of the tablet sold by the applicant is identical or deceptively or confusingly similar to first respondent's registered
trade mark and that in the absence of the expungement application succeeding infringement of this mark will be
found to have been proved in terms of the provisions of both sections 34(1)(a) and (c) of the Act. The Augmaxcil
word mark, so the argument went, is deceptively or confusingly similar to Augmentin for the various reasons set out
in the founding affidavit and applying the relevant principles of law. Both marks commence with the prefix Aug and
are then followed by the letter M. The marks are used in relation to identical products. There are no other marks in
the class commencing with the prefix Aug followed by the letter M. The applicant has deliberately set out to use a
mark which is very closely similar to the Augmentin mark for the purposes of trading on the reputation and goodwill
attaching to this mark. Consequently it should be found to have infringed the first respondent's Augmentin mark in
terms of the provisions of section 34(1)(a) of the Act.
Even if deception or confusion is not found, so it was further argued, the conduct of the applicant is nevertheless
designed to take unfair advantage of or be detrimental to the distinctive character of the Augmentin shape and
word mark and that this conduct should be interdicted in terms of the provisions of section 34(1)(c) of the Act.
Finally, in this regard, it was submitted that both marks are wellknown marks in the Republic of South Africa in
terms of the provisions of section 35 of the Act and that the applicant should be held to have infringed the marks
on this basis as well.
Apart from the fact that I have indicated above why in my judgment the expungement application should succeed
the proper approach, it seems to me, to determine whether there is a likelihood or rather probability of deception or
confusion is to require the court notionally to transport itself from the court room to the particular market place and
to stand in the shoes of those who buy products sold under the competing trade marks.
Page 147 of [2001] 2 All SA 126 (T)
Respondents' case made out in the affidavit evidence filed in support of the counterclaim can be summarised as
follows: The applicant is selling in the course of trade, without the authority of the first respondent, antibiotics made
up in the form of tablets which are identical or virtually identical to the registered trade mark. Pharmacies employ
widely computer programs which use a form of prescriptive writing. In one such computer program which is in use, if
the letters AUG are typed in, the screen will immediately display, as the first in a series of products the trade mark
Augmaxcil. This will, almost inevitably, lead to wholesale deception and confusion arising between the applicant's
and respondents' products in the trade. The shape and configuration of the applicant's tablet are identical or
deceptively or confusingly similar to the Augmentin shape registered and the trade mark Augmaxcil is deceptively
and confusingly similar to the trade mark Augmentin. Both these marks commence with the prefix AUG and
thereafter the letter M appears and there are no other trade marks for pharmaceutical preparations on the trade
marks register which have the sequence of the letters AUG and M. The whole visual and phonetic similarity between
the marks are
View Parallel Citation
such that deception and confusion will inevitably occur. Consequently, the applicant is using in the course of trade
both the Augmentin shape trade mark and the Augmentin word mark in relation to products for which they are
registered and such use is unauthorised by first respondent and likely to lead to large scale deception and
confusion arising.
None of the deponents to these affidavits filed on behalf of respondent gave evidence in support of these
allegations. Mr Levy, however, who testified on behalf of the applicant, criticised this affidavit evidence. This criticism
was not challenged. Levy and Van Oudtshoorn also refuted the notion that confusion or deception will arise in the
manner set out on behalf of respondents. They testified that pharmacists are trained over a period of five years to
recognise difficult chemical compounds and to distinguish between some 14 000 different pharmaceutical products
many of which have similar names. Pharmacists deal with similar names on an ongoing basis. Neither witness would
be confused between Augmentin and Augmaxcil. This evidence was not challenged.
Respondents also rely on the affidavit evidence of certain pharmacists, Eve and Jones to the effect that given the
nature of the handwriting of many medical practitioners it is possible that Augmentin could be taken for Augmaxcil
and vice versa, particularly in view of the fact that there are no other antibiotics commencing with AUGM. Neither of
these witnesses gave evidence in support of this possibility and Levy disputed this allegation and explained that in
the event of any doubt as to what a doctor has written, the pharmacist will contact the doctor to clarify what has
been written. This evidence of Levy was supported by that of Van Oudtshoorn.
Respondents further relied on affidavit evidence of a Mr Greef that a tablet with the exact shape and
configuration of Augmentin could well lead to its generic substitute being sold in place of the original where the
original is specifically prescribed. Levy, however, testified that generic substitution can only take place with the
consent of the doctor concerned.
I should perhaps at this stage interrupt to deal with the credibility of Levy. It was argued on behalf of
respondents that Levy's credibility is in shreds in that he was dogmatic and inflexible in his evidence, he regarded
pharmacists as some kind of infallible automatons and above all he was caught out in a deliberate untruth in that
he initially wanted to convey the impression that in every instance a phone call was made to the doctor for
permission to be granted to
Page 148 of [2001] 2 All SA 126 (T)
vary a prescription whereas he later had to concede that he did not follow this procedure to obtain the doctor's