address this issue. So far as both trade marks are registered in respect of goods that are obtainable without
prescription, the market is the ordinary consumer. I have no doubt that there is likely to be confusion when
the marks are applied to such goods. This was never seriously challenged by Cipla. Its entire argument was
based on a restricted use confined to prescription medication.
[17] However, under section 24(1) of the Act the court or the Registrar rectifying entries in the register of trade
marks, "may make such order for making, removing or varying the entry as it or he may deem fit". A court or
the Registrar exercising a discretion under section 24(1) may, thus, excise some of the goods in respect of
which the trade mark under attack was registered.7 Counsel for Cipla submitted that in those circumstances
we should expunge the trade mark for all but "pharmaceutical preparations containing Lisinopril". I will
assume for present purposes that this is a proper case in which to limit the registration to only those goods if,
indeed, there is no likelihood of confusion when applied to those goods. On the assumption that this is a
proper case for the limitation of the registration of ZEMAX to the goods referred to I will consider whether the
two marks are so similar as to be likely to deceive or cause confusion.
[18] Cipla's case in that regard is that there is no probability of confusion or deception arising between the marks
when they are compared in the context of the specialised pharmaceutical market in which the two marks
would then be employed.
[19] Cipla relied on the approval of the name ZEMAX by the "naming committee" of the Medicines Control Council.
Section 9 of a document
View Parallel Citation
issued by the Council for general information deals with its "proprietary name policy". In considering the
safety of a product the Council is obliged to consider whether a proposed name "could potentially pose public
health and safety concerns or if it may be misleading". Public health considerations are said to be paramount
"in determining whether a particular proprietary name may be used for a medicinal product" (section 9). In
section 9.1.6 it is provided that the proposed proprietary name "should not be liable to cause confusion in
print, handwriting or speech with the proprietary name of another product." Where the name
Page 8 of [2012] 3 All SA 1 (SCA)
proposed is identical to or too similar to a name already approved the applicant must be advised. Any dispute,
however, must be resolved between the parties and not by the Council (section 9.1.8). Cipla argued that,
because no objection was made to registration of the name ZEMAX by the Council, it could be concluded that
neither the "naming committee" nor the Council considered that ZEMAX would be confused with ZETOMAX.
This may well have been the view of the Council but its view is irrelevant and inadmissible for the purpose for
which it was tendered. It is the function of the Registrar or the court to consider whether the trade marks
ZEMAX and ZETOMAX are "so similar" that their use "would be likely to deceive or cause confusion". Section
9.3.1 of the document, in any event, recognises that:
"[t]he issue of whether a particular proprietary name may constitute an infringement of another entity's intellectual
property rights cannot be one of the Medicines Control Council's concerns and is, therefore, not taken into account
during consideration of the acceptability of a proposed proprietary name."
[20] Although some weight may be given to the fact that the Registrar of Trade Marks raised no objection to the
registration of ZEMAX, a court is at large to exercise its own discretion concerning the registration of trade
marks.8
[21] Both ZEMAX and ZETOMAX are products that fall under Schedule 3 of the Medicines and Related Substances
Act and may be sold only by pharmacists, a pharmacist's intern or assistant acting under the personal
supervision of the pharmacist, manufacturers and wholesale dealers, medical practitioners and dentists,
veterinarians, practitioners and nurses or persons registered under the Health Professions Act 56 of 1974 and
then only under strict conditions.9 Generally, only a medical practitioner may prescribe a Schedule 3
substance and a pharmacist may dispense it only on prescription.
[22] In the replying affidavit, Adcock sought to extend the market to pharmaceutical wholesalers, hospitals and
state hospitals alleging that there was no guarantee that persons at these institutions responsible for
View Parallel Citation
buying products were either practising pharmacists or doctors. With regard to pharmaceutical wholesalers,
section 22A of Medicines and Related Substances Act requires a qualified pharmacist to oversee and control
the buying and selling of pharmaceutical drugs. Large orders from, for example, private hospital groups and
tender boards from the Department of Health, are negotiated with the pharmaceutical companies directly.
Section 22C, in addition, requires wholesalers and distributors to be in possession of permits to carry out their
functions, and the permits are to be issued only on such conditions "as to the application of such acceptable
quality assurance principles and good manufacturing and distribution practices as the council may determine"
(section 22C(1)(b)). Regulation
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19 of the General Regulations under Act 101 of 1965 imposes further limits by requiring the distributor or
wholesaler to "appoint and designate as such a pharmacist who will control the manufacturing or distribution
of medicines, Scheduled substances or medical devices". The Medicines Control Council has also distributed a