REPUBLIC OF SOUTH AFRICA
IN THE HGH COURT OF SOUTH AFRICA
HELD AT PRETORIA
1) REPORT ABLE: NO
2) O F INTEREST TO O THER JUDG ES: NO
3) REVISED.
SIGNATURE
In the matter between:
21 APRIL 2026
DATE
AUSTELL PHARMACEUTICALS
And
BAYER INTELLECTUAL PROPERTY
GmbH
REGISTRAR OF TRADE MARKS
CASE NO: A135/2025
DOH: 28 JANUARY 2026
Appellant
First Respondent
Second Respondent
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This judgment has been handed down remotely and shall be circulated to the parties by
way of email / uploading on Caselines. The date of hand down shall be deemed to be 21
April 2026.
________________________________________________________________
ORDER
The following order is granted:
1. The appeal is upheld with costs, including the costs of two counsel.
2. The order of the Court a quo is set aside and replaced with the following:
‘The application is dismissed with costs.
________________________________________________________________
JUDGMENT
CORAM: BAM J (MNGQIBISA-THUSI et KOOVERJIE JJs concurring)
Introduction
1. The sole question before this court is whether the mark REZALTO, when used
in relation to pharmaceuticals so nearly resembles the mark XARELTO, such
that it would be likely to deceive or cause confusion. The same question arose
before the court a quo in cancellation and infringement applications brought
in terms of Section 24(1) read with Section 10(14), and Section 34(1),
respectively, of the Trade Marks Act1 (the Act). The court below, per Meadan
1 Act 194 of 1993.
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AJ, sitting as court of first instance on 11 June 2024, answered the question
in the affirmative. Pursuant to that conclusion, the court ordered, inter alia, the
cancellation of Appellant’s mark and further interdicted Appellant from
infringing First Respondent’s trade mark rights. The present appeal is with
leave of the Supreme Court of Appeal granted on 6 February 20252 and it is
opposed by First Respondent. I commence by introducing the parties before
setting out the background facts.
Parties
2. Appellant, Austell Pharmaceuticals (Proprietary) Limited, is a South African
company with its principal place of business at 1 Sherborne Road, Parktown,
Johannesburg. Appellant is a healthcare company founded in 2005 and is the
proprietor of a trade mark registration no 2018/37286 REZALTO, registered
in class 5, in respect of:
‘Pharmaceuticals, medical and veterinary preparations, sanitary preparations for
medical purposes; dietetic food and substances adapted for medical and
veterinary use, food for babies; dietary supplements for humans and animals;
plasters materials for dressings; material for stopping teeth, dental wash;
disinfectants; preparations for destroying vermin; fungicides herbicides’
(Appellant’s registration).
3. The application for registration in respect of the trade mark was filed on 12
December 2018 and proceeded to registration on 26 June 2020. The date of
2 This date is per the court stamp. The header suggests that the matter was before Justices Weiner JA and
Windell AJA on 29 January 2025.
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registration of the mark in terms of Section 293 of the Act is 12 December
2018.
4. First Respondent, Bayer Intellectual Property GmbH (Bayer), is a subsidiary
of its German parent company, Bayer AG. First Respondent is the proprietor
of a trade mark 2004/10546 XARELTO, registered in class 5, in respect of:
‘Pharmaceutical preparations and substances, diagnostic preparations and
reagents for medical use. (First Respondent’s trade mark registration).
5. The application in respect of Bayer’s trade mark was filed on 28 June 2004
and proceeded to registration on 25 February 2008. Second Respondent
played no role in the proceedings from the outset. Thus, I shall refer to First
Respondent as Respondent.
Point in limine: The appeal has lapsed
6. Has the appeal lapsed as Respondent argues? According to Respondent,
leave to appeal was granted on 29 January 20254, thus the Notice of Appeal
should have been delivered on 26 February and not on 6 March as Appellant
did. The date, 29 January, is the date set out in the body of the order.
However, the order was stamped only on 6 February. Rule 49(2) reads:
3 The effective date of Appellant’s registration in terms of Section 29 of the Act therefore is 12 December
2018.
‘29. Registration
(1) When an application for registration of a trade mark has been accepted and advertised in the prescribed
manner and either—
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has been opposed and has been granted,
the registrar shall register the trade mark as on the date of the lodging of the application for registration, and
that date shall, subject to the provisions of section 63, for the purposes of this Act be deemed to be the date
of registration…’
4 The dates refer to 2025 unless indicated otherwise.
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‘2) If leave to appeal to the full court is granted the notice of appeal shall be
delivered to all the parties within 20 days after the date upon which leave was
granted or within such longer period as may upon good cause shown be
permitted.’
7. Respondent has not placed evidence before this court that the order was
issued to the parties before it was stamped by the Registrar. Besides, it would
be prejudicial to the Appellant if the dies were to be counted from 29 January,
which is some 6 to 8 days before the order was dispatched to it. I conclude
that the point has no merit and must accordingly fail. In the event we are
wrong, we take the view that the interests of justice militate in favour of
allowing the appeal to continue, as opposed to striking it off the roll. Fortifying
our view is the Constitutional Court’s reasoning in Eke v Parsons, that the
rules are made for the court and not the other way round. In this regard, the
court noted:
‘[39] Without doubt, rules governing the court process cannot be disregarded.
They serve an undeniably important purpose. That, however, does not mean that
courts should be detained by the rules to a point where they are hamstrung in the
performance of the core function of dispensing justice. Put differently, rules
should not be observed for their own sake. Where the interests of justice so
dictate, courts may depart from a strict observance of the rules. That, even where
one of the litigants is insistent that there be adherence to the rules. Not
surprisingly, courts have often said “[i]t is trite that the rules exist for the courts,
and not the courts for the rules.’ 5
5 (CCT214/14) [2015] ZACC 30; 2015 (11) BCLR 1319 (CC); 2016 (3) SA 37 (CC) (29 September 2015).
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Background
8. Respondent markets and sells an anti-coagulant, colloquially known as blood
thinning prescription medication, via Bayer (Pty) Ltd (Bayer South Africa) an
indirect subsidiary of Bayer. The medication is used to treat patients with blood
clots, and it is marketed and sold under the trade mark XARELTO. The active
ingredient in the medication is rivaroxaban. Appellant markets and sells a
generic version of XARELTO under the trade mark REZALTO. REZALTO is
also an anti-coagulant and it consists of the ingredient rivaroxaban.
Proceedings before the court a quo
9. When it initially instituted the proceedings in February 2023, Respondent had
founded its case for cancellation on Sections 10 (12) and (14) read with 24(1)
of the Act. However, before the court below, Respondent chose to rely on
Sections 10 (14) read with 24(1). I have already indicated that the court a quo
found that the two trademarks were confusingly and deceptively similar to one
another.
Grounds of Appeal
10. Before us, Appellant contested the finding that the two marks are confusingly
and deceptively similar, asserting that the marks are visually, aurally and
conceptually distinguishable and can in no way be said to be confusingly or
deceptively similar. The broad thrust of Appellant’s case is that although the
court referred to the relevant authorities, including the locus classicus,
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Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd6 , it shied
away from applying the principles espoused therein. In the main, Appellant
submits that the court a quo failed to undertake the value judgment it is
required to do, based on a global appreciation of the two marks and the overall
impression they leave. Instead, the court, inter alia, subjected the trade marks
to close scrutiny and artificially disseminated them in an attempt to find
similarities whilst forgetting to consider the general impression or idea
conveyed by the respective marks.
11. Respondent denies that the court failed to undertake a value judgment and
states that the court correctly applied the law by considering the marks
holistically and with a global appreciation of the visual, aural or conceptual
similarity.
Before this court
12. Appellant submits that it conducted a search of trade marks registered in class
5. That search revealed that there are no less than 24 trade marks on the
trade mark register which incorporate the prefix XA. Further, there are 7
trademarks incorporating the prefix XAR; 12 trade marks with the prefix
incorporating ZAR; and 9 trade marks with a prefix incorporating SAR. There
are also 9 trade marks on the register which incorporate the suffix, LTO; 12
trade marks with the prefix RE; 13 trade marks which incorporate the prefix
REZ; and 30 trade marks which incorporate the prefix RES. Respondent
6 (53/84) [1984] ZASCA 51; [1984] 2 All SA 366 (A); 1984 (3) SA 623; 1984 (3) SA 620 (21 May 1984).
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counters that the entire exercise pertaining to the search was ill-conceived for
two reasons: Appellant has provided no substantiation that the marks referred
to in its searches are actively being used in trade. It adds that in any event,
the search yielded marks that bear no similarity to its mark and not even to
Appellant’s mark.
13. Appellant says what the court a quo ought to have taken into account is that
the prescription of medicine by a doctor is a deliberate act with full knowledge
of the contents of the medicine in question and a doctor will not rely on a
vague recollection of the name of the medication when prescribing
medication. Similarly, a pharmacist will not be confused when issuing
medication, as they will issue what is prescribed by the doctor and when in
doubt, refer to the prescription and not rely on vague recollection of the name
of the medication. Further, sufficient weight ought to have been given to the
fact that the Medicines Control Council had considered, approved and allowed
registration of the trade mark REZALTO as a generic equivalent of the first
respondent’s XARELTO, on the basis that XARELTO and REZALTO trade
marks are not confusingly similar.
14. Appellant adds that the court a quo’s criticism of what it saw as Appellant’s
exclusion of substantive reference to the consumer was unwarranted and
ignores:
(i) That Respondent admitted that patients are most likely to be presented
with options verbally, and will make a decision based on what they hear
as opposed to what they see, thereby rendering any visual similarities,
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if any, irrelevant for the purposes of considering the generic
dispensation.
(ii) The evidence presented and relied upon by Respondent in support of
the manner in which the parties’ products are likely to be dispensed,
and the participation of the patients in the process.
15. As against Appellant’s submission regarding the court’s failure to take into
account that the products in question will be prescribed by doctors and
dispensed by pharmacists, Respondent submits that Appellant’s submissions,
just as they did before the court below, studiously avoid the principles
espoused in Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla
Medpro (Pty) Ltd and Another 7. In this regard, Respondent submits that
Appellant does not address the impact of Section 22F of the Medicine and
Related Substances Act8. The section entitles a patient to participate in any
decision concerning their health and treatment. Consequently, when
enquiring on the likelihood of confusing and deceptive similarity, the enquiry
can no longer disregard the consumer.
Relevant legal principles
16. Section 10 deals with Unregistrable trade marks and it reads in the relevant
parts:
7 (265/2011) [2012] ZASCA 39; 2012 (4) SA 238 (SCA); [2012] 3 All SA 1 (SCA); 2012 BIP 113 (SCA) (29
March 2012).
8 Act 101 of 1965.
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‘The following marks shall not be registered as trade marks or, if registered,
shall, subject to the provisions of sections 3 and 70, be liable to be removed
from the register—
‘(14) subject to the provisions of section 14, a mark [a mark shall not be registered]
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;
Section 24(1) reads:
‘General power to rectify entries in register -
(1) In the event of non-insertion in or omission from the register of any entry, or
of an entry wrongly made in or wrongly remaining on the register, or of any error
or defect in any entry in the register, any interested person may apply to the court
or, at the option of the applicant and subject to the provisions of section 59, in the
prescribed manner, to the registrar, for the desired relief, and thereupon the court
or the registrar, as the case may be, may make such order for making, removing
or varying the entry as it or he may deem fit.’
Section 34. Infringement of registered trade mark
‘(1) The rights acquired by registration of a trade mark shall be infringed by—
(a) the unauthorised 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;’
17. The principles to be applied by a court in comparing marks are set out in
Plascon Evans9 and are summarized as follows:
9 Note 6 supra.
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i) ‘In an infringement action [proceedings], the onus is on the plaintiff [applicant]
to show the probability or likelihood of deception or confusion. It is not
incumbent upon the plaintiff 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 establish that a substantial number of such persons will be
deceived or confused.
ii) When comparing the two marks, regard must be had to the similarities and
differences in the two marks;
iii) An assessment must be made of the impact which the defendant's mark
would make upon the average type of customer who would be likely to
purchase the kind of goods to which the marks are applied.
iv) This notional customer must be conceived of as a person of average
intelligence having proper eyesight and buying with ordinary caution.
v) The comparison must be made with reference to the sense, sound and
appearance of the marks.
vi) The marks must be viewed as they would be encountered in the market place
and against the background of relevant surrounding circumstances. The
marks must not only be considered side by side, but also separately.
vii) It must be borne in mind that the ordinary purchaser may encounter goods,
bearing the defendant's mark, with an imperfect recollection of the registered
mark and due allowance must be made for this.
viii) If each of the marks contains a main or dominant feature or idea the likely
impact made by this on the mind of the customer must be taken into account.
As it has been put, marks are remembered rather by general impressions or
by some significant or striking feature than by a photographic recollection of
the whole.
ix) Consideration must be given to the manner in which the marks are likely to be
employed as for example, the use of name marks in conjunction with a generic
employed as for example, the use of name marks in conjunction with a generic
description of the goods. In certain of the decided cases it has been held that
the Court should include in its comparison what has been termed the "notional
use" of the registered mark and of the alleged infringing mark…’
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18. In Adcock Ingram v Cipla, the court reasoned that when dealing with
pharmaceuticals (medication) the question dealing with confusing or
deceptive similarity raised in Section 14 must be answered with reference to
the patient, thus, incorporating the provisions of Section 22F 10 of the
Medicines and Related Substances Act. In the court’s words:
‘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.’11
Analysis
19. Before going any further, it is convenient to first dispose of the point raised by
Appellant regarding the approval of its mark by the Medicine’s Control
Council. Appellant suggests that sufficient weight ought to have been given to
the fact that the Medicines Control Council had considered, approved and
allowed registration of the trade mark REZALTO, as a generic equivalent of
the first respondent’s XARELTO, on the basis that XARELTO and REZALTO
10 The section in the relevant parts reads:
22F. 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;
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.
11 Footnote 7 supra, paragraph 30
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trade marks are not confusingly similar. It will be recalled that the same
defence was raised by Cipla in Adcock Ingram v Cipla Medpro. However, the
court rejected the defence as set out in the paragraph immediately below:
‘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’.12
20. Coming back to the court a quo’s finding of confusing and deceptive similarity,
the reasoning of the court in relation to the question of confusing and
deceptive similarity is located in paragraph 9 of its judgment and it reads:
‘A simple side by side comparison of XARELTO and REZALTO is apt here.
XARELTO is pronounced as ZA-RELTO. ZA-REL-TO and RE-ZAL-TO share
phonetic elements, namely, ZA, RE, ELTO/ ALTO. These are made up words
bearing no meaning and there is no confusion arising on meaning. From a
phonetic, including pronounced and ‘mouthed’ perspective; the above trademarks
are similar, actually very similar and to the extent of being confusingly similar. The
trademarks are also similar visually. These trademarks are so similar that saying
the two trademarks one after the other is not easy (creating in the process a
‘tongue twister’) and one has constantly to remind oneself of which litigant owns
which trademark.’
12 Footnote 7, paragraph 19.
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21. Quoting from Adcock Ingram, the court was critical of what it saw as
Appellant’s ‘emphasis on the prescription and dispensing of medicine
occurring at the instance of doctors and pharmacists who can distinguish
between pharmaceutical products.’ The learned Judge a quo was of the view
that Appellant’s case disregarded the impact of Section 8 of the National
Health Act, which affords the patient the right to participate in ‘any decision
affecting his/her personal health and treatment’. The learned Judge reasoned
that,
‘the exclusion of substantive reference and consideration of the patient/consumer
circumstances when presented with XARELTO and REZALTO, renders first
respondent’s presentation of its case substantially and substantively incomplete’
and that such was fatal to its case.
22. In Casadobe Props 60 (Pty) Ltd v Fratelli Martini Secondo Luigi SpA13, the
court cautioned, with reference to Orange Brand Services Limited v Account
Works Software (Pty) Ltd14 that the question of whether there is likelihood of
confusion or deception is a question of fact, and that decided cases are of
little assistance, save insofar as they lay down any general principle. How then
should a court approach its task of making a value judgment? In Yuppichef
Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd, it was said that value
judgment ‘is largely a matter of first impression and there should not be undue
peering at the two marks to find similarities and differences’ 15
13 (759/2023) [2025] ZASCA 14 (25 February 2025), paragraph 10.
14 [2013] ZASCA 158. (SCA); 2013 JDR 2750 (SCA).
15 (1088/2015) [2016] ZASCA 118; 2016 BIP 269 (SCA) (15 September 2016), paragraph 26.
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23. In Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd
and Another, the court elaborated on the issue of value judgment and
cautioned:
‘We have had ample time for full consideration and close comparison of the two
trademarks with which we are concerned. These advantages, however, carry their
own dangers. They have caused us to look at the trademarks with far greater care
than they would be looked at by the members of the public whose probable
reactions we are required to assess, and with a far keener awareness of
similarities and dissimilarities than such people would probably have as they go
about their daily lives.
What we have now to do is, therefore, to transport ourselves, notionally, from the
court-room or the study, to the market place. We must try to look at the marks as
they will be seen, if they are both in fair and normal commercial use, by the
hypothetical consumers of [wine]. Those will be people of many races and
degrees of education, having varied gifts, interests and talents. We are not to
postulate the consumer of “phenomenal ignorance or extraordinarily defective
intelligence”. . . We are to consider a person of average intelligence and proper
eyesight, buying with ordinary caution.’16
24. In terms of Plascon Evans17, if each of the marks contains a main or dominant
feature or idea the likely impact made by this on the mind of the customer
must be taken into account. In addition, marks are remembered rather by
general impressions or by some significant or striking feature than by a
photographic recollection of the whole. Against this background I now
compare the two marks.
16 (503/2013) [2014] ZASCA 173; 2014 BIP 294 (SCA) (19 November 2014), paragraph 5.
17 Note 6 supra.
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25. Appellant says XARELTO and REZALTO are distinguishable in appearance,
sound, and meaning. The first letter of Respondent’s trade mark is X whereas
Appellant’s is R. This, according to Appellant is very important as consumers
will likely focus on the first letter of each mark when considering them. The
first three letters of the respective trademarks are individually different
resulting in prefixes XAR and REZ and, even the first two XA and RE are still
totally different. Consumers will generally focus on the first part or prefix of
each mark when considering the respective marks. These differences,
averred Appellant, will no doubt lead to a totally different interpretation of the
make-up of the respective trade marks, thus preventing any likelihood of
confusion or deception.
26. In fact, submits Appellant, the first four letters of each of the marks, XARE and
REZA, further serve to distinguish the respective marks. This is particularly
important as it is trite that consumers will focus on the first part of the mark
when considering it; and the suffixes of the marks also differ as ELTO and
ALTO. On phonetic comparison, Appellant states that XARELTO AND
REZALTO are phonetically different. This is apparent from the first syllable of
each of the marks, XAR (pronounced as ZAR) and REZ, which are in no way
similar from a phonetic perspective.
27. Due to the prominence that will be given to the prefix by the consumers, the
marks are likely to be pronounced as XAR-ELTO and RES–ALTO,
pronunciation that is in no way similar. This will have the result that both parts
(prefixes) of each mark will be emphasized and maintain independence and
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meaning. Conceptually, REXALTO and ZARELTO consist of coined words,
without meaning, As such, the trade marks are not conceptually similar. The
marks, stated Appellant, cannot be said to be confusingly similar.
28. As to how the marks will be encountered in the market, Appellant submits
that its REZALTO similar to the Respondent’s XARELTO will be prescribed
by doctors and dispensed by pharmacist who are trained to distinguish
between pharmaceutical products. Further, where the trademarks are so
different, such as in the present case, the notional consumer will not be
confused between Respondent’s XARELTO and Appellant’s REZALTO in
true market conditions, especially if one takes into consideration the product’s
intended use, which is very specific, and that the drug is to be prescribed by
a medical practitioner and dispensed by a pharmacist. Appellant submits, a
decision to purchase or the purchase of prescribed medication is not the type
of purchase that is rushed. The suggestion here is that the purchase or the
decision will be approached with the necessary caution.
29. Respondent says, the prefix of its mark is typically pronounced as ZAR, thus,
the respective marks are therefore likely to be pronounced as ZA-REL-TO and
RE-ZAL-TO. Respondent says that both marks share similar phonetic
elements ZA, RE, LTO/ALTO. Therefore, the marks are confusingly similar
from a phonetic perspective. On the issue of allowance for imperfection,
Respondent averred that, patients who are not used to dealing with different
pharmaceutical products could easily mispronounce the respective marks and
be confused and thus end up believing that both products are one and the
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same. As to how the two marks will be encountered, Respondent averred that
its mark will be used in relation to prescription medication and so will be
Appellant’s REZALTO mark which will be used as a generic version of the
XARELTO product.
30. Respondent further notes that in terms of section 22F of the Medicines and
Related Substances Act18, unless instructed otherwise by the prescribing
doctor, if generic alternatives to the original patented drug are available, it is
mandatory for the pharmacist to suggest such alternatives to the patients.
Patients are therefore likely to encounter both products for the first time when
they visit the pharmacy with their prescription. In that context, patients will not
have the opportunity to look at the respective marks and compare them
visually. Patients will most likely be presented their options verbally and will
make a decision based on what they hear as opposed to what they see,
suggests Respondent. In that context, phonetic similarity plays a far more
significant role than visual similarity. Respondent added, before finally
submitting that the marks are confusingly and deceptively similar, that
Appellant’s registration covers pharmaceuticals being goods that are identical
to the goods for which the Respondent’s trade mark is used and registered.
31. To illustrate the point, Respondent suggested an example of two patients
discussing their medication, where one of the patients is sharing the benefits
of using Respondent’s XARELTO medication. The second patient, who will
18 Act 101 of 1965.
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be encountering the medication for the first time, visits the pharmacy with a
script for the same medication, and the pharmacy recommends the generic,
ZARELTO, as they are required to do in terms of Section 22F. In these
circumstances, suggests Respondent, the patient would not be able to make
the distinction, because of the confusing similarity in the two marks.
32. A further point the court was requested to consider is that the medication is
typically prescribed to elderly patients. It is well known, suggests Respondent,
that as a person ages, their hearing and visual ability tends to deteriorate. In
that case, continued the argument, elderly patients would likely be confused
or deceived into believing that there is a connection between Appellant’s and
Respondent’s medication. Respondent adds that people, including doctors
and pharmacists, have imperfect recollection, in particular for words that have
no meaning and are difficult to pronounce.
33. The two marks consist of seven letters XARELTO and REZALTO. Appellant’s
mark emphasizes REZ or even REZA, whereas Respondent’s emphasizes
XAR or even XARE or ZARE as it is pronounced. These, in my view, are the
dominant features of the two marks. I agree with Appellant that from a visual
and phonetic perspective, there is a fundamental difference between the two
marks. Even if one were to consider the first letter of the two marks R and X,
the two letters are distinguishable phonetically with Appellant’s sounding
‘rrrhhhhhh’, while Respondent’s makes the sound ‘zzzzzzzz’. I align myself
with the court’s remarks when distinguishing the marks, CANTO and CANTI,
where it was said:
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‘even though CANTO and CANTI are both five letters long and have the same
first four letters, the ‘I’ and ‘O’ at the end of the marks make a huge difference.
They determine the different visual cues, tones and senses of the two marks. It is
improbable that consumers would be deceived or confused.’
34. In considering whether there will be likelihood of confusion or deceit, we are
required to notionally transport ourselves to the market place and consider
how the two marks are to be encountered by the notional consumer, whom,
in terms of Section 22F of the Medicines and Related Substances Control
Act19, and Section 8 of the National Health Act, must be involved in decision
making. Both parties submitted that the consumer will be issued a doctor’s
prescription note and a pharmacist will issue the medicine. Respondent
suggested strongly that the consumer will likely make a decision based on
what they hear rather than what they see. The consumer we must postulate
is one of average intelligence and proper eyesight, buying with ordinary
caution, (Plascon Evans). Consequently, a customer with imperfect
recollection may remember Appellants medication as something starting with
REZ or even REZA something while Respondent’s is ZARE’ or even ZAREL
something. There simply is no probability of confusion nor deception as I have
illustrated.
Notional use
35. As was said in both Plascon Evans and Adcock Ingram cases, in making the
necessary comparison, the court is not confined to the manner in which the
parties have actually used their respective marks; it may have regard to how
19 (Act No. 101 of 1965).
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the paties can use the marks in a fair and normal manner. Here we must bear
in mind the broad range of the preparations covered by Appellant’s mark and
the fact that it can place in the market preparations that do not require a
doctor’s prescription note. We must answer this question for the protection of
the public, as was said in Adcock Ingram20. In my view, even taking into
account the broad coverage of Appellant’s mark, there is simply no probability
of confusion or deception, and that is based on the reasoning in this judgment.
Conclusion
36. In order for Respondent to succeed in its pursuit of an interdict in terms of
Section 34(1), it had to demonstrate before the court that its rights, as acquired
under the registration of the mark XARELTO, are being infringed by Appellant
based on (a) the unauthorised use in the course of trade, (b) in relation to
goods or services in respect of which the trade mark is registered, ( c) of an
identical mark or of a mark so nearly resembling it as to be likely to deceive
or cause confusion. It is common cause that the goods in question are
identical. However, based on the reasoning in this judgment, there is no
resemblance in the two marks nor can it be said the marks are confusingly or
deceptively similar. Thus, the court a quo’s conclusion that the two marks ae
confusingly and deceptively similar was incorrect. The appeal must succeed.
Order
1. The appeal is upheld with costs, including the costs of two counsel.
20 Footnote 7 supra, paragraph 15.
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2. The Court a quo’s order is set aside and replaced with the following:
‘The application is dismissed with costs.
—— ————
BAM J
JUDGE OF THE HIGH COURT
OF SOUTH AFRICA, GAUTENG
DIVISION, PRETORIA
Date of Hearing: 28 January 2026
Date of Judgment: 21 April 2026
Appearances:
Counsel for the Appellant: Adv R Michau SC & Adv J.A
Booyse
Instructed by: Bouwers Inc
c/o Nelis Britz Attorneys
Val-De-Grace, Pretoria
Counsel for the Respondent: Adv G Marriott SC & Adv N
Moshiane
Instructed by: Adams & Adams
Lynnwood Manor, Pretoria
Page | 23