The case of Aspen Pharmacare Holdings Group & Pharmacare Limited v Adcock Ingram Healthcare (Pty) Ltd & Adcock Ingram Intellectual (Pty) Ltd, was recently heard in the High Court and judgment was delivered on 12 May 2025. Both Aspen and Adcock are prominent pharmaceutical groups in South Africa, each with a holding company and subsidiaries managing their intellectual property.
The facts in brief were that Aspen is the registered proprietor of the trade mark "MYBUCOD", registered in 2008 and used for 17 years without interference or challenge. In January 2025, Aspen discovered that Adcock had launched a competing pharmaceutical product under the name "LENBUCOD", and had applied to register this name as a trade mark.
Aspen sought an interdict and related orders to prevent Adcock from selling "LENBUCOD", arguing that the name was confusingly similar to "MYBUCOD" and amounted to trade mark infringement. Adcock opposed the application, contending that Aspen's trade mark was invalid and should not have been registered, as "BUCOD" was allegedly a non-distinctive, descriptive term derived from the name of the active ingredients (ibuprofen and codeine).
The court considered whether "LENBUCOD" was likely to deceive or cause confusion among consumers in relation to "MYBUCOD". The analysis focused on:
- Similarity of Marks: Both marks share the distinctive root "BUCOD", which had no prior commercial use before Aspen's registration. The court found that the dominant feature of both marks was "BUCOD", and that even with any prefix or suffix, any composite mark would inevitably be associated with Aspen's products.
- Consumer Perception: The products are only available through pharmacies and with the assistance of a pharmacist, but consumers often recall and request products by the dominant part of the name. Evidence from a practising pharmacist supported the view that "BUCOD" would be associated with Aspen's products.
- Market Context: For 17 years, only Aspen's products used "BUCOD", so the introduction of "LENBUCOD" would likely cause confusion or deception regarding the source or origin of the product.
- Legal Precedents: The court referred to
several past cases, emphasising that the presence of a common,
distinctive element in trade marks is significant in assessing the
likelihood of confusion. These included disputes concerning the
concurrent use of:
- the marks "CURITAZ" and "CURIDA", where the marks shared the uncommon and phonetically striking prefix "CURI", which was found to be the dominant part of the marks and likely to cause confusion, especially as the first syllable is generally the most important in such assessments;
- the marks "ZEMAX" and "ZETOMAX", both meaningless words, but the shared prefix "ZE" and suffix "MAX" made them markedly similar, with the difference in the middle syllable being insufficient to avoid confusion;
- the marks "ANDOSEPT" and "ANDOLEX" where the shared prefix "ANDO" was found to be likely to cause confusion;
- the marks "ORANGE" and "ORANGEWORKS" for computer software, where the dominant and distinctive feature "ORANGE" was found to overshadow the suffix, leading to probable confusion.
These precedents reinforced the principle that the presence of a common, distinctive element in trade marks is significant in assessing the likelihood of confusion, particularly when the element is not inherently descriptive and has acquired distinctiveness through use.
Adcock argued that "BUCOD" was descriptive and not distinctive, and thus the trade mark should not have been registered. The court rejected this, finding that "BUCOD" was a coined term, not inherently descriptive, and had acquired distinctiveness through long-standing use. The court also noted that Adcock itself had previously registered a trade mark containing "BUCOD" without any disclaimer [an entry against a trade mark which ensures that the trade mark owner does not acquire exclusive rights to the allegedly descriptive element], undermining its argument.
The court found in favour of Aspen, holding that Adcock's use of "LENBUCOD" infringed Aspen's trademark rights. The court ordered an interdict restraining Adcock from using "LENBUCOD" or any confusingly similar mark in relation to the relevant goods; the destruction of all materials bearing the infringing mark; and costs.
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.
