evidence did not confirm the allegation in Higgo's affidavit that the error arose because Augmaxcil and Augmentin
were on the screen. Taking all the evidence into consideration I am not persuaded that Thom s error arose because
she confused Augmaxcil with Augmentin. It is significant that nowhere did she testify that she had any difficulty in
distinguishing between the marks Augmentin and Augmaxcil or that to her the marks were similar or confusing. I
cannot draw the inference that Thom was at any time deceived or confused by Augmentin and Augmaxcil
respectively.
The alleged instances of actual confusion were raised by respondents immediately prior to the hearing on 10 May
2000. Since that time and despite apparent efforts by respondents to look for and find instances of confusion, there
have
Page 153 of [2001] 2 All SA 126 (T)
been no such instances reported. This fact is in itself, in my view, evidence that the marks are not deceptively or
confusingly similar. (See: Webster and Page South African Law of Trade Marks 4 ed, Issue 3, paragraph 15.24, 1558
to 1559).
It was suggested on behalf of respondents to Van Oudtshoorn and Levy during crossexamination that the
distribution chain included pharmaceutical wholesalers and that those who took orders and those who dispatched
such orders were not as well trained professionally as doctors and pharmacists. There is, however, no evidence on
which to base any suggestion that any such persons will be deceived or confused. By law they operate under the
supervision of a pharmacist and there is no evidence to suggest that they are not properly trained to recognise and
take orders for numerous pharmaceutical products which might have similar sounding names. I would have been
surprised if they had not been so trained. Levy's evidence was that his orders are placed electronically and are
dealt with electronically by the wholesaler's computers. I am not persuaded that the evidence indicates or that the
inference can be drawn that there will be deception or confusion at the level of the pharmaceutical wholesaler or
that a person taking an order or a dispatch clerk will be deceived or confused between Augmentin and Augmaxcil.
In my judgment the respondents are not entitled to the relief claimed in paragraph 214.2 of the counter
application under and in terms of the provisions of section 34(1)(a) of the Act, in respect of either of the word or
shape trade marks.
Section 34(1)(c) of Act 194 of 1993
As indicated hereinbefore first respondent also relies on the provisions of section 34(1)(c) of the Act as far as the
relief relating to trade mark infringement is concerned. The relief claimed in terms of section 34(1)(c) is set out in the
following terms in paragraph 214.3 of the counterapplication:
"Interdicting and restraining the Applicant from using, in the course of trade, in relation to any goods or services,
including antibiotics or services relating to the marketing or selling of any such goods, the trade mark Augmaxil (sic
it should be Augmaxcil) and/or tablets having the shape and configuration of the First Respondent's registered
View Parallel Citation
trade mark number 67/2550 (sic it should be 67/02550) or any trade mark or marks which are deceptively or
confusingly similar thereto, and the use of which mark or marks are likely to take unfair advantage of or be
detrimental to the distinctive character or the repute of the registered trade mark in terms of the provisions of section
34(1)(c) of the Act."
The relief set out is clearly confused as trade mark registration no 67/02550 is the Augmentin word mark and
cannot be infringed by a tablet having any shape or configuration.
It seems to me that in order to establish infringement in terms of section 34(1)(c) the onus is on an applicant to
establish:
use of the registered trade mark or a mark similar thereto;
that the use is unauthorised;
that the use is in the course of trade;
that the registered trade mark is wellknown in the Republic; and
that the use is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the
registered trade mark.
Page 154 of [2001] 2 All SA 126 (T)
It would appear, although not specifically stated in the section that the purpose of the section is to prevent the use
of a wellknown mark in the Republic on goods other than those for which the mark is registered. It seems to me
that this subsection is not intended to protect a proprietor who cannot prove the requirements of sections 34(1)(a)
or 34(1)(b) of the Act in respect of the same or similar goods, as those for which a trade mark is registered.
In view of what has been set out above I come to the conclusion that the respondents have failed to establish
that the Augmaxcil trade mark is a mark similar to the Augmentin word mark and is not a use of the registered trade
mark.
It is also significant that the first respondent in the counterapplication only claims relief in respect of the
Augmentin word mark, whereas in his affidavit Faber refers to both the Augmentin word mark and the shape trade