The Supreme Court of Appeal (SCA) on Thursday 29 March 2012
ruled on a dispute between Adcock Ingram and Cipla Medpro on the
registered trade marks ZETOMAX and ZEMAX. Both products are
generics of "Lisinopril" used in the treatment of mild to
moderate hypertension and certain cardiac conditions. Both ZETOMAX
and ZEMAX are registered trade marks.
Adcock Ingram launched an application last year to the High
Court in Pretoria to have Cipla's registration for ZEMAX trade
mark cancelled on the basis that it is too similar to Adcock
Ingram's prior registered ZETOMAX trade mark. The High Court
dismissed Adcock Ingram's application and found in favour of
Cipla. Adcock Ingram appealed to the SCA.
The SCA last week overturned the High Court ruling and ordered
that Cipla Medpro's ZEMAX trade mark should be removed from the
Register of Trade Marks and in the process confirmed the right of
patients in South Africa to be involved in the process of deciding
on their medicine, even prescription medicine.
Cipla Medpro argued that as both ZETOMAX and ZEMAX can only be
obtained on prescription from a doctor that the only question is
whether doctors or pharmacists will be confused between the trade
marks ZETOMAX and ZEMAX. Cipla argued that these professionals are
trained not to be confused and therefore there is no possibility of
confusion between the trade marks ZETOMAX and ZEMAX. Cipla was
supported in its argument by a 1983 decision of the Pretoria High
Court that found that it is the "doctor's responsibility
as what the patient should have, and his alone".
In coming to its finding, the SCA took into account that Section
8 of the National Health Act 61 of 2003 gives patients the right to
participate "in any decision affecting his or her personal
health and treatment". The SCA also referred to Section 22(F)
of the Medicines and Related Substance Act which deals with generic
substitution. The SCA agreed with Adcock Ingram's arguments
that Section 22(F) in general creates an obligation on pharmacists
to inform patients of the advantages of generic substitution and in
this process patients form part of the decision making process and
consequently their views as to whether trade marks are confusingly
similar should also be taken into account.
The SCA remarked that the 1983 view expressed by the Pretoria
High Court that it is the doctor's responsibility only as to
what a patient should have had a sense of unreality in modern
circumstances where patients play an active role in relation to
Dr Abofele Khoele, Adcock Ingram's Medical Executive, said
"Adcock Ingram is delighted with this ruling. ZETOMAX will
continue to be available as a generic for the treatment of
hypertension and certain cardiac conditions".
Carl van Rooyen of patent and trade mark attorneys Spoor &
Fisher, the attorneys for Adcock Ingram, advised that the ruling of
the SCA has once and for all settled the question as to whether the
views of patients should be taken into account when asking the
question whether there is confusion between pharmaceutical brands.
The result is that pharmaceutical companies will have to be more
careful when choosing names for medicines so as to ensure that
there is no possibility of confusion with other medicines. He
further commented that this ruling could have far reaching
implications for Cipla as it will probably also result in Cipla
being forced to rebrand its ZEMAX product.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).