Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another

The appellants, Adcock Ingram Intellectual Property (Pty) Ltd and its licensee Adcock Healthcare (Pty) Ltd, were proprietors and users of the registered trade mark ZETOMAX in class 5 for pharmaceutical and related goods. ZETOMAX is a generic prescription medicine containing Lisinopril. The first respondent, Cipla Medpro (Pty) Ltd, later registered the trade mark ZEMAX, also in class 5, for a wide range of pharmaceutical and related goods, and marketed ZEMAX as a generic Lisinopril medicine. Adcock sought removal of ZEMAX from the trade marks register under s 24 read with s 10(14) of the Trade Marks Act 194 of 1993, contending that ZEMAX was so similar to ZETOMAX that its use would be likely to deceive or cause confusion. The High Court dismissed the application, holding that in the specialised prescription medicine market confusion was unlikely. Adcock appealed to the Supreme Court of Appeal.

The appeal was upheld with costs. The order of the High Court was set aside and replaced with an order directing the Registrar of Trade Marks to remove trade mark ZEMAX (registration number 2004/05322) in class 5 from the register, and ordering Cipla Medpro (Pty) Ltd to pay the costs of the application.

The case clarifies the correct approach to s 10(14) of the Trade Marks Act, confirming that likelihood of confusion must be assessed with reference to all goods covered by a trade mark registration, not merely actual or intended use. It modernises South African trade mark law in the pharmaceutical context by recognising patients as part of the notional consumer, particularly in light of generic substitution legislation. The judgment also affirms that regulatory approval of medicine names does not determine trade mark registrability.