Brief Summary

Trade Marks — Opposition to registration — Application by Novartis AG to oppose registration of trade mark "CURIDA" by Cipla Medpro (Pty) Ltd — Novartis, as registered proprietor of "CURITAZ", alleging likelihood of confusion and deception under section 10(14) of the Trade Marks Act — Cipla denying similarity and asserting no confusion among qualified medical practitioners — Court finding that Novartis had authority to institute proceedings and that the marks were likely to cause confusion among consumers — Application for registration of "CURIDA" refused.

Comprehensive Summary

Summary of Judgment

1. Introduction

This was an application arising from trade mark opposition proceedings that were referred to the High Court by the Registrar of Trade Marks in terms of section 59(2) of the Trade Marks Act 194 of 1993. The matter concerned whether a pending opposition before the Registrar should succeed, and, if not, whether the Registrar should be directed to proceed with registration of the impugned mark subject to an amended specification.

The applicant was Novartis AG, the opponent in the trade mark proceedings and the registered proprietor of the mark CURITAZ in South Africa. The respondent was Cipla Medpro (Pty) Ltd, the trade mark applicant seeking registration of CURIDA.

Procedurally, Cipla Medpro lodged its application to register CURIDA in Class 5 on 17 November 2009 (Trade Mark Application No. 2009/23111). Novartis later indicated an intention to oppose and requested that registration be withheld, and then filed its founding affidavit on 1 September 2011 in opposition proceedings brought in terms of section 21 of the Trade Marks Act 194 of 1993, read with Regulation 19. Answering and replying affidavits were delivered and pleadings closed on 12 April 2012. While those proceedings were pending before the Registrar, the matter was ultimately before the High Court after referral in terms of section 59(2).

The general subject-matter of the dispute was whether CURIDA was identical or confusingly similar to Novartis’s registered mark CURITAZ for purposes of section 10(14) of the Trade Marks Act 194 of 1993, and whether the registration of CURIDA should therefore be refused.

2. Material Facts

Cipla Medpro applied to register the trade mark CURIDA in Class 5 for a broad specification that included pharmaceutical and veterinary preparations and, expressly, antibiotics for human use and pharmaceutical products exhibiting antibacterial activity. Novartis opposed that registration.

Novartis was the registered proprietor in South Africa of trade mark registration 2008/15000 CURITAZ in Class 5, registered in respect of “pharmaceutical preparations containing piperacillin and tazobactam.” Novartis alleged that registration and use of CURIDA would create a real risk that members of the public would be deceived or confused and might purchase the wrong pharmaceutical product, with potentially serious consequences, and that this could harm Novartis and its reputation.

On the evidence accepted by the court, it was common cause that the registration of CURIDA would proceed only in an amended and limited form, restricted to “antibiotics, pharmaceutical preparations containing a combination of amoxicillin and clavulanic acid.” It was also common cause (as treated by the court) that both products would be scheduled medicines, dispensed through professional channels involving medical practitioners and pharmacists.

Certain factual characterisations were advanced by the respondent and treated as important by the court in evaluating the likelihood of confusion. The respondent’s evidence (including that CURITAZ was administered intravenously and regulated as a scheduled product) was not materially disputed in reply in a way that altered the court’s assessment. The respondent also relied on evidence that the prefix “CURI” appeared in a number of pharmaceutical marks across relevant classes, supporting an inference that the shared prefix was not uniquely distinctive of Novartis’s product range.

A preliminary factual dispute was raised about authority: whether the deponents to Novartis’s affidavits were authorised and whether a corporate resolution to institute proceedings was required. Powers of attorney existed authorising the deponents to sign documents in connection with litigation, and the court treated the decisive enquiry as whether Novartis’s attorneys were authorised to act.

3. Legal Issues

The court identified three key issues.

The first issue was whether the proceedings were properly authorised, including whether Novartis had authorised the institution of the application and whether the deponents to the founding affidavit were properly qualified or authorised in a manner relevant to the application. This issue primarily concerned procedural law and the application of the Uniform Rules of Court principles relating to authority to act.

The second and central issue was whether CURIDA was likely to cause deception or confusion in relation to Novartis’s registered mark CURITAZ as contemplated by section 10(14) of the Trade Marks Act 194 of 1993, given that the goods were in the same broad class and involved pharmaceuticals. This issue required an application of legal standards to the facts, including an evaluative assessment of similarity and the likelihood of deception or confusion in real-world conditions of trade.

The third issue was whether Novartis was an “interested person” for purposes of section 21 of the Trade Marks Act 194 of 1993, in light of the respondent’s contention that Novartis had not proved use or trading under CURITAZ in South Africa. This issue mixed statutory standing with factual assertions about use, although the court treated the standing point as lacking merit on the papers.

4. Court’s Reasoning

Authority to institute proceedings and the deponents’ authority

The court approached the authority challenge through the lens of Rule 7(1) of the Uniform Rules of Court, emphasising that South African motion proceedings focus on whether the attorney is authorised to act, rather than whether every deponent is separately authorised to “institute” proceedings in the sense contended for by the respondent.

Relying on Eskom v Soweto City Council 1992 (2) SA 703 (W), the court accepted that if an attorney is authorised to bring an application, the application is that of the litigant, and there is no additional requirement that deponents be specifically authorised beyond what is necessary for the litigation process. The court noted that Novartis’s attorneys had corresponded with the Registrar and the respondent’s attorneys indicating they acted for Novartis in relation to the opposition, and the respondent did not properly invoke Rule 7(1) procedures at the appropriate time after the matter came before the High Court.

The court also referred to First Rand Bank Limited v Fillis 2010 (6) SA 565 (ECP) and Ganes and Another v Telecom Namibia Ltd 2004 (3) SA 615 (SCA) in concluding that it was satisfied, on the papers, that Novartis had authorised its attorneys and nominated the relevant individuals to depose to affidavits. On this basis, the authority point did not bar the application from being determined on its merits.

“Interested person” under section 21

The court rejected the respondent’s contention that Novartis was not an “interested person” under section 21. It treated Novartis’s status as the registered proprietor of CURITAZ in South Africa, together with the evidence that the mark was used in South Africa through its affiliate, as sufficient to establish the requisite interest.

In addressing the concept of an interested person, the court referred to the description in Webster and Page, South African Law of Trade Marks (with reference there to Ex Parte Stubbs: In re Wit Extensions Ltd 1982 (1) SA 526 (W) and Nieuwoudt v The Master 1988 (4) SA 513 (A)). The court considered that a party with a proprietary or financial interest in the registered mark and whose rights could be affected by the registration of a similar mark plainly fell within the category of persons entitled to oppose.

Likelihood of deception or confusion under section 10(14)

The court framed the substantive enquiry under section 10(14) of the Trade Marks Act 194 of 1993 as requiring satisfaction of two main components: the relationship between the goods covered by the marks, and the similarity between the marks such that use of the later mark would be likely to deceive or cause confusion. The court stated that the onus rested on Novartis to establish a reasonable probability of confusion among a substantial number of purchasers.

In evaluating confusion, the court emphasised the need to consider the actual circumstances of trade, including how the goods are sold, the nature of the customer, and the likelihood of misarticulation. It also indicated that there must be a real, tangible danger of confusion, not a speculative possibility.

A significant feature of the court’s reasoning was the regulated context of the goods. The court accepted that both products would be scheduled pharmaceuticals dispensed through medical practitioners and pharmacists, and it treated the involvement of knowledgeable professionals as materially reducing the likelihood of confusion. In this respect, the court relied on the approach expressed in Adcock Ingram Intellectual Property (Pty) Ltd and Another v CIPLA Medpro (Pty) Ltd (265/20111) [2012] ZASCA 39 (29 March 2012), which discussed two possible approaches internationally and endorsed the relevance of prescription controls as a factor that can significantly reduce confusion.

The court also took into account evidence that CURITAZ was limited in practice and registration to a particular intravenous antibiotic combination, and observed that the replying affidavit did not deny the intravenous administration aspect. This clinical and dispensing context was treated as another factor limiting the prospect that the relevant consumers or prescribers would confuse the products.

On the similarity of the marks themselves, the court accepted that both marks shared the prefix “CURI”, but found the distinguishing features lay in the suffixes “TAZ” and “DA”. The court considered these suffixes visually and phonetically different, with the dominant consonants (“T” versus “D”) and the presence of “Z” in “TAZ” increasing differentiation. It concluded that these differences would be more likely to remain in a person’s memory, and that neither mark was descriptive of the goods in a way that would reduce their distinctiveness to the shared prefix alone.

The court further accepted the respondent’s evidence (including supporting material referred to in Dr Gregory’s affidavit) that the prefix “CURI” was used widely in the pharmaceutical field and was not peculiar to Novartis. This supported the conclusion that the shared prefix did not, on its own, generate a likelihood of confusion. The court also referred to a Canadian decision, Ratiopharm Inc v Laboratories Riva Inc (T407-03, 18 July 2006), as an example of trade mark comparison reasoning in pharmaceutical marks, although the ultimate determination remained grounded in the court’s assessment of the marks and market circumstances before it.

Taking these factors together—regulated dispensing conditions, professional intermediaries, the limited specification of CURIDA, the clinical differences in administration context, and the phonetic and visual differences between the marks—the court concluded that Novartis had not shown that registration of CURIDA would likely deceive or cause confusion when compared to CURITAZ.

5. Outcome and Relief

The court dismissed Novartis’s application opposing the registration of CURIDA.

The court directed that the Registrar of Trade Marks proceed to register CURIDA, but only subject to a limited specification, namely “antibiotics, pharmaceutical preparations containing a combination of amoxicillin and clavulanic acid.”

Novartis was ordered to pay the respondent’s taxed costs of the application on the party-and-party scale, including the costs of counsel.

Cases Cited

Eskom v Soweto City Council 1992 (2) SA 703 (W)

First Rand Bank Limited v Fillis 2010 (6) SA 565 (ECP)

Ganes and Another v Telecom Namibia Ltd 2004 (3) SA 615 (SCA)

Lubbe NO v Millennium Styles 2007 (6) SA 682 (SCA)

Adcock Ingram Intellectual Property (Pty) Ltd and Another v CIPLA Medpro (Pty) Ltd (265/20111) [2012] ZASCA 39 (29 March 2012)

Ex Parte Stubbs: In re Wit Extensions Ltd 1982 (1) SA 526 (W)

Nieuwoudt v The Master 1988 (4) SA 513 (A)

Ratiopharm Inc v Laboratories Riva Inc (T407-03, 18 July 2006)

Legislation Cited

Trade Marks Act 194 of 1993, sections 10(14), 14, 21, 38, 59(2)

Medicines and Related Substances Act 101 of 1965, section 22A(5)

Rules of Court Cited

Uniform Rules of Court, Rule 7(1)

Trade Marks Regulations (under the Trade Marks Act 194 of 1993), Regulation 19 and Regulation 52(1)

Held

The court held that the authority challenge did not defeat the application because the decisive question was whether the applicant’s attorneys were authorised to act, and the respondent had not properly pursued a Rule 7(1) challenge in the High Court proceedings.

The court held that Novartis was an interested person entitled to bring the opposition, as the registered proprietor of CURITAZ with a direct proprietary interest affected by the registration of a potentially similar mark.

On the merits, the court held that Novartis failed to establish that CURIDA was so similar to CURITAZ that its use in relation to the relevant goods would be likely to deceive or cause confusion under section 10(14). The court accordingly dismissed the opposition and directed registration of CURIDA with a limited specification, and ordered Novartis to pay costs.

LEGAL PRINCIPLES

A challenge to a litigant’s authority in motion proceedings is addressed primarily through Rule 7(1) of the Uniform Rules of Court, with the focus placed on whether the attorney is authorised to act on behalf of the party; it is not generally necessary to prove separate, additional authority for each deponent beyond what is required for the proceedings.

In applying section 10(14) of the Trade Marks Act 194 of 1993, the party opposing registration bears the onus to establish a reasonable probability that use of the later mark in relation to the relevant goods would be likely to deceive or cause confusion among a substantial number of purchasers.

The likelihood of confusion assessment under section 10(14) is an evaluative enquiry conducted with reference to the real-world conditions of trade, including the nature of the goods, the identity of the likely consumers, the manner of sale and dispensing, and the degree of similarity between the marks considered as a whole.

In the context of prescription or scheduled medicines, the regulatory conditions governing sale and prescription, and the role of qualified professionals (such as medical practitioners and pharmacists), may materially reduce the likelihood of confusion between pharmaceutical trade marks, and may therefore be a significant factor in determining whether the statutory threshold for refusal of registration is met.

Novartis AG v Cipla Medro (Pty) Ltd (39036/14) [2016] ZAGPPHC 371 (12 May 2016)