The North Gauteng High Court has ordered the Registrar of Trade Marks to remove Aspen's ANDSOSEPT trade mark registration from his register. This follows competitor and producer of ANDOLEX – Wirra’s successful opposition to Aspen’s application for leave to appeal a ruling made in December last year, in which the High Court found that the trademarks were so similar as to be likely to cause confusion.
“After having been refused leave to appeal by the High Court in Pretoria, Aspen applied to the Supreme Court of Appeal for leave to appeal, but has now withdrawn that application”, says Dale Healy, partner at the law firm Adams & Adams. According to Healy, “This signals the end of Aspen's sale of its ANDOSEPT product”.
Aspen registered its ANDOSEPT trade mark in 2005 and launched a pharyngeal product under that name in 2008, this in direct competition with the market-leading product ANDOLEX. The ANDOSEPT product was placed on pharmacy shelves in packaging similar to that used for ANDOLEX.
Pursuant to a complaint lodged with the ASA by the owner of the ANDOLEX brand - lesser-known Australian company - Wirra, the ASA ordered Aspen to withdraw its packaging on the basis that it imitated the ANDOLEX packaging. Aspen changed its packaging but continued to sell its product under the trade mark ANDOSEPT, which prompted Wirra to take court action.
According to Dale Healy, trade mark partner at Adams & Adams - the southern hemisphere’s largest IP law firm, acting for Wirra - the company applied for a court order cancelling Aspen's ANDOSEPT trade mark and an interdict restraining its continued use of the mark.
“Wirra's case was that the mark ANDOSEPT is so similar to its trade mark ANDOLEX, which was registered twenty five years ago, as to be likely to deceive or cause confusion. In a surprising move Aspen undertook that, if its mark was cancelled, it would not continue to use it,” says Healy.
According to Healy the undertaking meant that the court did not have to consider Wirra's call for an interdict. Aspen's fate, therefore, depended entirely on whether or not its registered trade mark would survive the attack.
“The court found that the trade marks were indeed deceptively similar and ordered the cancellation of Aspen's mark. This was on the basis that it was incorrectly registered in the face of Wirra's registration for ANDOLEX and its established reputation in that mark and that Aspen's mark was an entry that wrongly remained on the Register of Trade Marks,” says Healy.
For more information contact:
Dale Healy, partner – Adams & Adams – 012 432 6000