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[2018] ZASCA 64
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Novartis v Cipla Medpro (Pty) Ltd (728/17) [2018] ZASCA 64; 2018 BIP 268 (SCA) (24 May 2018)
THE
SUPREME COURT OF APPEAL
OF
SOUTH AFRICA
JUDGMENT
Not
reportable
Case No: 728/17
In
the matter between:
NOVARTIS
A G
APPELLANT
and
CIPLA MEDPRO
(PTY) LTD
FIRST
RESPONDENT
THE REGISTRAR
OF TRADE MARKS SECOND
RESPONDENT
Neutral
citation:
Novartis v Cipla Medpro
(Pty) Ltd
(728/17) [2018] ZASCA
64 (24 May 2018)
Coram:
Lewis, Ponnan, Leach, Saldulker and Mathopo
JJA
Heard:
8 May 2018
Delivered:
24 May 2018
Summary:
Trade mark – application for
registration of a mark – opposition by holder of previously
registered mark under s 10(14)
of
Trade Marks Act 194 of 1993
–
onus on applicant to show no likelihood of confusion or deception
between its mark and mark already registered –
likelihood of
confusion between the marks CURIDA and CURITAZ.
ORDER
On appeal
from:
Gauteng Division of the High
Court, Pretoria (Makume J sitting as court of first instance):
1 The appeal
is upheld with costs, such costs to include the costs of two counsel.
2
The order of the court a quo is set aside and substituted with the
following:
‘
(a)
The opposition to trademark application no 2009/23111 CURIDA in class
5 is upheld;
(b)
Trademark application no 2009/23111 CURIDA in class 5 is not
permitted to proceed to registration; and
(c)
The trademark applicant, Cipla Medpro (Pty) Ltd, is ordered to pay
the costs of the trademark
opponent, Novartis AG.’
JUDGMENT
Leach JA
(Lewis, Ponnan, Saldulker and Mathopo JJA concurring)
[1] Are the
names CURIDA and CURITAZ so similar that their use ‘would be
likely to deceive or cause confusion’ as envisaged
in s 10(14)
of the Trade Marks Act 194 of 1993 (the Act)? That is the question
which lies at the heart of this appeal. It was answered
in the
negative by the court a quo which, however, granted leave to the
first respondent to appeal to this court. I must immediately
record
that the second respondent, the Registrar of Trade Marks (the
Registrar), did not appear either in this court or the court
below
and clearly abides our decision.
[2] On 2 July
2008, the appellant, a company incorporated in Switzerland, applied
for registration under the Act of the trade mark
CURITAZ, in class 5
in respect of ‘pharmaceutical preparations containing
piperacillin and tazobactam’. Its trade mark
application no
2008/15000 was accepted on 25 March 2009, advertised on 24 June 2009
and granted on 23 August 2010.
[3] In the
meantime, on 18 November 2009, the first respondent applied to the
Registrar to register the trade mark no 2009/23111
CURIDA, also in
class 5, ‘in respect of pharmaceutical and veterinary
preparations; sanitary preparations for medical purposes;
dietetic
substances adapted for medical use; food for babies, plasters,
materials for dressings: material for stopping teeth, dental
wax;
disinfectants; preparations for destroying vermin; fungicides,
herbicides’. Acceptance of this application was advertised
in
the Patent Journal on 26 January 2011.
[4] Learning
of the first respondent’s application, the appellant proceeded
to oppose it under s 21 of the Act. In doing so,
the appellant relied
upon s 10(14) of the Act which provides that a mark shall not be
registered if it is ‘a mark which is
identical to a registered
trade mark belonging to a different proprietor or so similar thereto
that the use thereof in relation
to goods or services in respect of
which it is sought to be registered and which are the same as or
similar to the goods or services
in respect of which such trade mark
is registered,
would be likely to deceive or
cause confusion
. . .’(my emphasis).
[5] The
appellant’s opposition to the first respondent’s
application was founded on the contention that the first respondent’s
proposed mark, CURIDA, would be likely to so deceive or cause
confusion with its mark, CURITAZ. This the first respondent disputed.
The Registrar, acting under s 59(2) of the Act, referred the matter
to the Gauteng Division of the High Court, Pretoria for it
to
determine the matter. As stated at the outset, that court concluded
that there was unlikely to be confusion between the two
marks. It
therefore dismissed the appellant’s application and directed
the Registrar to proceed to register the CURIDA trade
mark, subject
to a limited specification covering ‘antibiotics,
pharmaceutical preparations containing a combination of amoxycillin
and clavulanic acid.’
[6] I must
immediately mention that as the appellant’s registration
preceded the relevant trademark application brought by
the first
respondent by more than a year, the overall onus was on the first
respondent who sought registration to satisfy the court
a quo that
there is no reasonable probability of confusion or deception. The
reason for this was set out long ago by Murray J in
J
W Jagger and Co Ltd
,
[1]
who stated that an applicant seeking to register a mark:
‘
. . .
is seeking a privilege, not a right to which he is entitled. He has
at his command a practically unlimited field from which
to select a
mark suitable to his purpose and in view of the substantial
advantages derived by him from registration it is but equitable
that
he should, where necessary, adduce proof of the absence of that
likelihood of deception which is vaguely fatal to the grant
of his
application. It may well be that in the first instance, and in the
absence of opposition, no proof need be demanded of him:
once,
however, an objector alleges the likelihood of deception, it is, I
think, the applicant’s duty to disprove such likelihood.’
[2]
[7] This
approach has been followed in a line of decisions of this court
[3]
and can now be regarded as well settled, as was correctly conceded by
counsel for the first respondent. In the present case, however,
the
court a quo stated that the onus was on the appellant, who opposed
the first respondent’s application to register its
mark, to
satisfy it that the two marks are so similar that there was a
reasonable possibility of confusion being caused amongst
a
substantial number of consumers. In the light of what I have just
said, it clearly misdirected itself. Fortunately, nothing really
turns on this misdirection to decide the issue in this court.
[8] Before
proceeding to deal with the court a quo’s conclusion, there are
two further issues that must be mentioned. The
first is that although
the appellant uses its CURITAZ trademark in relation to antibiotics
elsewhere in the world, it has not yet
done so in this country (and
in any event did not rely on its actual use elsewhere in support of
its opposition). Secondly, the
first respondent’s application
to register the trademark CURIDA is fairly broadly described, as set
out in Paragraph 3 above.
In the opposition application, however, it
stated that it intends to register an antibiotic with the Medicines
Control Council
under the name CURIDA, and to submit an application
to the Registrar to limit the trade mark registration, once granted,
to the
limited specifications set out in the order eventually granted
by the court a quo as quoted above. Consequently, the matter was
argued on the understanding that both the appellant’s mark,
CURITAZ, and the first respondent’s mark, CURIDA, will
be
restricted to use on scheduled antibiotic products which only doctors
will be able to prescribe and pharmacists dispense. They
are thus
similar ‘goods’ as referred to in s 10(14).
[9] In the
light of this, I turn to the essential issue between the parties,
namely, whether the mark the first respondent seeks
to register is so
similar to that already registered by the appellant that it ‘would
be likely to deceive or cause confusion’
as envisaged by that
section. As was pointed out by this court in
Roodezandt
Wynmakery Ltd
,
[4]
‘deception’ will result where members of the purchasing
public are caused to assume that the goods come from the same
source
whilst ‘confusion’ is where those persons will be caused
to wonder if the goods had a common origin.
[10] The
approach to be adopted in deciding upon the likelihood of potential
confusion or deception is well settled. The question
is a matter of
fact to be determined in the light of the particular circumstances of
each individual case, and calls for a value
judgment to be made in
regard to a mark’s essential function, namely, to indicate the
origin of the goods in connection with
which it is used.
[5]
However, as this court pointed out in
Yuppiechef
,
[6]
that value judgment ‘is largely a matter of first impression
and there should not be undue peering at the two marks to find
similarities or differences’. In addition, as was said by
Laddie J in
Compass Publishing BP
,
[7]
a passage cited with approval in both this court
[8]
and the England and Wales Court of Appeal:
[9]
‘
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 perceives 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 the
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 economically linked undertakings,
there is a likelihood
of confusion.’
[11] The
cases dealing with the approach to be adopted in assessing the
prospect of confusion and deception in the context of competing
marks
are legion,
[10]
and no point would usefully be served in repeating or attempting to
restate what has been said before. Suffice it to say that in
addition
to what I have already set out, Brand JA in
Roodezandt
[11]
set out certain of the pertinent principles of comparison, which he
felt could be crystallised from previous decisions, as follows:
‘
(a)
A likelihood of confusion does not only arise when every person
interested or concerned
in the class of goods for which the trademark
has been registered could probably be deceived or confused. It also
arises if the
probabilities establish that a substantial number of
such persons will be deceived or confused.
(b)
The concept of deception or confusion is not limited to inducing in
the minds of these
interested persons the erroneous belief or
impression that the two competing products are those of the objector
or that there is
a connection between these two products. A
likelihood of confusion is also established when it is shown that a
substantial number
of persons will probably be confused as to the
origin of the products or the existence or non-existence of such a
connection.
(c)
The determination of the likelihood of confusion involves a
comparison between the
two competing marks, having regard to the
similarities and differences in the two and an assessment of the
impact it would have
on the average type of customer who is likely to
purchase the kind of goods to which the marks are applied.
(d)
The marks must not only be considered side by side, but also
separately.
(e)
It must be borne in mind that the ordinary purchaser may encounter
goods bearing one
mark with an imperfect recollection of the other.
(f)
If each of the competing marks contains a main or dominant feature or
idea, the likely
impact made by this dominating feature on the mind
of the customer must be taken into account. This is so because marks
are remembered
by some significant or striking feature rather than by
the photographic recollection of the whole.’
[12] Bearing
the above in mind, I turn to the two competing marks. In their
script, the similarity between the two words CURIDA
and CURITAZ is
self-evident. Indeed had the latter word not ended with the letter Z,
confusion would have been inevitable, both
aurally and visually. But
does the Z do away with what would otherwise have been obvious
confusion?
[13] The
court a quo held that the two marks were set apart by their suffixes,
‘TAZ’ in the case of the appellant’s
mark and ‘DA’
in that of the first respondent. It concluded these differing
suffixes ‘will stick in a person’s
memory’ so that
there was no likelihood of deception or confusion. There seem to me,
however, to be a number of reasons why
the differences are not so
obvious.
[14] First,
common to both marks is the prefix CURI. It is a matter of simple
common sense that the presence of a common element
in word marks has
an important bearing on the issue of confusion between them. As
a prefix, CURI is both uncommon and phonetically
striking. Second, it
is well known that the first syllable of a word is generally the most
important in considering the likelihood
of confusion.
[12]
That is all the more so in cases in which, like here, there is a
common prefix which is both striking and inventive. Then there
is the
fact that the Z at the end of the suffix TAZ is possible of a
pronunciation that may be either hard (as in ‘tazz’)
or
soft (as in ‘us’), and in the latter event the words
CURITAZ and CURIDA would be more readily capable of aural or
phonetic
confusion. To me, the common prefix, CURI, rather than the respective
suffixes, is the dominant part of the two marks.
[15] I am
therefore of the view that the court a quo placed undue emphasis upon
the differing suffixes in considering the question
of confusion
between the marks. In order to attempt to meet this, however, counsel
for the first respondent emphasised the nature
of the two products
and the limited market in respect of which they would be sold. He
stressed that in terms of its present specification,
the appellant’s
CURITAZ is a schedule 4 antibiotic which is administered
intravenously by infusion. It is regulated by the
Medicines and
Related Substances Act 101 of 1965
, has to be dispensed by a
pharmacist in accordance with a doctor’s prescription, and may
not be advertised other than to
medical professionals under
s 10
of
that Act. He emphasised that the same market factors and legislative
restrictions will apply to the first respondent’s
CURIDA
antibiotic, and that both goods will therefore be available only in
this highly regulated, professional and controlled market
environment, all of which will substantially reduce any possibility
of error. Put somewhat differently, the argument was that healthcare
professionals, with specialised knowledge of their area of expertise,
will not be confused by the two different names.
[16] There
are, however, two answers to this. The first is to be found in the
judgment of this court in
Adcock Ingram v
Cipla Medpro
[13]
which dealt with whether the trademarks ZEMAX and ZETOMAX were likely
to cause deception and confusion. Relying on the comment
in
Adcock-Ingram Laboratories Ltd v
Lennon Ltd
that
it is the ‘doctor’s responsibility as to what the patient
should have, and his alone’
[14]
counsel for the respondent in that case contended there would
probably be no possibility of confusion between those two marks when
compared in the context of the specialised pharmaceutical market in
which they would be used by trained medical professionals and
not
members of the general public. This was essentially the same argument
advanced by the first respondent in this matter. In rejecting
it,
Malan JA stated:
[15]
‘
The
remark in
Adcock-Ingram
Laboratories Ltd v Lennon Ltd
. . . that it is the ‘doctor’s responsibility as to what
the patient should have, and his alone’, has a sense
of
unreality in modern circumstances, where patients play, and are
expected to play, an active role in relation to their own health.
It
reduces the patient to a passive bystander in the process of
providing him or her with treatment and medication. Such an approach
is hardly reconcilable with
s 8
of the
National Health Act 61 of 2003
which gives the patient the right to participate ‘in any
decision affecting his or her personal health and treatment’.
Patients often discuss their medication among themselves and with
their doctors. They exchange information on which product they
find
most efficacious. This information may then be discussed with their
doctors or pharmacists when the issue of substituting
a medicine for
a generic or the more expensive innovator product is raised. Often
they provide the names of their medicines, particularly
chronic
medication, to the medical practitioners treating them. They discuss
the advantages and disadvantages with them. They consider
different
options. In a case of emergency a Schedule 3 medicine may be sold,
for use during a period not exceeding 30 days in accordance
with the
original prescription, if the pharmacist is ‘satisfied that an
authorised prescriber initiated the therapy’
[16]
– clearly on information provided by the patient. Whatever the
position may have been in 1983, the patient is no longer a
passive
bystander when treated and receiving prescribed medication.
[17] The
second answer lies in the nature of the application before the court
a quo. The infringement of one mark by another is
not an issue in
this matter as, in regard to
s 10(4)
proceedings, the court is to
have regard to the notional use of the marks in relation to all goods
covered by the legislation relied
upon. The question is therefore not
what the first respondent says it intends doing with its mark, but
what it will be permitted
to do if its application is granted. The
fact that the appellant’s antibiotic, presently administered in
a particular way,
might not be viewed as being in competition with
the first respondent’s antibiotic which is administered in a
different manner,
is irrelevant. Thus in
Jellinek’s
Application
,
[17]
cited with approval by this court both in
Bristol
Laboratories In v Ciba Trust
[18]
and in
Adcock Ingram v Cipla Medpro
,
[19]
Romer J said:
‘
The
onus
must be
discharged by the applicant in respect of all goods coming within the
specification applied for, and not only in respect
of those goods on
which he is proposing to use (the mark) immediately, nor is the
onus
discharged by proof only that any particular method of user will not
give rise to confusion; the test is: What can the applicant
do?’
In the light
of this, in
Orange Brand Services v Account
Works Software
,
[20]
Nugent JA went on to say:
‘
.
. . in opposition proceedings the question that falls to be decided
is not how the parties use or intend to use their marks, but
how they
would be entitled to use them if both were to be registered –
that is, how they might notionally be used. In this
case if both
marks were to be registered, the respective parties would be entitled
to use them in relation to computer software,
including software for
accounting, and the question is whether it would be likely to cause
confusion if both marks were to be used
in that way.’
[21]
[18] In the
present case, the issue therefore becomes whether confusion would be
likely should both marks be registered in respect
of antibiotics,
particularly if both were registered for human use. In answering that
question, the two marks must of course be
compared with each other.
But in doing so, they are not to be considered side by side and
subjected to minute examination. Regard
must rather be had to the
overall impression they create, bearing in mind their distinctive and
dominant components and taking
into account that there is a
likelihood of confusion if the buying public are caused to wrongly
believe that they come from the
same or economically linked
undertakings.
[19]
Importantly, as already mentioned, the dominant and striking feature
that immediately comes to mind is the common prefix CURI,
whilst the
effect of the different suffixes tends to diminish when the marks are
expressed orally. In my view these marks are indeed
likely to cause,
at least, initial confusion, even if it might be cleared up when
examined more closely. Moreover, in
Adcock
Ingram v Cipla Medpro
,
[22]
in concluding that the words ZEMAX and ZETOMAX, albeit different in
both spelling and pronunciation, were likely to confuse, this
court
said:
‘
A
patient, and perhaps also a professional, who knows only the one word
and has an imperfect recollection of it is likely to be
mistaken. One
must make allowance for imperfect recollection and the effect of
careless pronunciation rather than comparing the
two words letter by
letter or syllable by syllable. But looking at the two marks globally
and appreciating their similarities the
overall impression is that
they are so similar as to be confusing.’
[20] Bearing
those factors in mind, in this case, too, the similarities, both
aural and visual, between the words CURITAZ and CURIDA,
are such that
there is a real likelihood of members of the public, including
trained health-care professionals, being caused to
assume that the
goods come from the same source or wonder if the goods had a common
origin – put differently, being deceived
or confused. The court
a quo therefore erred in finding that there was no likelihood of
confusion. It ought to have held that there
was such a prospect and
that the first respondent had failed to discharge the onus of showing
the contrary. Accordingly, it ought
to have refused the first
respondent’s application to register its mark. In these
circumstances, the appeal must succeed
and there is no reason for
costs not to follow that event.
[21] The
following order is made:
1
The appeal is upheld with costs, such costs to include the costs of
two counsel.
2
The order of the court a quo is set aside and substituted with the
following:
‘
(a)
The opposition to trademark application no 2009/23111 CURIDA in class
5 is upheld;
(b)
Trademark application no 2009/23111 CURIDA in class 5 is not
permitted to proceed to registration; and
(c)
The trademark applicant, Cipla Medpro (Pty) Ltd, is ordered to pay
the costs of the trademark
opponent, Novartis AG.’
________________
L E Leach
Judge of Appeal
Appearances
For
Appellant:
R Michau SC (with him L
G Kilmartin)
Instructed
by:
Adams & Adams
Attorneys, Pretoria
Honey & Partners Inc, Bloemfontein
For First
Respondent: M Seale
Instructed
by:
Brian Bacon &
Associates Inc, Cape Town
Webbers, Bloemfontein
[1]
J W Jagger and Co Ltd v
Furnishers Cape (Pty) Ltd
1948
(3) SA 603 (T).
[2]
At 607.
[3]
See
Bristol Laboratories Inc v Ciba Ltd
1960 (1) SA 864
(A) at
869E to 870E and
Smithkline Beecham Consumer Brands (Pty) Ltd v
The Unilever plc
[1995] ZASCA 26
;
1995 (2) SA 903
(A) at 910A-B.
[4]
Roodezandt Wynmakery Ltd v Robertson Winery (Pty) Ltd
[2014]
ZASCA 173
; 2014 BIP 294 (SCA) para 4.
[5]
Cowbell AG v ICS Holdings Ltd
2001(3) SA 941 (SCA) para 10
and
Roodezandt Wynmakery
para 4.
[6]
Yuppiechef
Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd
(1088/2015)
2016 ZASCA 111
(15 September 2016) para 26.
[7]
Compass Publishing BP v Compass Logistics Ltd
[2004] EWHC 520
(Ch).
[8]
C
entury City Apartments Property Services CC & another v
Century City Property Owners’ Association
2010 (3) SA 1
(SCA) para 13 and
Dinnermates (Tvl) CC v Piquante Brands
International & another
(401/17)
[2018] ZASCA 43
(28 March
2018) para 13.
[9]
Maier & Anor v Assos Plc & Anor
[2015] EWCA Civ 220
para 80.
[10]
In addition to the decisions already mentioned, see eg
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A)
at 640G-641E,
Puma AG Rudolf Dassler Sport v Global Warming (Pty)
Ltd
2010 (2) SA 600
(SCA) para 8 and
Adidas AG & another
v Pepkor Retail Ltd
2013 BIP 203 (SCA) paras 20-23.
[11]
Paragraph 6.
[12]
Medicament v Smithkline Beecham Corp
[2004] FCJ 811 para 42.
[13]
Adcock Ingram Intellectual Property (Pty) Ltd & another v
Cipla Medpro (Pty) ltd 7 another
2012 (4) SA 238
(SCA)
(265/2011) [2012] ZASCA 39.
[14]
Adcock-Ingram Laboratories Ltd v Lennon Ltd
1983 (2) SA 350
(T) at 362 ff;
[1983] 4 All SA 68
(T) at 79 ff.
[15]
Para 24.
[16]
Section 22A(6)(
l
)
of the
Medicines and Related Substances Act.
>[17]
63 RPC 59
at 78.
[18]
Referred to in footnote 3, above.
[19]
Paragraphs 13-14.
[20]
Orange Brand Services Ltd v Account Works Software (Pty) Ltd
[2013] ZASCA 158
; 2013 BIP 313 (SCA) para 7.
[21]
Paragraph 6.
[22]
Paragraph 32.