mark which is the
subject of an application
being examined. This is in fulfillment of the Registrar's duty to
ensure that conflicting marks are not
permitted to proceed to
registration. This requirement is to be found in regulation 15(2) of
the regulations made under the Act.
In the present case, so it was
argued, the Registrar evidently decided that Zemax was not
confusingly similar to Zetomax as the
earlier registration was not
cited. No examination report was issued by the Registrar in respect
of the Zemax trade mark application.
The first communication from the
Registrar after the filing of the application was the notice of
advertisement. This is dated 19
May 2006. Moreover, this
advertisement in the patent journal also elicited no objections or
signs of opposition.
[28]
With regard to the apparent stance adopted by the MCC, it was argued,
in a replying affidavit, that the Registrar of Medicines
is not
suitably qualified to apply the law of trade marks in situations
where confusingly similar trade marks are concerned. It
does not
appear as if the argument based on the apparent attitude adopted by
the second respondent,
supra,
received
any attention in the replying affidavit.
The
essence of the defence
[29]
In dealing with the application in terms of subsections 10(12) and
10(14) of the Act in the opposing affidavit, it was submitted
on
behalf of the first respondent that the evidence shows that there is
no prospect of Zemax being either deceptive or being likely
to cause
confusion in relation to Zetomax. It is also not identical to the
trade mark of the applicants. The main thrust of the
first
respondent's argument, which I will revert to in greater detail, is
that consideration must be given to the nature of the
industry in
which the two trade marks are employed. Both products are Schedule 3
medicines that may be dispensed only upon doctors'
prescription and
by qualified pharmacists and dispensing doctors. The pharmaceutical
industry is tightly regulated and the market
itself is one in which
the decision-making participants are highly qualified professionals.
Of importance too is that the two products
have been in the market
and have traded side by side since approximately mid-2004 without a
single instance of confusion being
reported. It is argued by the
first respondent, correctly in my view, that the applicants did not
attempt to make out a case for
actual confusion. It was argued that
the applicants rely solely on speculation in circumstances where this
aspect has already been
tested by the co-existence in the market of
the two products for a considerable period of time. It was argued
that the two marks
are not so similar as to cause confusion or
deception and that, in the circumstances of the market in which the
two products are
involved, there will be no confusion or deception
caused by the presence of the two trade marks either on the Register
of Trade
Marks or in the actual market place.
Litigation
in the Western Cape High Court in case no 9800/2004
[30]
The applicants instituted proceedings, in November 2004, against the
first respondent in the then Cape of Good Hope Provincial
Division,
on the basis of trade mark infringement and passing-off.
The
case was argued in that court in February 2007. and judgment was
handed down in February 2009. The judgment was in favour of
the
applicants. The first respondent was,
inter
alia,
interdicted
by virtue of the provisions of section 34(l)(a) of the Act from
infringing the registered trade mark (Zetomax) by using
in relation
to pharmaceutical products the registered trade mark or any mark so
nearly resembling the first applicant's registered
trade mark as to
be likely to deceive or cause confusion.
[31]
Subsequent to this judgment, on 6 March 2009, the first respondent
launched an application for rescission, alternatively variation
of
the judgment, in terms of Rule 42(1 )(c) of the Uniform Rules of
Court and further alternatively for leave to appeal.
[32]
The essence of the rescission application is the following: the first
respondent caused the application for the trade mark
Zemax in class 5
under no 2004/05322 to be filed on 5 April 2004. The application was
accepted by the Registrar on 19 May 2006
and advertised, as I already
pointed out, in the Patent Journal for Opposition Purposes on 26 July
2006.
In
the almost two year period between the arguing of the application in
the Western Cape High Court ("the Cape case")
on 27
February 2007, and the handing down of the judgment on 13 February
2009. the trade mark Zemax proceeded to registration on
4 September
2008. Neither the parties nor the learned judge in the Cape case were
aware of this development. Section 34(2)(g) of
the Act provides as
follows:
"A
registered trade mark is not infringed by the use of any identical or
confusingly or deceptively similar trade mark
which
is registered
."
(Emphasis added.)
In
the result, so the first respondent contends, the judgment in the
Cape case flies in the face of the aforesaid statutory provision
and,
had it been known that Zemax had proceeded to registration, the order
would not have been made in the infringement proceedings
against the
first respondent. Consequently, so it was argued, the order was made
as a result of a mistake common to the parties
and falls to be set
aside in the spirit of Rule 42(l)(c),
supra.
[33]
In a judgment handed down in the Cape case on 11 November 2009,
the rescission application was dismissed but the application
for
leave to appeal, which was offered in the alternative, was granted to
the full court of the Western Cape High Court.
[34]
When granting leave to appeal in the Cape case, the learned judge
said the following:
"The
application for leave to appeal stands on a different footing. I
departed from the full bench decision in
Adcock-Ingram
Laboratories Ltd v SA Druggists Ltd & Another; Adcock-Ingram
Laboratories Ltd
v
Lennon
Ltd
1983
2 350 (T) and. in doing so, considerably enhanced the class of
persons likely to be deceived or confused by the use of the
applicant's competing mark. While the decision in
Adcock
was
not binding upon me and that judgment was delivered many years prior
to the enactment of section 22F of the Medicines and Related
Substances Control Act, no 101 of 1965, it nonetheless remains
persuasive authority and another court may well differ from me on
the
import of section 22F."
I
will revert to these topics. Of course, the judgment in
Adcock
will
be binding on me, if I find it to be applicable to the dispute now
under consideration.
[35]
When the matter came before me. I was informed by counsel that the
appeal in the Cape case was still pending. In addition,
I was
informed that the refusal of the rescission application is also still
the subject of an appeal.
There
was no suggestion from either side that these proceedings before me
should be held in abeyance pending the outcome of the
appeals in the
Cape case.
The
question of
onus
[36]
The following is stated by the learned authors, Webster and Page
South
African Law of Trade Marks
at
6.6.7 on 6-16:
"It
should be noted that in rectification proceedings the
onus
of
showing that a trade mark offends against section 10(12) in that it
would be likely to deceive or cause confusion is on the applicant
for
rectification. That this can have a significant effect on a decision
as to likelihood of confusion is illustrated by the decision
in the
Solavoid
case
(my note:
Solavoid
Trade Mark
[1977]
RPC1 30] in which the Privy Council said the following:
'If
the question had arisen on application for registration of the mark
it is possible that the applicants might have failed to
discharge the
onus
of
showing that confusion is not likely. But in these proceedings for
rectification, where the
onus
is
the other way, their Lordships consider that the likelihood of
confusion amongst a substantial number of purchasers has not been
established."
[37]
When considering whether the applicants have discharged the
onus
in
these motion proceedings, I should also, in my view, be alive to the
well-known principles laid down in
Plascon-Evans
Paints v Van Riebeeck Paints
[1984] ZASCA 51
;
1984
3 SA 623
(A) at 634C-H. Essentially, and subject to the well-known
qualifications, the case is to be decided on the facts as stated by
the
respondents together with the admitted facts in the applicants'
affidavits.
[38]
Also in
Plascon-Evans,
at
640G-I, when dealing with the question of
onus,
the
learned Judge of Appeal pointed out that it must be proved on a
balance of probabilities that "a substantial number of
such
persons" will be deceived or confused. The same observation was
also made in the Privy Council in
Solavoid,
supra.
[39]
Still on the question of
onus,
the
bench mark for proving that there is or is not a likelihood of
confusion, appears to be a "reasonable probability"
as
opposed to a "reasonable possibility" - see
Smiihkline
Beecham Consumer Brands (Pty) Ltd
v
Unilever
pic
[1995] ZASCA 26
;
1995
2 SA 903
(A) at 91 OB and
Cowbell
AG v ICS Holdings Ltd
2001
3 SA 941
(SCA) at 947H-J.
The
main thrust of the applicants' case made out in the founding
affidavit with reference to sections 24 and 10 of the Act
[40]
What follows is a brief summary of the submissions made on behalf of
the applicants.
[41]
The Zemax trade mark is so similar to the Zetomax trade mark that
there is every likelihood of deception or confusion arising.
[42]
There is a real possibility of deception or confusion having regard,
in particular, to the aural and visual similarities between
the two
marks. Both trade marks start with the prefix "ZE" and end
of the suffix "MAX". The only difference
between the two
trade marks is that the applicants' registered mark incorporates the
middle syllable "TO". This difference
is of no significance
and the two trade marks, when compared as wholes, are virtually
identical.
[43]
Zemax and Zetomax are the only pharmaceutical products beginning with
the prefix "ZE" and ending with the suffix
"MAX".
No other pharmaceutical manufacturer has found the need to use any
trade mark even close to the applicants' Zetomax
trade mark.
[44]
The similarity and the likelihood of deception or confusion is
exacerbated by the fact that the marks have no discernable
connotative meaning other than that afforded by the suffix "MAX".
[45]
It is submitted that the notional consumer, which includes doctors,
pharmacists and patients, will be confused between the
two marks when
presented with the offending product in true market conditions.
[46]
A further factor that should be borne in mind is the notorious bad
handwriting of doctors. Situations are likely to arise where
a doctor
may prescribe Zetomax and a pharmacist may be confused into believing
that the doctor has in fact prescribed Zemax, or
the other way
around. As both pharmaceuticals are intended to treat the same
conditions, these instances of confusion may never
be brought to the
attention of either one of the parties.
[47]
The likelihood of confusion is exacerbated by the computer programs
employed by pharmacies. Pharmacies widely employ computer
programs
which use a form of "prescriptive writing". In one such
computer program currently in use, if the prefix "ZE"
is
typed in, the screen will immediately display the names Zetomax and
Zemax. In view of the similarity of the two marks, this
is likely to
lead to deception or confusion amongst pharmacists.
[48]
It must also be borne in mind that the products, Zetomax and Zemax
are likely to be sold through the distribution network of
pharmaceutical wholesalers. Accordingly, when a pharmaceutical
wholesaler receives an order for Zetomax, there is every likelihood
that confusion between Zetomax and Zemax will arise in the mind of
the person who executes the order from the pharmacy concerned.
Clerks
who receive such orders are not as well trained as pharmacists and
medical practitioners and could quite easily be confused
between the
two products, in fulfilling pharmaceutical orders. Although such
confusion may later be cleared up, this is not necessarily
so, and
there are likely to be situations where confusion between the two
competing products is never discovered.
[49]
Attached to the founding affidavit, which is dated May 2009, one
finds four affidavits by four pharmacists. These affidavits
are dated
October 2004, and were also presented to the court in the Cape case.
(i)
Jacobus Philippus Buys is a pharmacist and he had been one for thirty
two years when he deposed to the affidavit in 2004. He
was employed
by a pharmacy in Clubview. The pharmacy stocks Zetomax. He knows that
Zetomax was initially launched under the name
Zestomax and the name
was later changed. It is a good generic product that is widely
prescribed. There are other similar products
including one called
Zestril.
He
is aware of the launch of a hypertensive product under the name
Zemax. In his view the names Zemax and Zetomax are too similar
and
this could result in confusion. This is essentially so as a result of
the notorious bad handwriting of doctors which might
result in
pharmacists and/or assistants being confused.
(ii)
Schalk Grobler had also been a pharmacist for seventeen years when he
wrote his affidavit in 2004. He was employed at a pharmacy
in
Eldoraigne, Centurion. He knows the Zetomax product. He has known it
for many years. Other products on the market with the similar
pharmacological action include Zestril and Prinivil. He knows that
Zemax is in the process of being launched. In his opinion "the
names Zetomax and Zemax are too close".
(iii)
Michael Peter Richards had been a pharmacist with fifteen years
experience in Blackheath. He knows the Zetomax product and
holds it
in high regard. Pie understands that a hypertensive medicine has been
launched under the name of Zemax. In his opinion
the names Zemax and
Zetomax are far too similar and it will cause confusion. There is no
need in the market for a similar product
with a similar name.
(iv)
Mario Zuccaroli had been a pharmacist in Fairland for some fifteen
years. He knows the Zetomax product. He regards the names
Zetomax and
Zemax as being very similar. In his opinion we do not need another
generic on the South African market with a similar
name "as this
can only lead to problems".
Brief
synopsis of the defence as presented in the opposing papers
[50]
I have already summarised the essence of the defence as it appears
in the opposing affidavit.
[51]
I have also referred to the arguments based on the apparent
attitude adopted by the Naming Committee of the MCC and the
Registrar
of Trade Marks.
[52]
I have referred to the point made on behalf of the first
respondent that the fact that there has been no instance of confusion
over a number of years, notwithstanding the presence of both products
in the market, provides evidence of the fact that the two
marks are
not likely to be confused with one another.
[53]
The deponent to the opposing affidavit has spent the past thirty
years in the pharmaceutical industry, not only in the sales
and
marketing fields, but also in the administration and management of a
pharmaceutical company. During the course of his career
he has been
directly involved in the sale and marketing of pharmaceutical
products, and this also brought him into contact with
the doctors and
pharmacists who have made up his customers over the years.
The
deponent also relies on a number of supporting affidavits from
suitably qualified medical professionals. Details of these affidavits
will be referred to hereunder.
[54]
The deponent also deals with the affidavits,
supra,
attached
to the founding affidavit and deposed to by pharmacists. The
submission is made on behalf of the first respondent that
the
expectations of confusion expressed by some of those pharmacists in
2004 have proved to be unfounded five years later where
no such
instances of confusion have become known.
[55]
The first respondent also relies on the evidence of Dr Samantha Ann
Gregory, who filed a supporting affidavit. Dr Gregory is
a qualified
patent attorney and the Pretoria correspondent of the first
respondent's attorney of record. She is also a
medical
practitioner holding the degrees MBChB and LL.B and the post
graduation qualifications of the Patent Examination Board.
Although
her current profession is that of a patent attorney, she has
maintained her registration with the Health Professionals
Council of
South Africa and continues to practice medicine, whilst remaining
abreast of new developments and practices in the medical
and
pharmaceutical fields.
She
has worked as a
locum
tenens
in
various medical practices since 1995. Many of the practices were
dispensing practices and it was required of her to dispense
medication to patients in a manner identical to the dispensing
performed by pharmacists on a request to fill a doctor's
prescription.
[56]
Dr Gregory points out that the Lisinopril product is not made,
marketed nor sold under the trade mark Zetomax by the first
applicant
but in fact it is marketed and/or sold as ADCO-Zetomax. She attaches
an extract from the well-known MDR MIMS desk reference
("MIMS")
volume 44, 2009. In this regard, she takes issue with allegations
made in the founding affidavit and certain
annexures thereto. She
says that those annexures do not represent true nor relevant evidence
of the current registration and use
by the first applicant in respect
of each proprietary name of the pharmaceutical drug known as
Lisinopril.
In
the replying affidavit, the applicants dispute this evidence of Dr
Gregory. They insist that their product is sold under the
Zetornax
trade mark as illustrated in the founding evidence. However, they
concede that where Zetomax is one of the products in
the applicants'
generic range, most of the applicants' generic products carry the
prefix ADCO, hence the fact that Zetomax is listed
in MIMS of 2009 as
ADCO-Zetomax.
The
applicants point out that prior to the 2009 MIMS the product was
listed under the name Zetomax and the relevant date in these
proceedings is in fact 2004 (when the Zemax mark was filed).
In
this regard, counsel for the first respondent argued that where the
applicants market their product as ADCO-Zetomax and not as
Zetomax.
this further reduces any prospect of confusion arising. Although this
statement of under which name the product is actually
marketed seems
to be open to some qualification, I am of the view that there is much
to be said for the submission by counsel where
one is, essentially,
concerned with an enquiry dealing with the issue of confusion.
[57]
I return to the evidence of Dr Gregory. She says that it is
common-place for the names of pharmaceutical products to incorporate
similar letters and syllables. Annexure "SG3" to her
affidavit is a document entitled "trade mark name: like
ZE-class(es):
5". According to Dr Gregory, this document,
bearing another annexure number, was also attached to the papers in
the Cape case.
It is a list
containing
(according to my count) 128 trade mark names covering the period July
1936 to August 2004. All these names start with
the prefix ZE. The
marks are all in class 5. Some of them are pending, some are
registered and others have been removed from the
register. On this
list, evidently dated September 2004, both Zemax and Zetomax are
still listed as "pending". I do not
propose referring to
all 128 names, but, at a glance, some of them appear to closely
resemble each other, as well as the marks
presently under scrutiny.
The fact that they all bear the prefix "ZE", must surely
caution any astute observer and medical
professional such as a doctor
or pharmacist, to be meticulous and to guard against confusion.
Annexure
"SG4" to Dr Gregory's affidavit is another list of
pharmaceutical products grouped in categories for the treatment
of
different conditions, but bearing names that appear to show
resemblance with each other. For example, the ACE inhibitors include
Zemax, Zeprosil and Zestril. The antiinflammatories, for example,
include IBULEVE, IBUMED and IBUNATE. This list was compiled by
Dr
Gregory herself to illustrate, in her words, that it is common
practice in South Africa for similar classes of pharmaceutical
drugs
to use names that incorporate similar prefixes, suffixes and/or
sounds.
[58]
Dr Gregory also attaches "SG5", an extract of the 2009
volume 44 MIMS which shows the brand names currently in use
by
various proprietors for the pharmaceutical drug Lisinopril. It is
apparent that extensive use has been made of the prefix "ZE"
by the various proprietors. For example one finds ADCO-Zetomax,
Zemax. Zestorectic, Zestoside and Zestril.
[59]
Dr Gregory states that medical practitioners and pharmacists are
visited regularly by medical representatives who become well-known
to
the doctors and pharmacists. Through this representation, clear
associations are made by the doctor between a pharmaceutical
company,
its particular brands and the pharmaceutical products represented
through the relevant brands. She denies that in the
circumstances
prevailing in relation to prescription pharmaceuticals, deception or
confusion is likely to arise.
[60]
Returning to "SG3",
supra,
the
list with the 128 marks, the doctor points out, correctly, that "ZE"
is a very common prefix. She admits that only
Zemax and Zetomax on
the list have the ending "MAX" but points out that there
are marks with endings similar to "MAX".
She mentions the
examples Zermex. Zelmac. Zemac and Zelmec. She points out that each
of these has two syllables and she submits
that these examples and
Zemax (also two syllables) are distinguishable from Zetomax which has
three syllables.
[61]
The doctor also attaches annexure "SG6" to her affidavit.
Like "SG3", it also contains a list of many trade
marks
covering the period November 1964 to May 2006. They all bear the
suffix "MAX". They are all in class 5. Some are
registered,
some are pending and others have been removed. By my count there are
232 of these marks with the suffix "MAX".
Against this
background, the doctor submits that no single proprietor can claim
exclusive rights to either "ZE" or "MAX".
With
this I find myself in respectful agreement. Dr Gregory also submits
that in these circumstances it is the prefix "ZETO"
which
gives the applicants' mark its distinctive character and this prefix
is not incorporated into the first respondent's mark.
In these
circumstances, Dr Gregory expresses the opinion that no pharmacist or
doctor would confuse Zemax (two syllables) with
Zetomax (three
syllables). Given the over-abundance of marks in class 5 carrying the
prefix "ZE" and the suffix "MAX"
and the
restricted market where Zemax and Zetomax are sold, namely by
dispensing pharmacists and doctors, I am of the view that
there is
much to be said for the opinion expressed by Dr Gregory.
[62]
Dr Gregory also joins issue with the allegation in the founding
affidavit,
supra,
that
the similarity and the likelihood of deception or confusion is
exacerbated by the fact that the marks have no discernable
"connotative" meaning other than that afforded by the
suffix "MAX". The witness points out, with reference to
"SG3" and "SG6", that it is very difficult to
identify a "connotative" meaning for most of the marks
listed. Byway of example, she refers to "Zemrik", "Zeramax"
and "Zepdon" as examples of marks which
have no secondary
meaning.
[63]
The witness also denies the allegation in the founding affidavit that
the patient is also a "notional consumer".
She reiterates,
by referring to the
Medicines and Related Substances Act no 101 of
1965
,
supra,
and
more particularly section
22A(5)
thereof, that Zemax and Zetomax must be prescribed by a medical
doctor and dispensed by a pharmacist or dispensing medical doctor.
Only pharmacists and doctors are involved in dispensing these
products and they are trained professionals, well versed in
distinguishing
between different products and different versions of
the same product.
[64]
Dr Gregory then turns to the provisions of section 22F of the
Medicines and Related Substances Control Act which was also referred
to,
supra,
by
the learned judge in the Cape case when granting leave to appeal. It
deals with the sale or "generic substitution"
of "generic
medicines" or "interchangeable multi-source medicine".
Section 22F(1) reads as follows:
"(1)
Subject to subsections (2), (3) and (4), a pharmacist or a person
licensed in terms of section 22C(l)(a) shall-
(a)
inform all members of the public who visit the pharmacy or any other
place where dispensing takes place, as the case may be,
with a
prescription for dispensing, of the benefits of the substitution for
a branded medicine by an interchangeable multi-source
medicine, and
shall, in the case of a substitution, take reasonable steps to inform
the person who prescribed the medicine of such
substitution; and
(b)
dispense an interchangeable multi-source medicine instead of the
medicine prescribed by a medical practitioner, dentist, practitioner,
nurse or other person registered under the Health Professions Act,
1974, unless expressly forbidden by the patient to do so."
Dr
Gregory submits that under these circumstances, given the
promulgation of section 22F and the benefit limits of medical aid
funds, South African medical practitioners and pharmacists have
become even more acutely aware of the different brand names
distinguishing
pharmaceutical products from one another so that the
possibility of confusion has become even more remote.
[65]
The doctor also joins issue with the allegation in the founding
affidavit,
supra,
that
the "notorious bad handwriting" of doctors when writing
prescriptions, will add to the possibility of confusion.
She submits,
correctly in my view, that to cause the problem envisaged, the doctor
has to write Zetomax so badly that two letters,
"t" and "o"
are obliterated entirely thus running "ZE" into "MAX".
The other way around
the doctor must somehow write in such a way as
to deceive the pharmacist into believing that there is a "t"
and an "o"
in the word. All this is unconvincing and
speculative.
[66]
The witness also disputes the argument,
supra,
in
the founding affidavit that the likelihood of confusion is
exacerbated by the computer programs employed by pharmacies. She puts
it as follows:
"When
a pharmacist enters ZE a long list of products appears on the screen.
If he refines the search by entering T, Zemax will
disappear from the
list. If he enters 'M' Zetomax will disappear from the list.
Confusion would appear to be impossible in these
circumstances."
The
witness also reiterates the fact that the product of the applicants
appears to be marketed as ADCO-Zetomax and not as Zetomax,
as
referred to earlier. The extract from MIMS, annexure "SG7",
shows Zetomax under the "A" section and Zemax
listed under
the "Z" section.
[67]
Generally, I find Dr Gregory's evidence impressive, if not
compelling.
[68]
I now turn to some of the supporting affidavits of other
professionals attached to the opposing affidavit of the first
respondent.
(i)
Gerhardus Deon Lewis is the managing director of X/procure Software
South Africa (Pty) Ltd. This is an electronic pharmaceutical
procurement system used by pharmacists to order pharmaceutical
products from pharmaceutical manufacturers and other wholesalers.
Lewis
says it is impossible for a pharmacist (or any other user of his
X/procure Pharmacy Ordering System) to mistakenly order Zemax
instead
of Zetomax utilising this system as the method and mechanism of
ordering the products. This is so by reason of, firstly,
the way in
which the product search functionality has been designed and,
secondly, the fact that the actual description of Zetomax
on the
system is "ADCO-Zetomax" with the result that the user of
the system has to first type in the phrase "ADCO-Z"
before
"ADCO-Zetomax" will appear on the search screen to be
selected.
(ii)
H P van der Westhuizen is a pharmacist who qualified in 1987. He has
been working at Durbell since 1990. He stocks Zemax and
Zetomax. The
computer product ordering system he uses is Xprocure. To order Zemax
he would enter Zemax lOmg or 20mg and to order
Zetomax he would enter
Zetomax 1 Omg or 20mg. He has never experienced any confusion between
these two products because of their
trade marks. He would not expect
in future to encounter confusion due to the fact that Zemax and
Zetomax are both used for Lisinopril.
(iii)
lan Craig Fortuin is also a pharmacist. He was qualified in 1991.
Since 1992 he has been working for three different pharmacies
listed
in his affidavit. He stocks both the products. The computer product
ordering system he uses is known as "orderwise".
To order
the two products he has to enter the two different names. He has
never experienced any confusion and does not expect to
do so in
future. He states, rather coyly, that "pharmacists are quite
intelligent people".
(iv)
Johannes Cornelius Potgieter is a pharmacist who qualified in 1987.
He presently runs his own pharmacy which he started in
November 1995,
after first working at another pharmacy. He stocks both products. He
uses the order-wise computerised product ordering
system and has
never experienced confusion between the two products Zemax and
Zetomax. He does not expect to do so in future.
New
matter raised in the replying affidavit, and further exchanges
flowing therefrom
[69]
I have already dealt with some of the issues raised in the
replying affidavit which is a rather condensed document running
into
some five pages.
[70]
In the replying affidavit new matter was raised in the following
terms:
"The
buying market includes pharmaceutical wholesalers and hospitals,
including State hospitals. I submit that there is no
guarantee that a
person(s) at the institutions responsible for buying products are
either practising pharmacists or doctors and
in fact in most
instances they are not. I point out that in many instances, the
person at a pharmacy who places the order will
be an assistant or
clerk, ie a person that is not a qualified pharmacist."
The
deponent submits that these persons might be confused between the
respective products in situations where they place orders
based on
the written, or for that matter verbal, instructions of the
pharmacist.
[71]
On behalf of the first respondent. Dr Gregory filed a further
affidavit dealing with the new matter. She denies that confusion
will
arise.
[72]
With regard to the situation of pharmaceutical wholesalers and
hospitals, current legislation requires a qualified pharmacist
to
oversee and control the buying and selling of pharmaceutical
products.
Section 22A
of the
Medicines and Related Substances Act is
referred to.
[73]
The orders placed by pharmaceutical wholesalers, private hospital
groups and the Tender Boards in the Department of Health,
in the case
of State hospitals, are typically large orders and are negotiated
with the specific pharmaceutical companies directly.
In
these circumstances there can be no suggestion, according to Dr
Gregory, that a humble clerk will, off his own bat, make a decision
as to what pharmaceutical to order. Bulk orders arise out of senior
level negotiations as to price and delivery. Bulk sales and
deliveries are negotiated with the particular pharmaceutical company
concerned. Errors of the sort suggested on behalf of the applicants
do not occur in this environment.
Moreover,
the witness points out that the result of an error in this arena
would be significant, both in terms of the money payments
required
(to the wrong producer)
and
the consequences of an incorrect delivery. Should such an error occur
it would be established very quickly. The fact that the
applicants
cannot confirm a single such incident militates against there being
any merit in this speculative argument.
[74]
The procedures in private hospitals and their pharmacies are followed
in much the same way as those in private pharmacies,
which have been
dealt with in the answering papers.
[75]
Where the ordering of pharmaceuticals for private and State hospitals
is executed on a tender basis, the dispensing is done
by a qualified
pharmacist who is only able to dispense the pharmaceutical from the
company that has been awarded the tender. According
to the witness,
the speculative situation proposed on behalf of the applicants where
an assistant or clerk places an order is a
fanciful averment without
substance.
[76]
The witness also points out that
section 22C
of the
Medicines and
Related Substances Act stipulates
that wholesalers and distributors
are required to be in possession of a permit to carry out their
functions and that the permit
would be issued only upon the
satisfaction of certain conditions. One of these is that prior to
commencing business as such the
wholesaler must appoint and designate
a pharmacist who will control the manufacturing or distribution of
medicines, schedule substances
or medical devices.
[77]
The MCC also issued a "good practice" document aimed at
prescribing strict rules for the handling and distribution
of
pharmaceutical products.
[78]
Dr Gregory submits that the entire structure is designed with the aim
of eliminating errors. In her experience it is effective
at doing so.
[79]
On an analysis of all this evidence, it seems to me that the
assertions raised as part of the new matter in the replying affidavit
are to a large extent based on speculation. For purposes of these
proceedings, the assertions in the replying affidavit, in my
view, do
not pass muster, particularly given the
onus
requirements
to which I have referred earlier.
The
"all the goods" argument
[80]
Early in his address. Mr Michau for the applicants pointed out that,
for purposes of these expungement proceedings, a comparison
should be
drawn between all the goods in respect of which the marks are
registered in order to test for the likelihood of deception
or
confusion.
[81]
Mr Michau relied on the provisions of section 10(14) of the Act and
referred me to the following passages in
Webster
and Page, supra,
at
6.6.5 on p6-13:
"It
is to be noted that section 10(14) is limited to deception or
confusion flowing from resemblance to registered trade marks
and.
furthermore, that
the
comparison is made on the supposition that the marks in question will
be used as trade marks in relation to the goods or services
in
respect of which they are respectively sought to be registered and
registered."
The
learned authors also state:
"On
the other hand, the enquiry under section 10(14) proceeds on the
assumption that the prior mark has been normally and fairly
used in
relation to the goods or services for which it is registered, whereas
that under section 10(12) is confined to the use
which has actually
been made of the prior mark."
[82]
On this argument, if I understand it correctly, the comparison is not
limited to that between the hypertensive pharmaceutical
products
Zetomax and Zemax, but I must also consider whether there will be
confusion amongst a substantial number of notional consumers
of
"pharmaceutical veterinary and sanitary preparations; dietetic
substances adapted for medical use, food for babies; plasters,
materials for dressings; disinfectants."
[83]
Not a single reference to this argument is to be found in the papers
or. for that matter, in the heads of argument prepared
by counsel.
The case presented in the founding and the replying affidavits is
confined to the comparison between the hypertensive
pharmaceutical
products. This is the case which the first respondent was required to
meet. It is trite that, in motion proceedings,
the case must be fully
pleaded in the founding papers, and, in exceptional cases, some
latitude will be allowed for purposes of
supplementing the case in
the replying affidavit.
In
this case, no reference whatsoever was made to, for example,
"veterinary and sanitary preparations, food for babies,
plasters,
materials for dressings and disinfectants" There is
not the slightest suggestion that the applicants are manufacturing
and/or
distributing such products or have the slightest inclination
to do so in the future.
[84]
I am alive to the fact that the learned authors,
supra,
appear
to suggest that the enquiry under section 10(14) proceeds on the
assumption that the prior mark "has been normally and
fairly
used in relation to the goods or services for which it is
registered", but, under those circumstances, this argument
should have been pleaded so that the first respondent would have been
in a position to meet the case and deal with the extended
enquiry. I
fail to see how I can conduct such an enquiry without being able to
consider a shred of evidence relating thereto. This
much was also
argued, correctly in my view, by counsel for the first respondent.
[85]
In support of his argument, counsel for the applicants relied on the
case of
Organon
Laboratories Ltd v Roche Products (Pty) Ltd
1976
1 SA 195
(TPD). At 200C-F, the learned judge, significantly
recognising the argument that a different approach is called for
where the goods
are obtainable only on prescription by a doctor, said
the following:
"It
seems to me, however, that in the cases quoted the Courts were mainly
concerned with drawing a distinction between products
freely
available to the public and products which could only be dispensed on
a doctor's prescription. In the latter case, the possibility
of
errors is substantially lessened by various safeguarding
circumstances, such as the fact that the product can be sold only on
the written authorisation of a doctor, and the fact that the nature
of the product requires the exercise of particular care on
the part
of both the doctor and the dispensing pharmacist (but even in this
type of case, assuming that a differentiation will
be made between
the various products as such, it occurs to me that the possibility of
contusion as to the origin of similar products
having common features
in their marks might yet require scrutiny).
However,
the same safeguards do not exist in a case such as the present,
where, although the products in question are not sold to
the public,
they mav nevertheless be obtained frcclv bv interested members of the
trade without the necessity of a doctor's prescription.
"
(Emphasis added.)
In
Organon,
it
was common cause that the offending product, a "pregnancy
diagnostic test kit" was used by the respondents under the
trade
mark "Pregnex". It was also common cause, as the learned
judge pointed out, that this product was obtainable without
the
necessity of a doctor's prescription. This situation, in my view, is
distinguishable from the present case where the other
goods, barring
the pharmaceutical hypertensive product, are not mentioned in the
papers and have probably not even been manufactured,
let alone used
in the trade.
[86]
In the result. I see no basis for upholding this particular
argument.
Conclusionary
remarks
[87]
In
Adcock-Ingram
Laboratories Ltd v SA Druggists Ltd & Another, Adcock-Ingram
Laboratories Ltd
v
Lennon
Ltd
1983
2 SA 350
(TPD) at 362E-363H the following is said:
"C8
... There is, so it is contended, a likelihood that either the
pharmacist or the doctor would be misled or confused and
supply the
patient with 'Stilpane' when he really wanted 'Stopayne'.
C9
There is no evidence that such confusion can arise. It must be
stressed that a pharmacist may not dispense these tablets without
a
prescription. Therefore, our enquiry as to whether confusion could
arise will have to start with the medical practitioner. We
must
assume that these practitioners will perform their duties in
accordance with the precepts of their profession in a manner
in which
a reasonably competent practitioner would do.
We
must accept that such a practitioner prescribes a particular medicine
for his patient not merely, if at all. because of its origin,
but
because of its contents and its pharmacological action. The
practitioner decides what in his judgment his patient requires
for
the particular condition he has found
to exist, at the same time having regard to the full activity of the
prescribed preparation. The practitioner is thus not concerned
so
much with the origin of a particular medication as with its
composition. The practitioner will satisfy himself that what he
prescribes is the substance or mixture of substances which he deems
efficacious in the circumstances. In case of doubt he will
no doubt
study the pharmacological data supplied by the supplier. From this it
follows that the practitioner's prescription is
a definitive,
deliberate act: he is aware of exactly what he is prescribing and, in
view of the harmful effects which continued
use of these particular
tablets can have ... any doctor who is requested to give a repeat
prescription will consider afresh the
implication of his prescription
and will, it is to be expected, consult his patient's record ... I am
satisfied that no practitioner
(unless he is careless or incompetent)
will prescribe a medication such as the one with which we are
concerned by merely relying
on a vague recollection of the product.
CIO
I now consider the pharmacist. I have repeatedly stressed that the
pharmacist cannot sell these tablets without being in possession
of a
prescription. He will know of the dangers involved in the use of
these tablets and if there is any doubt as to what the prescription
is the pharmacist will refer to his script or check with the doctor
... CI 1 Turning to the 'patient market', I am not convinced
that the
appellant has shown that it has acquired a reputation in this market.
But, even if it has, it cannot avail the appellant
at all ... The
patient may well know that
the product he has been using is 'Stopayne', he may know that it
emanates from some particular source - he may even know that it
is a
product from the appellant's laboratories, but he can make no use of
such information. The patient cannot go to his chemist
and insist on
being supplied with 'Stopayne'. He must first go to the doctor - and
even here he cannot insist upon being prescribed
'Stopayne'. It is
the doctor's responsibility as to what the patient should have, and
his alone. It follows that the only sphere
in which confusion could
arise is on the prescription by the medical practitioner, and that
probability
1
have
already eliminated."
[88]
The learned judge went on, at 363G-H, to eliminate confusion also in
the case of anticipated sales to "institutions"
where the
sales flow from tenders that had been allocated. The learned judge
also eliminated the possibility of confusion and indicated
that in
the institution itself, the medication is dispensed by pharmacists on
doctors' prescriptions, and the situation as regards
patients in such
an institution is no different from that of other patients. On this
subject, Dr Gregory.
supra,
offered
similar evidence.
[89]
I am of the view that the present case calls for the same approach as
that adopted by the full bench in
Adcock-Ingram
Laboratories Ltd.
[90]
With particular reference to my earlier remarks about the
onus,
1
have come to the conclusion that the applicants have failed to
discharge the
onus.
Given
the
particular
circumstances of the case and the market in which these products are
prescribed and sold.
I
am
of the opinion that the likelihood of confusion amongst a substantial
number of purchasers has not been established by the applicants.
In
the result, the application cannot succeed.
The
order
[91]
I make the following order:
1.
The application is dismissed.
2.
The applicants, jointly and severally, are ordered to pay the costs.
W
R C PRINSLOO
JUDGE
OF THE NORTH GAUTENG HIGH COURT
30763-2009
HEARD
ON: 6 AUGUST 2010
FOR
THE APPELLANT: R MICHAU
INSTRUCTED
BY: SPOOR & FISHER
FOR
THE RESPONDENT: M C SEALE
INSTRUCTED
BY: BRIAN BACON & ASSOCIATES INC