[29] Despite the difference in wording between section 17(1) of the repealed Trade Marks Act 62 of 1963 a n d
section 10(14) of the present Act, the words "likely to deceive or confuse" are retained in the latter section
and should be given the same meaning. In Cowbell AG v ICS Holdings Ltd17 Harms JA remarked:
"Section 17(1) creates an absolute bar to registration provided the jurisdictional fact is present, namely that the use
of both marks in relation to the goods or services in respect of which they are sought to be registered, and registered,
would be likely to deceive or cause confusion. The decision involves a value judgment and
'[t]he ultimate test is, after all, as I have already indicated, whether on a comparison of the two marks it can properly
be said that there is a reasonable likelihood of confusion if both are to be used together in a normal and fair manner,
in the ordinary course of business'.
Page 13 of [2012] 3 All SA 1 (SCA)
(SmithKline Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South Africa (Pty) Ltd) v Unilever plc
[1995 (2) SA 903 (A)] at 912H). 'Likelihood' refers to a reasonable probability (ibid at 910B), although the adjective
'reasonable' is perhaps surplusage. In considering whether the use of the respondent's mark would be likely to
deceive or cause confusion, regard must be had to the essential function of a trade mark, namely to indicate the
origin of the goods in connection with which it is used . . . . Registered trade marks do not create monopolies in
relation to concepts or ideas."
Harms JA approved of the statement in Sabel BV v Puma AG, Rudolf Dassler Sport18 where it was said that the
likelihood of confusion must "be appreciated globally", and that the:
"global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components."
View Parallel Citation
[30] The question whether ZEMAX is "likely to deceive or cause confusion" as section 10(14) requires must be
answered with reference, not to the specialised market of prescription medication only, but with reference to
the patient as well. The patient is the ultimate consumer whose wishes may not be disregarded and who has
a right to participate in any decision concerning his health and treatment. It may well be that there is little
likelihood of the medical practitioner or pharmacist being deceived or confused but the enquiry does not end
there.
[31] Both ZEMAX and ZETOMAX are meaningless words and there can be no confusion based on meaning or
concept or idea.19 But the two words are similar, confusingly so. 20 ZEMAX consists of two syllables and five
letters. ZETOMAX comprises three syllables and seven letters. The difference between the two marks arises
out of the middle syllable TO in ZETOMAX which extends the word and breaks the connection between the
first and last syllables. When MAX is excluded from both marks ZE and ZETO must be compared. They are
different but this difference becomes less pronounced when MAX in both is considered. ZE and MAX are indeed
the dominant elements of the two names. ZE is often found in Lisinopril products on the market e.g.
ZESTORETIC, ZESTOZIDE and ZESTRIL, which are markedly different from both ZEMAX and ZETOMAX not least
because the prefix ZE is pronounced differently. In the case of the other names mentioned it is pronounced
with a short "e", whereas in ZEMAX and ZETOMAX the "e" is long. The latter two are markedly similar with
both having the same prefix, ZE, and the same suffix, MAX, ZEMAX and ZETOMAX are indeed the only two
marks of the 128 on the register beginning with ZE and ending in MAX. There is also a similarity in the
appearance of the two marks. When their sounds
Page 14 of [2012] 3 All SA 1 (SCA)
are compared there is also a likelihood of confusion. Their pronunciation is similar, the TO in ZETOMAX being
pronounced softly.
[32] A patient, and perhaps also a professional, who knows only the one word and has an imperfect recollection of
it is likely to be mistaken. One must make allowance for imperfect recollection and the effect of careless
pronunciation rather than comparing the two words letter by letter or syllable by syllable.21 But looking at
the two marks globally and appreciating their similarities the overall impression is that they are so similar as
to be confusing. To my mind, Adcock has succeeded in
View Parallel Citation
showing that a substantial number of consumers would be likely to be confused and deceived by the similarity
between the marks ZEMAX and ZETOMAX.
[33] It follows that the appeal should succeed. The following order is made:
1.
The appeal is upheld with costs.
2.
The order of the court below is set aside and replaced with the following order:
"(a)
The second respondent is directed to remove trade mark 2004/05322 ZEMAX in class 5 from the register
of trade marks in respect of the goods for which it is registered;
(b)
The first respondent is ordered to pay the costs of the application."
(Farlam, Nugent, Wallis JJA and Petse AJA concurred in the judgment of Malan JA.)