When determining whether there is a likelihood of confusion and/or deception occurring between trade marks, in terms of the Trade Marks Act 194 of 19931, various factors are taken into consideration, including who the “notional consumer” would be for the goods and/or services for which the respective trade marks are used and/or registered2.
When it comes to prescription medications, whilst the ultimate consumer is obviously the patient, it has been an accepted view that the patient does not play much of a role when being prescribed medicine by medical professionals. The enquiry was not if a patient would be confused, but rather whether a medical professional or pharmacist would be likely to be confused between medications with similar names, resulting in the wrong medication being prescribed to patients. Therefore, the “notional consumer” for this enquiry was not the patient, but rather the medical professionals and/or pharmacists.
It was held in Adcock-Ingram Laboratories Ltd v Lennon Ltd3 that it was the doctor’s responsibility to prescribe what a patient should have, and his alone. This case concerned the alleged passing-off of a medicinal tablet (STILPANE) as if it were another (STOPAYNE). It was also held that the provision of a prescription drug by a medical practitioner is a definitive, deliberate act with full knowledge of the contents of the medicine and its pharmacological action. A medical practitioner will not rely on a vague recollection of the medication, nor will a pharmacist be confused since he may sell only on prescription. Therefore, there is not much room for the patient to be confused and the only sphere in which confusion could arise is on the prescription by the medical practitioner, which is unlikely to occur.
The Supreme Court of Appeal, in its judgement of 29 March 2012 involving the case of Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another4, had a different view on the matter. The case dealt with an appeal against a decision of the court a quo, dismissing an application by Adcock Ingram Intellectual Property (Pty) Ltd and Another (hereinafter referred to as “the Appellant”) to remove from the Trade Marks Register trade mark registration no. 2004/05322 ZEMAX in class 5 in the name of Cipla Medpro (Pty) Ltd. This registration was filed on 5 April 2004. The Appellant’s application was based on Section 24 of the Trade Marks Act, read with sections 10(12) and 10(14) of the Act. However, it was only necessary for the Appeal Court to consider section 24, read with 10(14) of the Act.
Section 24(1) of the Act allows any interested person to make an application to the court, or the Registrar of Trade Marks to rectify any entry wrongly made or remaining on the Trade Marks Register. Section 10(14) prohibits the registration of 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. Therefore, if any registered trade mark contravened section 10(14) of the Act and should not have been registered, it may be considered an entry wrongly made and wrongly remaining on the Trade Marks Register, and be liable to cancellation.
The Appellant relied on its prior trade mark registration no. 1998/14391 ZETOMAX in class 5, which was filed on 13 August 1998. The court a quo considered whether the marks ZEMAX and ZETOMAX were confusingly similar. Both the marks ZEMAX and ZETOMAX were used in relation to products that fall under schedule 3 of the Medicines and Related Substances Act5, and may be dispensed only by pharmacists, a pharmacist’s intern or assistant acting under the personal supervision of the pharmacist, manufacturers and wholesale dealers, medical practitioners and dentists, veterinarians, practitioners and nurses or persons registered under the Health Professions Act6, and then only under strict conditions. Generally, only a medical practitioner may prescribe schedule 3 substances and a pharmacist may dispense it only on prescription.
The court a quo followed the approach in Adcock-Ingram Laboratories Ltd v Lennon Ltd, as mentioned above, and held that, due to the restrictions on prescription medications, confusion and/or deception was unlikely to occur. The Appeal Court held that this approach does not have a sense of reality in modern circumstances where patients play, and are expected to play, an active role in relation to their own health. The patient should not be seen as a passive bystander in the process of providing him or her with treatment and medication. Section 8 of the National Health Act7 gives the patient the right to participate in any decision affecting his or her personal health and treatment. Furthermore, patients often discuss their medication among themselves and with their doctors. They exchange information on which product they find most effective. This information may then be discussed with their doctors or pharmacists when the issue of substituting a medicine for a generic or a more expensive innovator product is raised. Often patients provide the name of their medicines, particularly chronic medication, to the medical practitioners treating them. They discuss the advantages and disadvantages with them and consider different options. Whatever the position may have been in 1983, when the case Adcock-Ingram Laboratories Ltd v Lennon Ltd was decided, the patient is no longer a passive bystander when treated and receiving prescribed medication.
In addition, the provisions of section 22F of the Medicines and Related Substances Act widen the scope of the enquiry to be made. This section deals with generic substitution or interchangeable multi-source medicines and requires a pharmacist to inform members of the public visiting the pharmacy of the benefits of a generic substitute for the “branded medicine”. The pharmacist may then substitute the generic for the prescribed medicine, unless he is forbidden to do so by the patient. It was submitted that the effect of section 22F was to extend the “notional consumer” to people beyond the prescribing doctor and pharmacist to include also the patient or ultimate consumer.
The question whether the mark ZEMAX is likely to deceive or cause confusion with the mark ZETOMAX, as section 10(14) requires, must be answered with reference not only to the specialised market of prescription medication, 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 a small likelihood of a medical practitioner or pharmacist being deceived or confused, but the enquiry does not end there.
The marks ZEMAX and ZETOMAX were found to be visually and phonetically confusingly similar. Furthermore, 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 confusing8. Therefore, the Appeal Court concluded that the Appellant had succeeded in showing that a substantial number of consumers would be likely to be confused and/or deceived by the similarity between the marks ZEMAX and ZETOMAX. The appeal was upheld with costs.
Written by Phillip Haupt – Senior Associate, Trade Mark Litigation, Adams & Adams
Verified by – Mariëtte du Plessis, Senior Partner, Trade Mark Litigation, Adams & Adams
1See sections 10(14), 10(15), 34(1)(a) and 34(1)(b) of the Act
2 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A)
3 1983 (2) SA 350 (T)
4 2012 (4) SA 238 (SCA)
5 Act 101 of 1965
6 Act 56 of 1974
7 Act 61 of 2003
8 Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) in para 10 at 948C – D, referring to Sabel BV v Puma AG, Rudolf Dassler Sport  RPC 199 (ECJ) at 224