MALAN JA:
[1] This is an appeal, with the leave of Prinsloo J, against his dismissal with costs of an application by the
appellants to remove from the register of trade marks the trade mark ZEMAX with registration number
2004/05322, dated 5 April 2004, in class 5 of Schedule 3 to the regulations under the Trade Marks Act 194 of
1993 (the "Act") 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."
[2] ZEMAX is registered in the name of the first respondent ("Cipla"). The second respondent, the Registrar of
Trade Marks, who was cited in his official capacity, did not oppose the application.
[3] The first appellant is the proprietor of the trade mark ZETOMAX with registration number 1998/14391, dated
13 August 1998 and subsequently extended, in class 5 in respect of:
"Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medicinal use, food for babies;
plasters, materials for dressings; disinfectants."
The second appellant is a licensee of the first appellant and manufactures and distributes pharmaceutical
products. I shall refer to both appellants as Adcock. Adcock contends that the trade mark registration ZEMAX
is an
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entry wrongly made on the register by virtue of the provisions of section 24, read with sections 10(12) and
10(14) of the Act.
[4] ZETOMAX is a generic medicine. Its active ingredient is Lisinopril, an angiotensinconvertingenzyme inhibitor
that is used for the treatment of moderate hypertension and certain cardiac conditions.
View Parallel Citation
ZETOMAX is sold in dosages of 5mg, 10mg and 20mg in three blister strips of ten tablets each per pack. The
medicine was sold under the name ZESTOMAX until 2001, when its name was changed to ZETOMAX.
[5] ZEMAX is also a generic medicine, containing Lisinopril as its active ingredient, and is used for the treatment of
the same conditions.
[6] Cipla was originally granted registration in terms of the Medicines and Related Substances Act 101 of 1965 by
the Medicines Control Council for its generic medicine under the name Prilosin, in 5mg and 10mg dosages, but
applied in April 2004 for a change from the name Prilosin 5 to ZEMAX 5 and Prilosin 10 to ZEMAX 10. The name
change was approved on 29 July 2004. The approval of the Council is required for the name under which a
medicine is registered.1 ZEMAX is sold in blister strips of 10 tablets packed in three strips per pack in dosages
of 5mg and 10mg.
[7] Infringement proceedings were instituted against Cipla in the Cape High Court. Judgment in favour of Adcock
was given on 9 February 2009 but an appeal to the full bench is pending. These proceedings for
expungement were brought because the registration of the ZEMAX was only discovered after judgment was
delivered in the infringement proceedings.
[8] Section 24 of the Act permits an interested party to apply for an order removing "an entry wrongly made in or
wrongly remaining on the register", in this case for the removal of the trade mark ZEMAX from the register of
trade marks. For reasons that will become apparent, I need deal only with section 10(14), which 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, unless the proprietor of such trade mark consents to the registration of such mark."
[9] The court below correctly accepted that the onus rested on Adcock to establish a "reasonable probability" of
confusion amongst a substantial number of purchasers.2 It came to the conclusion that Adcock failed to
discharge this burden. It relied primarily on the 1983 judgment in AdcockIngram Laboratories Ltd v Lennon
Ltd.3
Page 5 of [2012] 3 All SA 1 (SCA)
View Parallel Citation
[10] That case concerned the alleged passing off of a medicinal tablet (Stilpane) as if it was another (Stopayne).
The question whether "the alleged similarity of the trade marks, the colour of the tablets and their
formulation" was likely to cause confusion was considered by the court with reference to the specialised
market in which prescription drugs are sold. It said 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. The medical practitioner will not rely on a vague recollection of the medication. Nor will
the pharmacist be confused since he may sell only on prescription. When he is in doubt he would refer to the
script or back to the medical practitioner. Sales to institutions are usually made on tender, with detailed