specifications of the product tendered for, leaving little room for confusion. Moreover, in these institutions,
such as hospitals, medication is dispensed on prescription of medical practitioners by pharmacists.
[11] Furthermore, as far as the patient was concerned, it was said that although he or she may well know the
name of the product he or she was using:
". . . he may know that it emanates from some particular source he may even know that it is a product from the
appellant's laboratories, but he can make no use of such information. The patient cannot go to his chemist and insist
on being supplied with [the product], he must first go to the doctor and even here he cannot insist upon being
prescribed [the product]. It is the doctor's responsibility as to what the patient should have, and his alone. It follows
that the only sphere in which confusion could arise is on the prescription by the medical practitioner, and that
probability I have eliminated." 4
[12] The court below also disposed of the argument advanced by Adcock that for the purposes of section 10(14) of
the Act a comparison should be made of all the goods in respect of which the competing trade marks were
registered. The enquiry, it was argued, was not limited to a comparison between ZEMAX and ZETOMAX as
prescription medicines, but involved a consideration whether there could be confusion among a substantial
number of notional consumers of "pharmaceutical, veterinary and sanitary preparations; dietetic substances
adapted for medicinal use, food for babies; plasters, materials for dressings; disinfectants", in respect of
which ZETOMAX was registered. The case Cipla had to meet, the court below found, was confined to a
comparison between hypertensive pharmaceutical products. Since there was no suggestion in the evidence
that Cipla was manufacturing or distributing any of the other products within the ZETOMAX registration under
the ZEMAX trade mark or that it had "the slightest inclination to do so in the future" the application was
rejected on this basis as well.
[13] Although Adcock relied on the wider enquiry in its notice of application for leave to appeal it indicated in its
heads of argument in this court that it was not proceeding on this ground. However, the approach
View Parallel Citation
to be taken in determining the question whether a trade mark is precluded from registration by section 10(12)
or section 10(14) is a matter of law.
Page 6 of [2012] 3 All SA 1 (SCA)
[14] 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, unless the proprietor of such trade mark consents to the registration of
such mark."
[15] The trade marks ZEMAX and ZETOMAX were both registered in class 5 in respect of partly the same goods.
The registration of neither was limited to pharmaceutical preparations, least of all prescription medicines.
Section 10(14) prohibits the registration of a mark that is so similar to a registered trade mark belonging to a
different proprietor that the use thereof in relation to goods or services in respect of which it is or 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. The class in respect of which ZEMAX is
registered is not limited to "pharmaceutical preparations" but includes a host of other goods. In particular, a
pharmaceutical preparation under that name could be made available to the public otherwise than on the
basis of a prescription by a medical practitioner. It was stated in Bristol Laboratories Inc v Ciba Ltd:5
"The appellant has applied for the registration of his mark in respect of all goods in Class 3. It could therefore place
on the market a preparation which might also be readily procurable without prescription. It may be that the goods in
respect of which it intends to use the mark . . . are ethical preparations which can only be dispensed on a doctor's
prescription, but this factor is in no way conclusive. The question is not what the appellant says it intends doing, but
what it will be permitted to do if its application is granted in respect of all goods in Class 3. In my opinion it is correct
to say, as Romer J., held in Jellinek's Application, 63 R.P.C. 59 at p. 78, that
View Parallel Citation
'The onus must be discharged by the applicant in respect of all goods coming within the specification applied for, and
not only in respect of those goods on which he is proposing to use (the mark) immediately, nor is the��onus discharged
by proof only that any particular method of user will not give rise to confusion; the test is: What can the applicant
do?'" (My emphasis.)
Page 7 of [2012] 3 All SA 1 (SCA)
The reason for the rule embodied in section 10(14) is, as was stated by Lord Macnaghten in Eno v Dunn,6 the
protection of the public:
"The question is one between Mr Dunn and the public, not between Mr Eno and Mr Dunn. It is immaterial whether the
professed registration is or is not likely to injure Mr Eno in his trade."
[16] The court below was of the view that Adcock had not made out a case for the purposes of section 10(14)
calling for a comparison of all the goods in the specification of ZEMAX. I do not agree. It is difficult to
understand what else should have been pleaded or what other evidence could have been presented to