IN THE HIGH COURT OF SOUTH AFRICA
WESTERN CAPE DIVISION, CAPE TOWN

Case No: 10455 /2023

In the matter between:

ADCOCK INGRAM LIMITED First Applicant

ADCOCK INGRAM HEALTHCARE (PTY) LTD Second Applicant

ZAMBON S.P.A Third Applicant

and

CIPLA MEDPRO (PTY) LIMITED Respondent

Heard: 12 February 2025
Delivered Electronically on: 1 7 April 2025


JUDGMENT

LEKHULENI J

Introduction

[1] This is an application in which the applicants seek an interdict against the
respondent in terms of s 34(1)(a) of the Trade Marks Act 194 of 1993 (“the Trade Marks
Act”) from infringing the third applicant’s registered trade mark, registration number
1995/ 00309 URIZONE in class 5, and from using, in relation to a pharmaceutical
product, the trade mark FURIZOME or any other trade mark that closely resemble the
third applicant’s aforementioned registered trade mark, which may likely deceive or
cause confusion . In addition, the applicants seek an order that the respondent be
interdicted and restrained from passing -off its pharmaceutical products as those of the
applicants and/or associated with the pharmaceutical product of the applicants by using
in any manner or form, the trade mark FURIZOME or any confusingly similar trade mark
or name.

[2] The applicants and the respondent are competitors within the pharmaceutical
industry. The applicants manufacture, market and supply URIZONE. URIZONE is an
innovator medi cine of the third applicant, with the patent having expired some time
ago.1 Products for which patents have lapsed or expired may be legally reproduced by
other manufacturers, subject to registration with the South African Health Products
Regulatory Autho rity (“SAHPRA”) , a public entity of the National Department of Health,
in terms of the Medicine s and Related Substance s Act 101 of 1965 (“the Medicines
Act”) . SAHPRA is tasked with the regulation of all health products.2

[3] The applicants allege that the respondent’s use of the trade mark FURIZOME,
associated with its broad -spectrum antibiotics containing the active ingredient
Fosfomycin for treating urinary tract infections (UTI’s), is confusingly and or deceptively

1 In terms of s 46 of Patents Act 57 of 1978, the duration of a patent is 20 years from the date of the
patent application subject to the patentee or agent paying the renewal fees.
2 See s 2A of the Medicines and Related Substance Act 101 of 1965.
similar to the applicants’ URIZONE trade mark. Accordingly, the applicants seek an
order that the respondent be interdicted and restrained from unlawfully competing with
them by using the trademark FURIZOME or any confusingly similar trademark. This
court is calle d upon to determine whether URIZONE and FURIZOME trade marks are
confusingly or deceptively similar.

The Parties

[4] The first applicant is Adcock Ingram limited, a company duly registered and
incorporated with limited liability in accordance with the company laws of the Republic of
South Africa. It is a member of the Adcock Ingram Group of Companies and is the
company that historically entered into license and supply agreement with the third
applicant concerning the pharmaceutical product URIZONE, whic h is the subject matter
of these proceedings. The second applicant is Adcock Ingram Healthcare (Pty) Ltd. It is
also part of the Adcock Ingram Group of Companies. Through its consumer division ,
over the counter division (“OTC”) and prescription division , it manufactures and
distributes both OTC and prescription and generic pharmaceutical product s, as well as
products such as energy supplements , vitamins and sun care products . The URIZONE
product that is the subject matter of this litigation is marketed and distributed by the
prescription division of the second applicant .

[5] The third applicant Zambon S.P.A is a company incorporated under the laws of
Italy. It is the registered proprietor of the trade mark URIZONE , which forms the subject
matter of these proceedings. It has entered into a licence and supply agreement with
the first applicant re garding the marketing and distribution of the third applicant’s
URIZONE product in South Africa. The first and the second a pplicant are licensed to
use the third applicant’s registered URIZONE trade marks in South Africa.

[6] The respondent is Cipla Medpro (Pty) Ltd a company, registered and
incorporated in South Africa in 1995 and falls within the Cipla South Africa Group of
Companies. It is the third largest pharmaceutical manufacturer in South Africa with a
product portfolio spanning from complex gene rics to pharmaceuticals. It also
manufactures generic medicines, defined as a pharmaceutical product that is intended
to be interchangeable with an innovator product. One such product is FURIZOME , a
broad -spectrum antibiotic with the active ingredient Fosfo mycin.

The Applicants’ Case

[7] The applicants manufacture and distribute medicine under the trade mark
URIZONE for the treatment of urinary tract infections and have done so for many years .
The third applicant is the registered proprietor of trademark registration numbers
1995/00309 URIZONE and 1995/00513 URIZONE (special form) in class 5. The
URIZONE pharmaceutical product is a broad and medium spectrum antibiotic used for
treatment of urin ary tract infections. The URIZONE product is sold as a single dose in a
3-gram sachet . The active ingredient of the product is Fosfo mycin . The third applicant
launched the URIZONE medicine in 1988. The applicant s aver that t his medicine is
currently available in 78 countries, albeit in many of these countries the product is sold
under different trademarks.

[8] The URIZONE medicine was launched in South Africa in 1993 by the first and
the second applicants’ predecessor in ti tle, Adcock Ingram Pharmaceutical Limited, in
terms of a license and supply agreement concluded at the time with the third applicant.
The current distribution and marketing of the URIZONE product in South Africa is
regulated in terms of a license and suppl y agreement between the first , second and
third applicant dated 14 December 2016 . The URIZONE product is registered wit h
SAHPRA . The second applicant is responsible for marketing and distributing the
URIZONE product. The second applicant is authorized by the third applicant to use the
URIZONE trade mark.

[9] The applicants assert that 3446 138 sachets of the URIZONE product have been
sold over the period 2011 to 2023 . The first and second applicants invested
approximately R5 million in total on advertising and promoting the URIZONE product
over the period 2018 to 2022. Part of the applicants ’ marketing efforts consis ts of
distributing pamphlets and educational literature o f their URIZONE products to doctors ,
medical practitioners and pharmacists. The applicants state that until approximately a
year ago, URIZONE was in fact the only product of its kind on the South African market.
For almost 8 years the URIZONE product had no generic alternative on the South
African market.

[10] In February 2023, the second applicant became aware that the respondent had
adopted and launched an interchangeable multi source medicine (generic) containing
the active ingredient Fosfomycin in 3g sachets under the trademark FURIZOME. The
applicants asserted that the respo ndent was undoubtedly aware of the applicants’
URIZONE product and trademark when it opted to adopt and use the FURIZOME trade
mark. The applicants challenged the respondent to take this court into its confidence
and explain the rationale for its decision to adopt the FURIZOME trademark. The other
generic medicines to the applicants’ URIZONE medicine in South Africa with the active
ingredient Fosfomycin include Actizone from Actor Pharma, Tractinfect of Aspen
Pharmacare and Fomnos of Sadoz.

[11] The applicants aver that none of the pharmaceutical companies aforementioned
saw any need to adopt URIZONE trademark for their generic medicine . These products
have all been launched over the past 12 to 18 months. The applicants asserted that the
trade mar ks used in respect of these products illustrate that the reason for the
respondent adopting the FURIZOME trademark was evidently intended to capitalise and
to take advantage of the reputation and goodwill attached to the applicants’ URIZONE
trademark.

[12] The applicant s also pointed out that from the respondent’s brochure it is clear
that the respondent ’s FURIZOME product is a generic medicine and, similar to the
applicants ’ URIZONE product, is used for the treatment of acute, uncomplicated lower
urinary tract infections caused by sensitive e-coli in women . It is also used for
prophylaxis in diagnostic and surgical transurethral procedures in adult men.
FURIZOME is sold in a 3 -gram sachet, similar to the applicants’ URIZONE product.

[13] On 10 Mar ch 2023, and on becoming aware of the respondent ’s FURIZOME
product and the respondent's use of the applicants ’ URIZONE product, and because it
would result in deception or confusion , the applicant instructed its attorneys of record to
send a letter of demand to the respondent . The respondent was informed in the letter of
demand, that the respondent’s use of the FURIZOME trademark was unauthori sed in
the course of trade as a trade mark and in respect of goods covered by the specification
of the applicants ’ URIZONE trade mark. The applicants demanded that the respondent
cease all and any use whatsoever of the trade mark FURIZOME or any confusingly
similar trade mark. The applicants also demanded that the respondent cease all and
any use of the applicants’ URIZONE trade mark complained of.

[14] On 06 April 2023, through its attorneys of record , the respondent rebuffed the
applicants’ claim and contended that the trade marks, when viewed as wholes, are
clearly and sufficiently dissimilar from a phonetic, conceptual, and visual perspective.
The respondent denied tha t its FURIZOME trade mark so nearly resembles the
URIZONE trade mark as to be likely to deceive or cause confusion. The respondent
also refuted the claim that its conduct constituted trade mark infringement, or a violation
of the Advertising Regulatory Boa rd (“ARB”) Code, or unlawful competition. The
respondent reserved its rights in full and stated that it would not comply with the
applicants’ demand.

[15] The applicants asserted that there is a danger of deception or confusion between
the trade mark URIZONE and FURIZONE, especially having regard to the oral, visual
and conceptual similarities between the two trade marks URIZONE and FURIZOME.
The applicants allege s that the respondent is unlawfully using the URIZONE trade mark
in its brochure and further alleges that this use is tantamount to an infringement under s
34(1)(a) of the Trade Marks Act, as well as a contravention of the SAHPRA Guidelines
for Adver tisement of Medicines and Health Products, the Marketing Code Authority, and
the Code of Conduct of the ARB.

[16] The applicants pointed out that the respondent’s FURIZOME trademark bears a
confusing resemblance to the third applicant’s registered URIZONE trademark. The
applicants seek an interdict in terms of s 34(1)(a) of the Trade Marks Act to prevent the
respondent from infringing upon the third applicant’s registered trade mark. The
applicants assert that the URIZONE trademark has acquired a reputatio n and goodwill,
and that the use of the FURIZOME trademark by the respondent will result in consumer
deception and/or confusion. The applicants also seek an order interdicting the
respondent from passing -off its FURIZOME product as being that of, or associ ated with,
the applicants and their URIZONE product.

The Respondent’ s Case

[17] The respondent assert that it is the third largest pharmaceutical manufacturer in
South Africa, holding a 7,5% overall market share. It produces world class medicines at
affordable prices for the public and private sectors, thereby advancing healthcare for all
South Africans. Their strategy emphasises agile and sustainable growth, complex
generics, and a commitment to continuously enhancing its portfolio while adhering to
good manufacturing and laboratory practices. The respondent asserted that it offers a
diverse portfolio of generic medicines that includes both acute and chronic therapies for
patients across multiple age groups. Their strong presence is in, inter alia , anti -
infectives, respiratory care, cardio -metabolic treatments, pain and fever managemen t,
as well as vitamins and supplements, amongst others, to name a few. The purpose of
the respondent’s generic offerings is to make essential medicines readily accessible to
all patients. The respondent stated that both the applicants’ URIZONE product and the
respondent’s FURIZOME product are classified as scheduled 4 medication which can
only be dispensed upon prescription by a doctor.

[18] On 21 February 2023, the respondent introduced a scheduled generic
medication containing the active ingredient Fosfomycin, marketed under the trademark
FURIZOME. The FURIZOME product is a broad and medium spectrum antibiotic used
for the treatment of urina ry tract infections and is also available in a 1 x 3g sachet
dosage. The respondent assert that, generally, brand names for pharmaceutical
products are chosen or derived by taking into account the Active Pharmaceutical
Ingredient, as well as the mode of ac tion or treatment area. In the case of the
respondent, the marketing team would provide the suggested names to the Internal
Regulatory Affairs team, who then review the proposed name and make a final
submission to SAHPRA. Final approval of the brand name i s then communicated to the
Internal Regulatory Affairs team. The respondent notes further that according to the
prevailing practice, all product packaging and product names must receive approval
from SAHPRA prior to registration taking place. The Respondent provided two
alternatives to SAHPRA for the product name, being FURIZOME and Fosfomycin 3g
Cipla. Both names were accepted and officially registered with SAHPRA on 27
September 2022.

[19] The respondent stated that the brand name and trade mar k FURIZOME, adopted
by the respondent, is an invented word with no meaning in the English language. The
prefix “Uri” alludes to the intended use of the FURIZOME product, which is intended for
the treatment of urinary tract infections and the letter ‘F’ alluding to the active compound
of the FURIZOME product, specifically Fosfomycin . As part of the respondent’s launch
of the FURIZOME product, the respondent distributed an informational brochure for
purposes of marketing and advertising the newly launched product to doctors and
pharmacists specifically. The FURIZOME brochure was circulated during February
2023, in line with the general regulations 45(2)(b) of the Regulations promulgated under
the Medicines and Related Substance s Act 101 of 1965, as amended.3


3 It provides: ‘Medicines which contain a substance appearing in Schedule 2, Schedule 3, Schedule 4,
Schedule 5 or Schedule 6 may be advertised only for the information of medical practitio ners, dentists,
veterinarians, pharmacists and other persons authorised to prescribe or in a publication which is normally
or only made available to persons referred to therein .’
[20] The respondent further asserted that the FURIZOME trade mark is not so similar
to the URIZONE trade mark, such that its use in the FURIZOME brochure on the
packaging of the respondent’s product is unlikely to result in confusion or deception
among consumers. The respondent opines that the FURIZOME brochure contains
nothing that could possibly be deemed to cause confusion and does not unfairly benefit
from the URIZONE trademark or any rep utation vesting therein. Furthermore, the
respondent stated that it does not require the permission of the applicant to refer to the
URIZONE product name in this comparative advertising since such advertising is
permitted by intellectual property and the c ommon law.

[21] The respondent p ostulated four scenarios and contended that there exists no
possibility of confusion or deception on the part of patients between the URIZONE of
the applicants and the FURIZOME of the respondent. In the first scenario, the
respondent asserted that a medical doctor may prescribe the innovator (the original)
product to the patient. In this instance, and in terms of s 22F of the Medicines Act, the
pharmacist is obliged to inform the patient that a generic substitution exists. It is only
after the patient is informed by the pharmacist that a generic option exist will the patient
decide which pharmaceutical product to use. The respondent asserted that there exists
no likelihood of confusion or deception since the patient is presented with two different
options.

[22] In the second scenario, the respondent proposed a situation where the medical
doctor prescribes the innovator product and endorse on the prescription “no
substitution”. In this instance, the respondent asserted that the pharmacist is not obliged
to and will i n fact not inform the patient that a generic substitution exists. According to
the respondent, there can be no likelihood of confusion or deception on the part of the
patient in such scenario, since the patient is only ever presented with one
pharmaceutica l product. In the third scenario the respondent postulated a situation
where the medical doctor prescribes the generic product. In this instance, the
respondent stated that the pharmacist is not obliged to and will in fact not inform the
patient that an in novator product exists. The respondent contended that in such a case,
there is no likelihood of confusion or deception on the part of the patient since the
patient is only ever presented with one pharmaceutical product.

[23] In the fourth scenario the respondent postulated a situation where a patient walks
into a doctor's rooms and requests a particular medication for a perceived illness or
medical condition. In this scenario however, the respondent states that the doctor is still
obliged t o examine or consult with the patient and only after the examination will the
doctor either prescribe the requested medicine or engage in a dialogue with the patient
as to why a different medication will be prescribed. According to the respondent, the
doctor knows exactly which medicine he or she is prescribing and why. The respondent
further asserted that in this scenario there is no risk of confusion or deception on the
part of the patient as the patient is already aware of the pharmaceutical product. The
doctor informs the patient of a possible alternative pharmaceutical product to the one
the patient is already aware of.

[24] The respondent stated that the FURIZOME brochure does not include any
content that could be deemed to cause confusion and does not take unfair advantage of
the URIZONE trade mark (or any reputation vesting therein). Additionally, there is
nothing contained in the FURIZOME brochure which discredits, degenerates, or
disparages the URIZONE product. According to the respondent, all comparisons made
are factual, truthful, substantiated, and are not left open to interpretation. The
respondent emphasised that it is using the FURIZOME trade mark in the FURIZOME
brochure to promote its own newly launched product. The Respondent uses the
FURIZOME trade mark on the packaging of its own genuine product, and this is
reflected in the FURIZOME brochure. To this end, the respondent implored the court to
dismiss the applicants’ application with costs, including the costs of two counsels.

Submissions by the parties

[25] The applicant’s counsel, Mr Michau SC, submitted that the applicants have
accused the respondent of delibe rately copying its trade mark. Mr Michau argued that
this is not the first instance in which a member of the Adcock Group of Companies has
been at loggerheads with the respondent over its use of a trade mark which resembles
a successful product of the Adco ck Group of companies. Counsel referred the court to
the Supreme Court of Appeal (“the SCA”) case of Adcock Ingram v Cipla Medpro ,4
where the SCA ordered the registrar of trade marks to cancel a registered trademark
ZEMAX because it would infringe the registered trade mark Z ETOMAX , both of which
were being used on a prescription drug. Mr Michau submitted that a review of that case
demonstrates that the same unsuccessful defences raised by the respondent in that
matter are yet again being raised in the present matter. The essence of this defence
raised by the respondent is that because it is a prescription drug, the prospect of
confusio n is reduced. Counsel stated that the Z ETOMAX case dispelled that notion.

[26] Mr Micha u submitted that in the years gone by the law insofar as prescription
drugs was concerned was always that because the products are prescribed by medical
doctors and dispensing pharmacists , greater care would be taken and therefore the
marks had to be even closer together before infringement could be found than was
ordinarily the case. The ZETOMAX case, according to counsel, altered that. The SCA
concluded that the pat ient, and thus the average member of the public, now participates
in choosing his or her medication and is no longer a passive bystander in the
purchasing process as a result of the introduction of generic medications and the
provisions of s 22(F) of the M edicines and Related Substances Act 101 of 1965. The
applicants’ counsel submitted that the respective trade marks, URIZONE and
FURIZOME are confusingly similar, and he implored the court to grant the relief sought
in the notice of application.

[27] Mr Pu ckcrin SC, the respondent’s counsel, submitted that the question of
confusing and/or deceptive similarity in relation to medicines, must naturally take into
account the nature of the medication and the ailment it is intended to treat, and is an
important factor to consider in determining how involved members of the public actually

4 [2012] ZASCA 39.
are in deciding upon his or her medication, which has a bearing on whether there is a
likelihood of deception or confusion between the respective medications.

[28] Counsel argued that, since the URIZONE and FURIZOM E products are
classified as schedule 4 products, the involvement of medical professionals, being the
prescribing doctor and the dispensing pharmacist in this case, cannot be discounted. Mr
Puckrin pointed out that the applicants’ URIZONE product and the respondent’s
FURIZOME product are classified as Schedule 4 medicines. Consequently, there exist
several safeguards in place that regulate the supply, prescription, dispensing and sale
of schedule 4 prescription medications aimed at protecting consumers (par ticularly
patients), against the likelihood of confusion or deception arising from the names of
prescription medications.

[29] Counsel for the respondent submitted that the supply and sale of medicines in
South Africa is governed by s 22A of the Medicine s Act.5 Significantly, schedule 4
substances may not be directly advertised to the public. They may only be sold by
pharmacists (or pharmacist’s interns or assistants under supervision), or
manufacturers/wholesalers to individuals licensed to lawfully pos sess the schedule 4
substance.6 In counsel’s view, the relevant “customer” for purposes of the comparison
comprises medical practitioners, pharmacists, and patients.7 In Counsel’s view, the
prescribing doctor and the dispensing pharmacist will be a safeguard against potential
confusion between the product names. Mr Puckrin implored the Court to dismiss the
applicants’ application.

Issue to be decided


5 See s 22A(5)(a) – (e) of the Medicines Act.
6 Section 2 2 of the Medicines Act; General Regulation 45(2) of the Regulations to the Medicines Act;
Regulation 5.2 of the SAHPRA Advertising Guidelines.
7 Truworths Ltd v Primark Holdings 2019 (1) SA 179 (SCA) at paras 6 -7, 11, 16, 17 and 57; See also
Mcdonald's Co rporation v Joburgers Drive -Inn Restaurant (Pty) Ltd and Another; Mcdonald's Corporation
v Dax Prop CC and Another; Mcdonald's Corporation v Joburgers Drive -Inn Restaurant (Pty) Ltd And Dax
Prop CC 1997 (1) SA 1 (A).
[30] The key is sue this court must consider is whether the URIZONE and FURIZOME
trade marks are confusingly or deceptively similar. This question is relevant to the relief
sought in terms of the Trade Marks Act and also the common law.

Applicable Legal Principle s and Discussion

[31] The Trade Marks Act 194 of 1993 defines a trade mark principally in terms of its
purpose to distinguish in that a trade mark means:

‘a mark used or proposed to be used by a person in relation to goods or services
for the purpose of distinguishing the goods or services in relation to which the
markets used or proposed to be used from the same kind of goods or services
connected in the course of trade with any other person. ’

[32] In terms of s 9 (1) of the Act, in order to be registrable, a trade mark shall be
capable of distinguishing the goods or services of a person in respect of which it is
registered from the goods or services of another person either generally or, where the
trademark is registered or propos ed to be registered subject to limitation s, in relation to
use within those limitations. Section 9 establishes the foundational requirement for a
trade mark to qualify for protection. On the other hand, s 34(1)(a) of the Trade Marks Act
prohibits the use o f a mark that is identical to the registered mark or one that closely
resembles it to the extent that it is likely to deceive or cause confusion. The applicants
herein rely on s 34(1)(a) of the Trade Marks Act. For completeness, the relevant parts of
s 34( 1)(a) and (b) of the Trade Marks Act provide as follows:

‘34 (1) The rights acquired by registration of a trade mark shall be infringed by —
(a) the unauthorized use in the course of trade in relation to goods or services
in respect of which the trade mark is registered, of an identical mark or of a mark
so nearly resembling it as to be likely to deceive or cause confusion;
(b) the unauthorized use of a mark which is identical or similar to the trade
mark registered, in the course of trade in re lation to goods or services which are
so similar to the goods or services in respect of which the trade mark is
registered, that in such use there exists the likelihood of deception or
confusion …’

[33] In an infringement action, the onus rests upon the plaintiff to prove, on a balance
of probabilities, that the mark used by the defendant so nearly resembles the plaintiff’s
trademark to the extent so as to likely deceive or cause confusion. Section 34(3) of the
Act provides that where a trade mark in terms of this Act has been infringed, a High
Court having jurisdiction may grant the proprietor certain relief. The relief envisaged by
s 34(3) includes an interdict, an order for removal of the infringing mar k from all
material, damages, and in lieu of damages, at the option of the proprietor, a reasonable
royalty which would have been payable by a licensee for the use of the trade mark
concerned.

[34] Assessing the similarity of marks, to ascertain whether they are confusingly
similar is an important part of the process of determining possible infringement of a
mark. Three general tests are employed.8 First, marks could be similar on a phonetic
basis. Second, marks can be similar conceptually.9 A third tes t involves whether the
marks are similar from a visual perspective.10 In considering whether the use of the
respondent’s trade mark is likely to deceive or cause confusion, the SCA in Cowbell AG
v ICS Holdings Ltd,11 held that the essential function of the trade mark is to indicate the
origin of the goods in connection with which it is used. The decision whether the use of
both marks in relation to both goods and services would likely to deceive or cause
confusion invo lves a value judgment. The ultimate test is whether on a comparison of
the two marks it can properly be said that there exists a reasonable likelihood of

8 Bata Ltd v Face Fashions CC and Another Bata Ltd v Face Fashions CC and Another (206/98) [2000]
ZASCA 192 (29 September 2000) at para 9 ; see also Sabel BV v Puma AG, Rudolf Dassler Sport [1998]
RPC 199.
9 See Ramsay Son & Parker (Pty) Ltd v Media 24 Limit ed and New Media Publishing (Pty) Ltd , 2008 BIP
149 (C) para 12 .
10 National Brands Ltd v Blue Lion Manufacturing (Pty) Lt d 2001 (3) SA 563 (SCA) para 10 .
11 2001 (3) SA 941 (SCA) para 10; See also Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA).
confusion if both are to be used together in a normal and fair manner, in the ordinary
course of busin ess.12

[35] The test to determine whether the two marks are confusingly similar is well
established in our law and was set out by the SCA in Plascon - Evans Paints (Pty) Ltd v
Van Riebeeck Paints (Pty) Ltd,13 along with subsequent cases that have further
elaborated these principles.14 The test requires the court to evaluate the visual, aural
and conceptual similarities between the two marks, based on the overall impression and
any dominant features. A court sho uld assess the impact the marks would have on the
average consumer in the marketplace, who is reasonably well -informed and observant,
taking account the nature of the products and the manner in which they are marketed.
The ordinary consumer may not encount er the goods bearing the marks at the same
time and place, and an allowance should be made for the consumer’s imperfect
recollection of the marks. The marks should be viewed side by side as well as
separately. The degree of similarity of the goods should b e considered in relation to the
degree of similarity of the marks. The greater the similarity of the goods the more it may
offset some differences in the marks, just as the greater distinctiveness of the goods
may require greater similarity of the marks in order to justify a finding of the likelihood of
confusion.15

[36] In Century City Apartments Property Services CC and Another v Century City
Property Owners’ Association,16 the SCA referred with approval to what was stated
in Compass Publishing BV v Compass Logistics Ltd,17 that:


12 Smithkline Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South Africa (Pty) Ltd v
Unilever plc 1995 (2) SA 903 (A) at 912H.
13 Plascon - Evans Paints (Pty) Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A).
14 Bata v Face Fashions CC and Another 2001 (1) SA 844 (SCA) para 9; Cowbell AG v ICS Holdings
Ltd 2001 (3) SA 941 (SCA) para 10.
15 Casadobe Props 60 (Pty) Ltd v Fratelli Martini Secondo Luigi SpA (759/2023) [2025] ZASCA 14 (25
February 2025) at para 12.
16 Century City Apartments Property Services CC and Another v Century City Property Owners’
Association 2010 (3) SA 1 (SCA) para 13.
17 Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41 para 24.
‘The likelihood of confusion must be appreciated globally, taking account of all
relevant factors. It must be judged through the eyes of the average consumer of
the goods or services in question. That customer is to be taken to be reasonably
well informed and reasonably circumspect and observant, but he may have to
rely upon an imperfect picture or recollection of the marks. The court should
factor in the recognition that the average consumer normally p erceives a mark as
a whole and does not analyse its various details. The visual, aural and
conceptual similarities of the marks must be assessed by reference to the overall
impressions created by the marks bearing in mind their distinctive and dominant
components. Furthermore, if the association between the marks causes the
public to wrongly believe that the respective goods come from the same or
economically linked undertakings, there is a likelihood of confusion. ’18

[37] It is against this background tha t I now turn to determine whether the
respondent’s FURIZOME trade mark is likely to cause confusion or deception to the
public . However, before I do so , I must mention that this matter involves an alleged
infringement on a trade mark concerning t he sale of pharmaceutical products. It must be
stressed from the outset that t here are stringent rules and regulations promulgated in
terms of the Medicines and Related Substances Act 101 of 1965 and the Pharmacy Act
53 of 1974 applicable to the marketing and retailing of pharmaceutical products . These
include the physical handling and storage, promotion and advertising and labelling and
display of product, as we ll as the prescribing and dispensing thereof.19

[38] All pharmaceutical products intended for sale in South Africa must be registered
with SAHPRA in accordance with the Medicines Act prior to their launch in the South
African market.20 The URIZONE and FURIZOME products have been registered with
SAHPRA and have been designated as scheduled 4 products in terms of the Medicines
Act. Scheduled 4 products can only be sold by pharmacists, a pharmacist intern or a
pharmacist assistant acting u nder the personal supervision of the pharmacist to

18 At para 13.
19 See s ections 8, 18A, 18B , 18C , 19 and 22A of the Medicines Act.
20 See s 15 of the Medicines and Related Substances Act 101 of 1965.
individuals on prescription, written or verbal, from a medical doctor.21 Schedule 4
products cannot be bought over the counter or off the shelf. Medicines which contain a
substance listed as schedule 2, sc hedule 3, schedule 4, schedule 5 or schedule 6 may
be advertised only for the information of pharmacists, medical practitioners, dentists,
veterinarians, practitioners and other authorized prescribers.22

[39] In terms of s 22F of the Medicines Act, a pha rmacist, with certain exceptions is
obliged to inform members of the public who visit his or her pharmacy with a
prescription from a doctor of the benefits of the substitution of an original medicine with
a generic product. The pharmacist is furthermore ob liged to dispense the generic
instead of the innovator medicine (the brand name medicine) prescribed by the medical
practitioner unless the patient insists on the prescribed medicine. Section 22F
acknowledges that a patient to whom medicine is prescribed a nd dispensed has the
right of choice between the products available on the market to cure his or her
condition.23 A patient is entitled to be informed of the available options and to make a
choice regarding the pharmaceutical product he wishes to use.

[40] In the present matter, the applicants seek to prevent the respondent, by way of
an interdict, from using the trade mark FURIZOME in relation to a pharmaceutical
product that is intended to treat urinary tract infections. The respondent’s product
contai ns the active ingredient Fosfomycin a Schedule 4 prescription product. The
applicants seek an interdict based on s 34(1)(a) of the Trade Marks Act , for passing off
as well as under the broader aegis of unlawful competition. The success or failure of the
applicants’ application depends upon a finding as to whether or not the trade mark

21 See paras 1.4.4 and 1.4.5 and 1.1.5 of the SAHPRA Guidelines to scheduling of substances and
Medicines of May 2022.
22 See para 5.2 of the SAHPRA’s Guidelines for advertisement of Medicines and Health products.
23 Section 22F of the Medicines Act provides: ‘Generic Substitu tion: Subject to subsection (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 of dispensing, of the benefits of the substitution for a branded medicine by an
interchangeable multi sour ce 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 pr actitioner, dentist , nurse or other
person registered under the Health Professions Act, 1974, unless expressly forbidden by the patient to do
so.’
FURIZOME can be said to be confusingly similar to the trade mark URIZONE, which is
the subject of a valid registration in class 5 for a broad specification of goods that
includes pharmaceutical preparations.

[41] The URIZONE trade mark is widely recognised as being associated with the
same goods that the Respondent markets under the FURIZOME name, which is
essentially a generic alternative to the applicants' URIZONE product. It is also
acknowledged that the goods associated with the respondent’s FURIZOME product falls
within the specification of goods in respect of which the URIZONE trademarks are
registered and that it is used in the course of trade.

[42] In order to establish infringement in terms of s 34(1)(a) of the Trade Marks Act it
is necessary for the plaintiff to show:24

(a) use of the registered mark or of a mark so nearly resembling it as to be likely to
deceive or cause confusion;
(b) that the use is in relation to the goods or services in respect of which the trade
mark is registered;
(c) that the use is in the course of trade;
(d) that the use is unauthorised; and
(e) that the use is trade mark use.

[43] In the present matter, t he applicants ’ cause of complaint is about the
respondent’s use of the FURIZOME trade mark. Acco rding to the applicants , the
respondent is making such use of FURIZOME in the cours e of trade as envisaged in s
34(1) of the Act. Furthermore, the respondent is making use of the trade mark in relation
to goods in respect of which the third applicant’s registered URIZONE trade marks are
registered. The applicants assert that the respondent is making use of FURIZOME as a
trade mark, a mark so virtually resembling the applicants’ registered URIZONE trade

24 Webster and Page , South African Law of Trade Marks 4th Ed (1997) , par 12.7, p 12 -13; Kraft Foods,
Inc v All
Jov Foods (Ptv) Ltd 1999 BIP 122 (T).
mark which is likely to deceive or cause confusion. In the applicants’ opinion, there is a
real danger of deception or confusion between the trade marks URIZONE and
FURIZOME having rega rd to the real, visual and conceptual similarities between the
two trade marks.

[44] As previously stated, the key issue for this court to determine is whether the
URIZONE and the FURIZOME trademarks are confusingly or deceptively similar. In an
infringement application, as in the current case, the onus is on the applicant to show the
probability or likelihood of deception or confusion. It is not incumbent upon the
applicants to show that every person interested or concerned (usually as customer) in
the class of goods for which his trade mark has been registered would probably be
deceived or confused. It is sufficient if the probabilities demonstrate that a substantial
number of individuals will be deceived or confused.25 The determination of what
constitutes a substantial number is a matter of fact.26

[45] The question of the likelihood of confusion or deception is a matter of first
impression and entails an objective test.27 The meaning of the expression ‘to be likely to
deceive or cause confusi on’ has been held to mean that there is an onus on the plaintiff
to show the probability or likelihood or deception or confusion.28 In evaluating whether
this onus has been discharged, the concept of ‘global appreciation’ should be applied.
This means tha t a global appreciation of the visual, oral or conceptual similarity of the
two marks in question, must be based on the overall impression given by the marks,
bearing in mind, particularly, their distinctive and dominant components. Therefore, the
general impression of the two marks (URIZONE and FURIZOME) should be
considered. The inquiry is not whether there are differences, but whether the general
appearance is such that a person looking casually at the marks (with an imperfect
recollection) would be dece ived, or misled. The infringing party is not permitted to rely

25 Truworths Ltd v Primark Holdings 2019 (1) SA 179 (SCA) at para 6.
26 McDonald’s Corporation v Joburgers Drive -Inn Restaurant (Pty) Ltd and Another; MacDonald’s
Corporation v Dax Prop CC and Another 1997 (1) SA 1 (A) at 20 B -E.
27 Puma AG Rudolf Dassier Sport v Global Warming (Pty) Ltd 2010 (2) SA 600 (SCA) at para 11.
28 Ramsden P Guide to intellectual Property Law (2011) 1st Ed at 162.
on a matter that is extraneous to the mark to negate the likelihood of deception or
confusion.29

[46] It is common cause that the URIZONE trademark is used for the same types of
goods as those associated with the Respondent’s FURIZOME product. Furthermore,
the FURIZOME product is, in fact, a generic substitute for the URIZONE product offered
by the applica nts. It is also common cause that the third Applicant owns the trademark
for the URIZONE pharmaceutical product. Additionally, there is no question that the
respondent's FURIZOME product is utilised in the course of business and that falls
within the speci fications of the commodities for which the URIZONE trademarks are
registered. The dispute lies in whether the respective trade marks are confusingly
similar .

[47] It is incontestable that the URIZONE trademark has acquired a reputation and
goodwill in South Africa. It is renowned to individuals interested in the product or
services associated with the mark. The URIZONE trade mark was launched in South
Africa in 1993 and is currently available in over 2000 pharmacies throughout South
Africa, including all the pharmaceutical chains, wholesalers, and industrial clinics. The
URIZONE trademark had been in use in South Africa to such an extent that it enjoyed a
considerabl e reputation and goodwill. It is recognised as a well -known trade mark. It is a
well-recognised pharmaceutical product in South Africa and has been widely prescribed
and dispensed throughout the country over the past thirty years by thousands of
medical pr actitioners.

[48] On the other hand, the respondent’s FURIZOME product is classifie d as a
generic medicine. Similar to the applicant’s URIZONE product, it is used for the
treatment of acute, uncomplicated lower urinary tract infections caused by sensitive e-
coli in women, as well as for prophylaxis in diagnostics and surgical transurethral
procedures in adult men. The FURIZONE product, similar to the applicant’s URIZONE,
is sold as a single dose in 3 grams sachets. On a conspectus of all the facts placed

29 Adidas AG and Another v Pepkor Retail Limited 2013 BIP 203 (SCA).
before the court, I am of the view that when the respondent adopted the FURIZOME
trade mark it was clearly aware of the applicant’s URIZONE and the respondent took
advantage of the reputation and goodwill associated with the URIZONE trade mark of
the applic ant.

[49] It is important to emphasise that both URIZONE and FURIZOME are terms that
have been invented. Both trade marks are aurally similar and are used to treat urinary
infection. Since both pharmaceuticals are designed to treat the same condition and are
packaged in 3 -gram sachets, the potential and risk for confusion between the two is
considerable. The two words (trade marks) are markedly similar, confusingly so. In my
view, there is genuine and real danger of deception or confusion between the trade
marks URIZONE and FURIZOME, especially having regard particularly to the oral,
visual and conceptual similarities that connect the tw o trade marks.

[50] Evidently, the only distinction between the trade marks FURIZOME and
URIZONE is that the respondent’s FURIZOME trade mark starts with the letter ‘F’, while
the ‘N’ in the applicants’ URIZONE trade mark has been substituted with the letter ‘M’ in
the respondent’s trade mark. These differences, in my view, are insignificant. The
dominant element of both marks bears substantial resemblance and creates a lasting
impact on consumer’s minds. Interestingly, when the respondent sought to obtain
approval for the name from SAHPRA to be used in respect of this partic ular product, it
submitted two names; namely, FURIZOME on the one hand; and FOSFOMYCIN 3g
CIPLA. Both names were accepted. As Mr Michau correctly pointed out, the rationale
behind the submission of the two names remain unexplained, but it’s clear that the
respondent had concerns about the approval of its "FURIZOME" name.

[51] The respondent’s FURIZOME trademark in essence consists of letter “F”
followed by “Uri”, which alludes to the intended use of the medicine, followed by the
word with no meaning, namel y “zome” , that is F -URI-ZOME. The applicants’ URIZONE
trademark on the other hand, in essence consists of the word ‘Uri’ which alludes to the
intended use of the medicine followed by ‘zone’ which means inter alia ‘region’ or ‘area’.
The combination of the trademark URI -ZONE is obviously not a known word. However,
it is distinctive and imaginative. A detailed comparison of the two trade marks reveals
their evident and concerning similarities, which may lead to confusion and deception
among consumers. In my v iew, the two trade marks reveal striking similarities that pose
a risk of confusion and deception among consumers.

[52] In addition, the overlapping characteristics between the two trade marks may
mislead the public, blurring the lines between the distin ct identities that each trademark
is intended to present and convey. To my mind, the overall impression conveyed by the
marks as wholes closely resemble each other, both in appearance and sound. The
respondent’s trade mark bears a resemblance to the applic ant’s trade mark and is likely
to deceive or to cause confusion. Furthermore, the essential feature of the applicant’s
mark Uri and Zone had been incorporated in the respondent’s FURIZOME trade mark.
Clearly, the substitution of the letter ‘N’ with an ‘M’ on the suffixes of the two marks is
inconsequential. Accordingly, there is clearly a likelihood of deception and confusion in
the two marks.

[53] When comparing the two trade marks , it should be borne in mind that the letters
‘N’ and ‘M’ look and sound very similar. Both suffixes “zone” and “zome” look and sound
virtually identical. The letters ‘M’ and ‘N’ are virtually indistinguishable in pronunciation.
As correctly pointed out by the applicant’s expert Stephan Muhr, the ‘N’ and ‘M’ sounds
are often interchangeable and can be confused in the middle of words. The letters ‘N’
and ‘M’ are somewhat unique in English pronunciation as they are both classified as
nasal consonants. Nasal c onsonants are consonants that are formed through air
escaping through the nose and not the mouth. This means that the articulation of the
two sounds is very similar, which can lead to confusion or interchangeability. In addition,
the prefixes ‘uri’ and ‘furi’ are, both visually and phonetically virtually indistinguishable.
Considering the principles of imperfect recollection and deception, it can never be said
that, at the very least there would not be transitory confusion .

[54] There is no doubt that potential patient s (consumers) will most likely be confused
between the trademarks URIZONE and FURIZOME when confronted with these
trademarks and when the product is prescribed or dispensed by a pharmacist. I am
mindful of the argument made by Mr Puckrin and the evidence of Ms Haigh, the
respondent’s expert witness who confirms how medicines are dispensed to the public
and that there are numerous safeguards against confusion between medicines.
However, I beli eve doctors are not infallible, and do not possess a perfect recollection or
perception of even all medicines they prescribe. They too make mistakes.

[55] In my view, pharmacists and doctors are human and are not immune to factors
such as imperfect recol lection and mispronunciation. They too can be confused or
deceived. Even a doctor advising a pharmacist telephonically which drug to provide the
patient with can lead to confusion given the virtually identical pronunciation. As correctly
pointed out by the applicant s, the trade marks are so similar that if a doctor had heard
from a colleague (telephonically perhaps) that he/she should prescribe URIZONE and
he/she comes across FURIZOME, he/she might wonder if his/her colleague did not
perhaps mention the dru g FURIZOME and then simply prescribe the incorrect drug.

[56] Most significantly, both pharmaceuticals are intended to treat the same condition.
The applicant pointed out in the founding affidavit that, regarding doctors and
pharmacists, one should bear in mind the handwriting of doctors on prescription scripts.
Situations are likely to arise where a doctor may prescribe the applicants’ URIZONE
trade mark, and a pharmacist may be confused into believing that the doctor in fact
prescribed the FURIZOME product or the other way round. Accordingly, in addition to
the abov e, considering the condition that these products are meant to treat, that both
are available in a 1 x 3g sachet , the possibility of confusion is unavoidable even when
prescribed by doctors and dispensed by a pharmacist.

[57] I do not intend to deal with t he scenarios (discussed above) postulated by the
respondent in the answering affidavit and in the heads of argument ad seriatim .
However, I have to emphasise that in years gone by, the law insofar as prescription
drugs was concerned was always that because the products are prescribed by medical
doctors and dispensing pharmacists, a higher standard of care is expected. Therefore,
the marks needed to be even more closely align together before infringement could be
found than was ordinarily the case. However, by enacting s 22F of the Medicines and
Related Substances Act 101 of 1965, the legislature jettisoned this approach from the
discourse.

[58] The legislature has acknowledged the emergence of a significant transformative
trend in healthcare among the publ ic over the past two decades. Members of the public
are far more aware of the types of treatment or different pharmaceuticals available for
the treatment of specific conditions, the pros and cons of those treatment as well as the
clinical successes associa ted with those products. Patients have generally started to
take greater responsibility for their own healthcare, rather than relying solely upon their
doctors and pharmacists to decide. The patient has emerged as one of the three tiers
on which pharmaceut icals are promoted and marketed. The patient can exercise this
right, inter alia, by asking for the prescribed medicine by name. To this end, s 22F
creates a tripartite relationship or a “triad” of relevant consumers, consisting of the
“practitioner, pharm acist and patient ” in which pharmaceuticals are marketed.

[59] The existence of the triad was confirmed by the SCA in Adcock Ingram v Cipla
Medpro, (“the ZETOMAX judgment ”), where the court found that because of the advent
of generic medicine and the provisions of s 22F of Medicines and Related Substances
Act 101 of 1965, the patient, as such the ordinary member of the public, plays a role in
deciding upon his or her medication, no longer remaining a passive participant in the
purchasing process. The Z ETOMAX judgment was decided in terms of s 10(14) of the
Trade Marks Act. The court noted that the question of a likelihood of deception or
confusion in relation to chronic prescription medications must be answered with
reference not to the specialised mark et of prescription medication only, but with
reference to the patient as well. The court stated:

‘The patient is the ultimate consumer whose wishes may not be disregarded and
who has the 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 bein g deceived or confused, but the enquiry does not end there ’.30

[60] Notwithstanding the fact that one is dealing with prescription medicine, the reality
is that patients are involved in the process of deciding which medicines they will use,
and that creates the risk of confusion. This situation in turn creates a responsibi lity upon
pharmaceutical companies to make sure that they adopt trade marks that are not
confusingly similar. 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. As corre ctly stated
by the SCA in the Z ETOMAX matter, o ne 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. Thus, u pon examining the two marks as a
whole and recognising their similarities, the general impression is that they are
remarkably alike to the point of causing confusion.

[61] Ostensibly the r espondent argue s that because Schedule 4 medicines are
involved one should ignore the role patients play in deciding on the medicine s to be
prescribed and dispensed. Furthermore, t he argument by Mr Puckrin that various
safeguards exist that regulate the supply, prescription, dispensing and sale of schedule
4 prescription medications to protect the relevant consumers (particularly patients)
against a likelihood of confusion or deception blissfully ignores the role of the public, or
patient, in making their own medical choices and in deciding upon which product they
wish to be treated with. There are certainly scenarios where patients do play a role in
deciding on the medicine for their health and in that process, there exists a great
possibility of consumer deception or confusion .

[62] It is incontrovertible that in many cases patient ask doctors to prescribe the
medicine that they are familiar with, have used before, or heard about. It is reasonable

30 At para 30.
to conclude that this will be the case. When a patient request for a specific medicine b y
its brand name for a particular condition diagnosed by the doctor, it will likely be a
medicine that they are familiar with, or have heard about, or read of. If the name of the
medication aimed at the same ailments are confusingly similar, it obviously p oses a risk
of these patients becoming confused. In this case, there exists a significant risk of
deception or confusion to patients arising from the two strikingly similar trade marks
URIZONE and FURIZOME .

[63] Distinctive and distinguishable trade mark play a crucial role in the competitive
landscape of pharmaceutical products. What I also find concerning is the fact that the
respondent selected this particular name, despite having another name, completely
different in every respect, that was approved b y SAHPRA. The only inference to be
drawn is that the respondent wanted to take advantage of the reputation and goodwill of
the applicants’ URIZONE, and this cannot be countenanced. Accordingly, this court
finds that the two trade marks URIZONE and FURIZOME are visually, aurally and
conceptually similar and that there exists a likelihood of confusion or deception among
consumers.

Order

[64] Given all these considerations, the following order is granted:

64.1 The respondent is interdicted and restrained in terms of s 34(1)(a) of the
Trade Marks Act 194 of 1993 from infringing the third applicant ’s trade
mark registration number 1995/00309 URIZONE in class 5 by using in
relation to the pharmaceutical product, th e trade name FURIZOME or any
other trade mark so nearly resembling the third applicant ’s URIZONE
trade mark so as to be likely to deceive or cause confusion.

64.2 The respondent is interdicted and restrained from passing -off its
pharmaceutical products as those of the applicants or associated with the
pharmaceutical products of the applicant s by using in any manner or form
the trademark F URIZOME or any confusingly similar trademark or name.

64.3 The respondent is interdicted and restrained from unlawfully competing
with the applicants by using in any manner or form the trademark
FURIZOME or any confusingly similar trademark.

64.4 The respondent is ordered to pay the applicants’ costs, including the costs
of two counsels were so e mployed.


___________________________
LEKHULENI JD
JUDGE OF THE HIGH COURT


APPEARANCES

For the App licant : Adv R Michau SC
Instructed by: Spoor & Fisher

For the Respondent: Adv C E Puckrin SC
Instructed by: Kisch IP