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[2012] ZASCA 39
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Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another (265/2011) [2012] ZASCA 39; 2012 (4) SA 238 (SCA); [2012] 3 All SA 1 (SCA); 2012 BIP 113 (SCA) (29 March 2012)
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case
No: 265/2011
In
the matter between:
ADCOCK INGRAM INTELLECTUAL PROPERTY
(PTY) LTD
….......................................................................................................
First
Appellant
ADCOCK HEALTHCARE (PTY) LTD
.
..........................................................
Second
Appellant
and
CIPLA MEDPRO (PTY) LTD
…......................................................................
First
Respondent
THE REGISTRAR OF TRADE MARKS
…................................................
Second
Respondent
Neutral citation:
Adcock
Ingram v Cipla Medpro
(265/2011)
[2012] ZASCA 39
(29 March
2012)
Coram:
Farlam, Nugent, Malan
and Wallis JJA and Petse AJA
Heard:
8 March 2012
Delivered: 29 March 2012
Summary: Trade mark – removal
of – s 10(14) of
Trade Marks Act 194 of 1993
– marks
‘likely to deceive or cause confusion’ –
prescription medication – whether patient part of
enquiry as to
notional consumer – generic substitute –
s 22F
of
Medicines and Related Substances Act 101 of 1965
.
_________________________________________________________________________
ORDER
On appeal from:
the North
Gauteng High Court, Pretoria (Prinsloo J sitting as court of first
instance):
1 The appeal is upheld
with costs.
2 The order of the court
below is set aside and replaced with the following order:
‘
(a)
The second respondent is directed to remove trade mark 2004/05322
ZEMAX in class 5 from the register of trade marks in respect
of the
goods for which it is registered;
(b) The first respondent
is ordered to pay the costs of the application.’
_________________________________________________________________________
JUDGMENT
MALAN JA (Farlam, Nugent and Wallis
JJA and Petse AJA concurring):
[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 trade
marks the trade mark ZEMAX with registration number 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 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 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 trade mark ZETOMAX with registration number
1998/14391, dated 13 August 1998 and
subsequently 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 and distributes
pharmaceutical products. I shall refer
to both appellants as Adcock.
Adcock contends that the trade mark 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 of moderate hypertension and certain cardiac conditions.
ZETOMAX is sold in dosages of 5mg, 10mg and 20mg in
three blister
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.
[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 5mg and
10mg 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
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 packed in three strips per
pack in dosages of 5mg and 10mg.
[7] Infringement
proceedings were instituted against Cipla in the Cape 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 the
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 removing ‘an
entry wrongly made in or wrongly
remaining on the register’, in
this case for the removal of the trade mark ZEMAX from the register
of trade marks. 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 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 trade mark
consents to the registration of such mark.’
[9]
The court below correctly accepted that the onus rested on Adcock to
establish a ‘reasonable probability’ of confusion
amongst
a substantial number of purchasers.
2
It
came to the conclusion that Adcock failed to discharge this burden.
It relied primarily on the 1983 judgment in
Adcock-Ingram
Laboratories Ltd v Lennon Ltd
.
3
[10] That case concerned
the alleged passing off of a medicinal tablet (Stilpane) as if it was
another (Stopayne). The question
whether ‘the alleged
similarity of the trade marks, the colour of the tablets and their
formulation’ was likely to
cause confusion was considered by
the court with reference to the specialised market in which
prescription drugs are sold. It said
that the provision of a
prescription drug by a medical practitioner is a ‘definitive,
deliberate act’ with full knowledge
of the contents of the
medicine and its pharmacological action. The medical practitioner
will not rely on a vague recollection
of the medication. Nor will the
pharmacist be confused since he may sell only on prescription. When
he is in doubt he would refer
to the script or back to the medical
practitioner. Sales to institutions are usually made on tender, with
detailed specifications
of the product tendered for, leaving little
room for confusion. Moreover, in these institutions, such as
hospitals, medication
is dispensed on prescription of medical
practitioners by pharmacists.
[11] Furthermore, as far
as the patient was concerned, it was said that although he or she may
well know the name of the product
he or she was using –
‘
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
[the product], he must
first go to the doctor – and even here he cannot insist upon
being prescribed [the product]. 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 I have
eliminated.’
4
[12] The court below also
disposed of the argument advanced by Adcock that for the purposes of
s 10(14) of the Act a comparison
should be made of all the goods in
respect of which the competing trade marks were registered. The
enquiry, it was argued, was
not limited to a comparison between ZEMAX
and ZETOMAX as prescription medicines, but involved a consideration
whether there could
be confusion among a substantial number of
notional consumers of ‘pharmaceutical, veterinary and sanitary
preparations; dietetic
substances adapted for medicinal use, food for
babies; plasters, materials for dressings; disinfectants’, in
respect of which
ZETOMAX was registered. The case Cipla had to meet,
the court below found, was confined to a comparison between
hypertensive pharmaceutical
products. Since there was no suggestion
in the evidence that Cipla was manufacturing or distributing any of
the other products
within the ZETOMAX registration under the ZEMAX
trade mark or that it had ‘the slightest inclination to do so
in the future’
the application was rejected on this basis as
well.
[13] Although Adcock
relied on the wider enquiry in its notice of application for leave to
appeal it indicated in its heads of argument
in this court that it
was not proceeding on this ground. However, the approach to be taken
in determining the question whether
a trade mark is precluded from
registration by s 10(12) or s 10(14) is a matter of law.
[14]
Section 10(14) prohibits the registration of 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 trade mark consents to
the registration of such mark’.
[15] The trade marks
ZEMAX and ZETOMAX were both registered in class 5 in respect of
partly the same goods. The registration of
neither was limited to
pharmaceutical preparations, least of all prescription medicines.
Section 10(14) prohibits the registration
of a mark that is so
similar to a registered trade mark belonging to a different
proprietor that the use thereof in relation to
goods or services in
respect of which it is or 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. The class in respect
of which ZEMAX is registered is not
limited to ‘pharmaceutical preparations’ but includes a
host of other goods. In
particular, a pharmaceutical preparation
under that name could be made available to the public otherwise than
on the basis of a
prescription by a medical practitioner. It was
stated in
Bristol
Laboratories Inc v Ciba Ltd
:
5
‘
The
appellant has applied for the registration of his mark in respect of
all goods in Class 3. It could therefore place on the market
a
preparation which might also be readily procurable without
prescription. It may be that the goods in respect of which it intends
to use the mark . . . are ethical preparations which can only be
dispensed on a doctor’s prescription, but this factor is
in no
way conclusive. The question is not what the appellant says it
intends doing, but what it will be permitted to do if its
application
is granted in respect of all goods in Class 3. In my opinion it is
correct to say, as Romer, J., held in
Jellinek’s
Application
,
63 R.P.C. 59
at p. 78, that
“
The
onus
must be
discharged by the applicant in respect of all goods coming within the
specification applied for, and not only in respect
of those goods on
which he is proposing to use (the mark) immediately, nor is the
onus
discharged
by proof only that any particular method of user will not give rise
to confusion; the test is:
What
can the applicant do?
”’
(My
emphasis).
The
reason for the rule embodied in s 10(14) is, as was stated by Lord
Macnaghten in
Eno
v Dunn
,
6
the
protection of the public: ‘The question is one between Mr Dunn
and the public, not between Mr Eno and Mr Dunn. It is immaterial
whether the professed registration is or is not likely to injure Mr
Eno in his trade.’
[16] The court below was
of the view that Adcock had not made out a case for the purposes of s
10(14) calling for a comparison of
all the goods in the specification
of ZEMAX. I do not agree. It is difficult to understand what else
should have been pleaded or
what other evidence could have been
presented to address this issue. So far as both trade marks are
registered in respect of goods
that are obtainable without
prescription, the market is the ordinary consumer. I have no doubt
that there is likely to be confusion
when the marks are applied to
such goods. This was never seriously challenged by Cipla. Its entire
argument was based on a restricted
use confined to prescription
medication.
[17]
However, under s 24(1) of the Act the court or the Registrar
rectifying entries in the register of trade marks, ‘may
make
such order for making, removing or varying the entry as it or he may
deem fit’. A court or the Registrar exercising
a discretion
under s 24(1) may, thus, excise some of the goods in respect of which
the trade mark under attack was registered.
7
Counsel
for Cipla submitted that in those circumstances we should expunge the
trade mark for all but ‘pharmaceutical preparations
containing
Lisinopril’. I will assume for present purposes that this is a
proper case in which to limit the registration
to only those goods
if, indeed, there is no likelihood of confusion when applied to those
goods. On the assumption that this is
a proper case for the
limitation of the registration of ZEMAX to the goods referred to I
will consider whether the two marks are
so similar as to be likely to
deceive or cause confusion.
[18] Cipla’s case
in that regard is that there is no probability of confusion or
deception arising between the marks when
they are compared in the
context of the specialized pharmaceutical market in which the two
marks would then be employed.
[19] Cipla relied on the
approval of the name ZEMAX by the ‘naming committee’ of
the Medicines Control Council. Section
9 of a document issued by the
Council for general information deals with its ‘proprietary
name policy’. In considering
the safety of a product the
Council is obliged to consider whether a proposed name ‘could
potentially pose public health
and safety concerns or if it may be
misleading’. Public health considerations are said to be
paramount ‘in determining
whether a particular proprietary name
may be used for a medicinal product’ (section 9). In section
9.1.6 it is provided that
the proposed proprietary name ‘should
not be liable to cause confusion in print, handwriting or speech with
the proprietary
name of another product.’ Where the name
proposed is identical to or too similar to a name already approved
the applicant
must be advised. Any dispute, however, must be resolved
between the parties and not by the Council (section 9.1.8). Cipla
argued
that, because no objection was made to registration of the
name ZEMAX by the Council, it could be concluded that neither the
‘naming
committee’ nor the Council considered that ZEMAX
would be confused with ZETOMAX. This may well have been the view of
the
Council but its view is irrelevant and inadmissible for the
purpose for which it was tendered. It is the function of the
Registrar
or the court to consider whether the trade marks ZEMAX and
ZETOMAX are ‘so similar’ that their use ‘would be
likely to deceive or cause confusion’. Section 9.3.1 of the
document, in any event, recognises that ‘[t]he issue of
whether
a particular proprietary name may constitute an infringement of
another entity’s intellectual property rights cannot
be one of
the Medicines Control Council’s concerns and is, therefore, not
taken into account during consideration of the
acceptability of a
proposed proprietary name’.
[20]
Although some weight may be given to the fact that the Registrar of
Trade Marks raised no objection to the registration of
ZEMAX, a court
is at large to exercise its own discretion concerning the
registration of trade marks.
8
[21]
Both ZEMAX and ZETOMAX are products that fall under Schedule 3 of the
Medicines and Related Substances Act and
may be sold only by
pharmacists, a pharmacist’s intern or assistant acting under
the personal supervision of the pharmacist,
manufacturers and
wholesale dealers, medical practitioners and dentists, veterinarians,
practitioners and nurses or persons registered
under the Health
Professions Act 56 of 1974 and then only under strict conditions.
9
Generally,
only a medical practitioner may prescribe a Schedule 3 substance and
a pharmacist may dispense it only on prescription.
[22]
In the replying affidavit Adcock sought to extend the market to
pharmaceutical wholesalers, hospitals and state hospitals alleging
that there was no guarantee that persons at these institutions
responsible for buying products were either practising pharmacists
or
doctors. With regard to pharmaceutical wholesalers s 22A of
Medicines
and Related Substances Act requires
a qualified pharmacist to oversee
and control the buying and selling of pharmaceutical drugs. Large
orders from, for example, private
hospital groups and tender boards
from the Department of Health, are negotiated with the pharmaceutical
companies directly.
Section 22C
, in addition, requires wholesalers
and distributors to be in possession of permits to carry out their
functions, and the permits
are to be issued only on such conditions
‘as to the application of such acceptable quality assurance
principles and good
manufacturing and distribution practices as the
council may determine’
(s 22C(1)(
b
)).
Regulation 19 of the General Regulations under Act 101 of 1965
imposes further limits by requiring the distributor or wholesaler
to
‘appoint and designate as such a pharmacist who will control
the manufacturing or distribution of medicines, Scheduled
substances
or medical devices’. The Medicines Control Council has also
distributed a document ‘Good Wholesalers Practice
for
Wholesalers, Distributors and Bonded Warehouses’ dated 6 June
2003 requiring key personnel to have the education, training
and
experience to discharge their duties, inter alia, the ‘handling
and storage of medicine … to prevent confusion
of products’.
These control measures, no doubt, lessen the likelihood of confusion
or deception.
[23]
The conditions regulating the sale and prescription of prescribed
medicines significantly reduce the likelihood of confusion
between
marks associated with these pharmaceuticals.
10
Two
approaches seem possible. These emerge from the following passage in
a European case –
‘
In some
Member States the view is taken that a likelihood of confusion should
be accepted more readily in the case of medicines
on account of the
serious consequences that can ensue if the patient takes the wrong
product. In other countries the view is taken
that pharmaceutical
trade marks will not be confused so easily because the consumer has
the assistance of qualified professionals
and is particularly
attentive to differences between marks for pharmaceutical products
because of the importance of taking the
right drug.’
11
The
court below followed the second approach. However, in
Organon
Laboratories Ltd v Roche Products (Pty) Ltd
12
Botha
J said:
‘
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 the 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
confusion as to the
origin
of similar
products having common features in their marks might yet require
scrutiny).’
[24]
The remark in
Adcock-Ingram
Laboratories Ltd v Lennon Ltd
,
referred to above, that it is the ‘doctor’s
responsibility as to what the patient should have, and his alone’,
has a sense of unreality in modern circumstances, where patients
play, and are expected to play, an active role in relation to
their
own health. It reduces the patient to a passive bystander in the
process of providing him or her with treatment and medication.
Such
an approach is hardly reconcilable with
s 8
of the
National Health
Act 61 of 2003
which gives the patient the right to participate ‘in
any decision affecting his or her personal health and treatment’.
Patients often discuss their medication among themselves and with
their doctors. They exchange information on which product they
find
most efficacious. This information may then be discussed with their
doctors or pharmacists when the issue of substituting
a medicine for
a generic or the more expensive innovator product is raised. Often
they provide the names of their medicines, particularly
chronic
medication, to the medical practitioners treating them. They discuss
the advantages and disadvantages with them. They consider
different
options. In a case of emergency a Schedule 3 medicine may be sold,
for use during a period not exceeding 30 days in accordance
with the
original prescription, if the pharmacist is ‘satisfied that an
authorised prescriber initiated the therapy’
13
–
clearly
on information provided by the patient. Whatever the position may
have been in 1983, the patient is no longer a passive
bystander when
treated and receiving prescribed medication.
[25] The provisions of
s
22F
of the
Medicines and Related Substances Act widen
the scope of
the enquiry to be made.
Section 22F
deals with generic substitution
or interchangeable multi-source medicines, and, it was submitted,
envisages a situation where the
patient forms part of the
decision-making process thereby increasing the likelihood of
deception or confusion. It provides as follows:
‘
Generic
substitution.—
(1) Subject to subsections
(2), (3) and (4), a pharmacist or a person licensed in terms of
section 22C
(1) (
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;
(
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.
(2) If a pharmacist is
forbidden as contemplated in subsection (1) (
b
), that
fact shall be noted by the pharmacist on the prescription.
(3) When an interchangeable
multi-source medicine is dispensed by a pharmacist he or she shall
note the brand name or
where no such brand name exists, the name of
the manufacturer of that interchangeable multi-source medicine in the
prescription
book.
(4) A pharmacist shall not
sell an interchangeable multi-source medicine —
(
a
) if the person prescribing
the medicine has written in his or her own hand on the prescription
the words “no substitution”
next to the item prescribed;
(
b
) if the retail price of the
interchangeable multi-source medicine is higher than that of the
prescribed medicine; or
(
c
) where the product has been
declared not substitutable by the council.’
[26]
An ‘
interchangeable multi-source
medicine’ is defined as ‘medicines that contain the same
active substances which are identical
in strength or concentration,
dosage form and route of administration and meet the same or
comparable standards, which comply with
the requirements for
therapeutic equivalence as prescribed’. Section 22F requires a
pharmacist to inform members of the public
visiting the pharmacy with
a prescription for a ‘branded medicine’ (which, it seems
to me, can be both the innovator
product or a generic substitute) of
the benefits of a generic substitute for the ‘branded’
product. He must then substitute
the generic for the prescribed
medicine unless he is forbidden to do so by the patient. The
pharmacist, however, may not do so
if the person prescribing the
medicine has written on the prescription the words ‘no
substitute’.
[27]
It was submitted that the effect of s 22F was to extend the notional
consumer to people beyond the prescribing doctor and pharmacist
to
include also the patient or ultimate consumer. Support for this view
is found in the Canadian judgment in
Ciba-Geigy
Canada Ltd v Apotex Inc; Ciba-Geigy Canada Ltd v Novopharm Limited
,
14
a
passing-off matter where similar legislation was considered. The
question that arose in that case was whether the customers of
pharmaceutical laboratories consisted only of physicians, dentists
and pharmacists ‘or are the patients to whom the drugs
are
dispensed also included?’ The court there dealt with the
provisions of the Prescription Drug Cost Regulation Act, 1986
dealing
with an ‘interchangeable product’ which is ‘a drug
or combination of drugs identified by a specific product
name or
manufacturer and designated as interchangeable with one or more of
such products’. The Act gives both the pharmacist
and the
patient the choice to dispense or obtain the interchangeable drug, as
the case may be, and requires of the dispenser to
inform the patient
accordingly (see s 4(2) and (3). The prescribing doctor may also
indicate that no substitutions may be made
(in which event the
patient would have no choice (other than to refuse the prescribed
drug) to select a substitute) (s 4(6)). The
court (per Gonthier J)
concluded:
15
‘
The
foundations of this right to choose and the reasons for patients’
choices do not have to be discussed at length here.
Whether the
choice is great or small, easily exercised or not, does not change
anything in the case at bar. All that is significant,
and beyond
question, so far as the reasoning is concerned is that the patient
has a choice.
In my opinion, therefore, excluding
patients from the customers covered by the passing-off action on the
pretext that they have
no choice as to the product brand is quite
wrong. The physician’s opinion as to the brand of drug to be
taken may of course
influence the patient and most prescriptions do
in fact indicate the product brand. That information may sometimes
come from the
patient. It should not be forgotten that in cases like
the one before the Court, the medical treatment generally extends
over a
long period. Hypertension is often treated for several years,
if not a lifetime. Patients taking a drug for some time can become
accustomed to it and insist on a particular brand. Generally when a
person is satisfied with a product, he tends to remain faithful
to
it. This is especially true in the health field where –
understandably – patients are not very willing to experiment
and perhaps still less so when they are suffering from conditions
such as hypertension. There are thus grounds which I would
characterize
as psychological for insisting on a particular brand of
drug. There are certainly also physiological reasons. It is entirely
conceivable
that excipients, the non-medicinal part of the drug
surrounding the active ingredient, may not have the same
characteristics or
not produce the same ingestive, digestive and
other effects in the case of all manufacturers. The shape of the
tablet may also
play a part in the patient’s preferences: it
may be another reason why the patient insists on a particular brand
and asks
his physician to put it on the prescription.
Moreover, quality control may not be
identical from one laboratory to another or the quality itself may
not be perceived as such.’
Elsewhere
the court said:
16
‘
Not
including [the patient] in the clientele covered by the passing-off
action in my opinion divests him of part of his rights as
an
individual. He is deprived of the means of protecting himself as an
informed person.’
[28] The Canadian
legislation gives both the pharmacist and the patient a choice in
relation to dispensing or obtaining a generic
drug. Section 22F, on
the other hand, allows the patient on being informed of the
availability of a generic medicine as a substitute
for the branded
medicine to choose between the two. The patient is in fact required
to stipulate whether he or she would prefer
a generic over a more
expensive other generic or the innovator drug. The court below
accepted the evidence of Dr S A Gregory, both
a medical practitioner
and a qualified patent attorney, who also happens to have been
Cipla’s attorney’s Pretoria correspondent,
that s 22F has
made medical practitioners and pharmacists even more acutely aware of
the different brand names of pharmaceutical
products so that the
likelihood of confusion had become even more remote. This approach
disregards the importance of the choice
given to the patient by s
22F. The patient is not a passive bystander but plays an active role
in the dispensing of his or her
medication.
[29]
Despite the difference in wording between s 17(1) of the repealed
Trade Marks Act 62 of 1963 and s 10(14) of the present Act,
the words
‘likely to deceive or confuse’ are retained in the latter
section and should be given the same meaning. In
Cowbell
AG v ICS Holdings Ltd
17
Harms
JA remarked:
‘
Section
17(1) creates an absolute bar to registration provided the
jurisdictional fact is present, namely that the use of both marks
in
relation to the goods or services in respect of which they are sought
to be registered, and registered, would be likely to deceive
or cause
confusion. The decision involves a value judgment and
“
[t]he
ultimate test is, after all, as I have already indicated, whether on
a comparison of the two marks it can properly be said
that there is a
reasonable likelihood of confusion if both are to be used together in
a normal and fair manner, in the ordinary
course of business”.
(
SmithKline
Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South
Africa (Pty) Ltd) v Unilever plc
[1995] ZASCA 26
;
[1995
(2) SA 903
(A)] at 912H). “Likelihood” refers to a
reasonable probability (
ibid
at 910B), although
the adjective “reasonable” is perhaps surplusage. In
considering whether the use of the respondent’s
mark would be
likely to deceive or cause confusion, regard must be had to the
essential function of a trade mark, namely to indicate
the origin of
the goods in connection with which it is used . . . . Registered
trade marks do not create monopolies in relation
to concepts or
ideas.’
Harms
JA approved of the statement in
Sabel
BV v Puma AG, Rudolf Dassler Sport
18
where
it was said that the likelihood of confusion must ‘be
appreciated globally’, and that the –
‘
global
appreciation of the visual, aural or conceptual similarity of the
marks in question, must be based on the overall impression
given by
the marks, bearing in mind, in particular, their distinctive and
dominant components.’
[30] The question whether
ZEMAX is ‘likely to deceive or cause confusion’ as s
10(14) requires must be answered with
reference, not to the
specialised market of prescription medication only, but with
reference to the patient as well. The patient
is the ultimate
consumer whose wishes may not be disregarded and who has a right to
participate in any decision concerning his
health and treatment. It
may well be that there is little likelihood of the medical
practitioner or pharmacist being deceived or
confused but the enquiry
does not end there.
[31]
Both ZEMAX and ZETOMAX are meaningless words and there can be no
confusion based on meaning or concept or idea.
19
But
the two words are similar, confusingly so.
20
ZEMAX
consists of two syllables and five letters. ZETOMAX comprises three
syllables and seven letters. The difference between the
two marks
arises out of the middle syllable TO in ZETOMAX which extends the
word and breaks the connection between the first and
last syllables.
When MAX is excluded from both marks ZE and ZETO must be compared.
They are different but this difference becomes
less pronounced when
MAX in both is considered. ZE and MAX are indeed the dominant
elements of the two names. ZE is often found
in Lisinopril products
on the market eg ZESTORETIC, ZESTOZIDE AND ZESTRIL, which are
markedly different from both ZEMAX and ZETOMAX
not least because the
prefix ZE is pronounced differently. In the case of the other names
mentioned it is pronounced with a short
‘e’, whereas in
ZEMAX and ZETOMAX the ‘e’ is long. The latter two are
markedly similar with both having
the same prefix, ZE, and the same
suffix, MAX. ZEMAX and ZETOMAX are indeed the only two marks of the
128 on the register beginning
with ZE and ending in MAX. There is
also a similarity in the appearance of the two marks. When their
sounds are compared there
is also a likelihood of confusion. Their
pronunciation is similar, the TO in ZETOMAX being pronounced softly.
[32] A
patient, and perhaps also a professional, who knows only the one word
and has an imperfect recollection of it is likely to
be mistaken. One
must make allowance for imperfect recollection and the effect of
careless pronunciation rather than comparing
the two words letter by
letter or syllable by syllable.
21
But
looking at the two marks globally and appreciating their similarities
the overall impression is that they are so similar as
to be
confusing. To my mind Adcock has succeeded in showing that a
substantial number of consumers would be likely to be confused
and
deceived by the similarity between the marks ZEMAX and ZETOMAX.
[33] It follows that the
appeal should succeed. The following order is made:
1 The appeal is upheld
with costs.
2 The order of the court
below is set aside and replaced with the following order:
‘
(a)
The second respondent is directed to remove trade mark 2004/05322
ZEMAX in class 5 from the register of trade marks in respect
of the
goods for which it is registered;
(b) The first respondent
is ordered to pay the costs of the application.’
__________
F R MALAN
JUDGE OF APPEAL
APPEARANCES:
For
Appellant: R Michau SC
Instructed
by:
Spoor & Fisher
Pretoria
Naudes Attorneys
Bloemfontein
For
Respondent: M C Seale
Instructed
by:
Brian Bacon &
Associates Inc
Cape Town
Webbers
Bloemfontein
1
Section
15(5)
of the
Medicines and Related Substances Act 101 of
1965
.
2
SmithKline
Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South
Africa (Pty) Ltd) v Unilever plc
[1995] ZASCA 26
;
1995
(2) SA 903
(A) at 910B.
3
Two
separate appeals were heard together, and are reported under the
names
Adcock-Ingram Laboratories Ltd v SA
Druggists Ltd & another; Adcock-Ingram Laboratories Ltd v Lennon
Ltd
1983 (2) SA 350
(T) at 362-364;
[1983] 4 All SA 68
(T) at 79-81. Only the second appeal is relevant
to this case. See also
Triomed (Pty)
Ltd v Beecham Group plc & others
2001
(2) SA 522
(T) at 550-1.
4
1983
(2) SA 350
(T) at 363C;
[1983] 4 All SA 68
(T) para C11 at 80.
5
Bristol
Laboratories Inc v Ciba Ltd
1960 (1) SA 864
(A) at 871C-E. Section 17(1) of the Trade Marks Act 62 of 1963, the
precursor of s 10(14), provided: ‘Subject to the provisions
of
subsection (2), no trade mark shall be registered if it so resembles
a trade mark belonging to a different proprietor and
already on the
register that the use of both such trade marks in relation to goods
or services in respect of which they are sought
to be registered,
and registered, would be likely to deceive or cause confusion.’
See G C Webster and N S Page
Webster
and Page South African Law of Trade Marks, Unlawful Competition and
Trading Styles
(1997) 4 ed by C E
Webster and G E Morley paras 6.6.5 and 6.12 for a comparison of the
two sections.
6
Eno
v Dunn
(1890)
15 App Cas 252
(HL (E))
at 264 and see the discussion in Webster and Page para 6.12.
7
Century
City Apartments Property Services CC & another v Century City
Property Owners’ Association
2010
(3) SA 1
(SCA) para 50 and cf
Arjo
Wiggings Ltd v Idem (Pty) Ltd & another
2002
(1) SA 591
(SCA) paras 13 ff.
8
Judy’s
Pride Fashions (Pty) Ltd v Registrar of Trade Marks
[1996] ZACC 21
;
1997
(2) SA 87
(T) at 92C-E.
9
The
conditions under which a Schedule 3 substance may be sold,
prescribed, possessed etc are set out in
Medicines and Related
Substances Act 101 of 1965
,
ss 22A
ff.
10
Adcock-Ingram
Laboratories Ltd v SA Druggists Ltd & another; Adcock-Ingram
Laboratories Ltd v Lennon Ltd
1983 (2)
SA 350
(T) at 362 ff;
[1983] 4 All SA 68
(T) at 79 ff;
Organon Laboratories Ltd
v Roche Products (Pty) Ltd
1976 (1) SA
195
(T) at 200A-F.
11
Choay
SA v Boehringer Ingelheim International GmbH
[2001]
ETMR 64
para 19 and see Jeremy Phillips
Trade
Mark Law A Practical Anatomy
para
16.32 ff.
12
Organon
Laboratories Ltd v Roche Products (Pty) Ltd
1976
(1) SA 195
(T) at 200D-G and cf the remarks of Jeremy Phillips
Trade
Mark Law A Practical Anatomy
para
16.32 ff.
13
Section
22A(6)(
l
)
of the
Medicines and Related Substances Act.
14
[1992]
3 SCR 120
;
1992 CanLII 33
(SCC); 95 DLR (4
th
)
385, indexed as
Ciba-Geigy Canada Ltd v
Apotex Inc
.
15
At
95 DLR (4
th
)
385 at 406b-h.
16
95
DLR (4
th
)
385 at 408c-d.
17
Cowbell
AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA) para 10. See
Bata Ltd v Face
Fashions CC & another
2001 (1) SA
844
(SCA) paras 8 and 9.
18
Cowbell
AG v ICS Holdings Ltd
at 948B-D
referring to
Sabel BV v Puma AG, Rudolf
Dassler Sport
[1998] RPC 199
(ECJ) at
224.
19
Laboratoire
Lachartre SA v Armour-Dial Incorporated
1976 (2) SA 744
(T) at
747A-C.
20
The
approach to determine whether use of a mark is likely to deceive or
cause confusion in infringement cases (eg
Plascon-Evans Paints
Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at 640 E
ff) is with the required adaptation also followed in expungement
proceedings (
SmithKline Beecham Consumer Brands (Pty) Ltd
(formerly known as Beecham South Africa (Pty) Ltd ) v Unilever plc
[1995] ZASCA 26
;
1995 (2) SA 903
(A) at 910GH).
21
Aristoc
Ltd v Rysta Ltd & another
1945 AC 68
(HL) at 85-86;
[1945] 1
All ER 34
(HL) at 38-9 (per Viscount Maughan).