Adcock Ingram Intellectual Property (Pty) Ltd and another v Cipla Medpro (Pty) Ltd and another
 3 All SA 1 (SCA)
SUPREME COURT OF APPEAL
29 March 2012
IG FARLAM, FR MALAN, RW NUGENT, MJD WALLIS JJA and XM PETSE
2012 (4) SA 238 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property Trademarks Prescription medication Trademarks "likely to deceive or cause confusion"
Application for removal of trademark from trademarks register Trade Marks Act 194 of 1993 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" Test of
possibility of confusion must be applied not only to pharmacists and doctors but also to the consumer, in which case
likelihood of confusion does exist.
The first respondent was the registered proprietor of the trademark "ZEMAX", while the first appellant was the
proprietor of the trade mark "ZETOMAX". Both trademarks were registered in the same class, applying to
pharmaceutical preparations for certain ailments including hypertension.
Alleging that the trade mark registration ZEMAX was an entry wrongly made on the register of trade marks by
virtue of the provisions of section 24, read with sections 10(12) and 10(14), of the Trade Marks Act 194 of 1993
("the Act"), the appellants applied for the removal of that trademark from the register.
The court below accepted that the onus rested on the appellants to establish a reasonable probability of
confusion amongst a substantial number of purchasers. It dismissed the application on the basis that the onus had
not been discharged. The court held that the case to be met by the first respondent was confined to a comparison
between hypertensive pharmaceutical products. Since there was no suggestion in the evidence that the first
respondent was manufacturing or distributing any of the other products within the ZETOMAX registration under the
ZEMAX trade mark, the application was rejected on that basis as well.
Held Section 10(14) of the Act 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". The class in respect of which ZEMAX was registered
was not limited to pharmaceutical preparations but included 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.
Page 2 of  3 All SA 1 (SCA)
The first respondent's case, based on the case of AdcockIngram Laboratories Ltd v SA Druggists Ltd and another;
AdcockIngram Laboratories Ltd v Lennon Ltd  4 All SA 68 (T), was that as both ZETOMAX and ZEMAX were
products that fell under Schedule 3 of the Medicines and Related Substances Act 101 of 1965 and could be sold only
by pharmacists on prescription from a doctor, the only question was whether doctors or pharmacists would be
confused between the trademarks. It was submitted that trained professionals would not be confused. The present
Court rejected the approach endorsed in AdcockIngram Laboratories Ltd v SA Druggists Ltd and another; Adcock
Ingram Laboratories Ltd v Lennon Ltd, stating that in modern circumstances, patients play an active role in relation to
their own health. Section 8 of the National Health Act 61 of 2003 gives the patient the right to participate in any
decision affecting his or her personal health and treatment. Patients often discuss their medication among
themselves and with their doctors, and could request a certain drug. The Court also referred to section 22F of the
Medicines and Related Substance Act which deals with generic substitution. Section 22F creates an obligation on
pharmacists to inform patients of the advantages of generic substitution and patients, accordingly, form part of the
decisionmaking process and their views as to whether trademarks are confusingly similar should also be taken into
account. Thus, the question of whether ZEMAX was likely to deceive or cause confusion as section 10(14) requires
had to be answered with reference, not to the specialised market of prescription medication only, but with
reference to the patient as well.
The similarity of the two trademarks satisfied the Court that the chance of confusion did exist. The appeal was
upheld and the second respondent was directed to remove the first respondent's trademark from the register of