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

Adcock Ingram was the registered proprietor of the trade mark ZETOMAX (registration no. 1998/14391) in class 5 for pharmaceutical preparations. ZETOMAX is a generic medicine containing the active ingredient Lisinopril, used for treating hypertension and cardiac conditions, sold in dosages of 5mg, 10mg and 20mg. Cipla Medpro registered the trade mark ZEMAX (registration no. 2004/05322) also in class 5 for similar goods. ZEMAX is also a generic medicine containing Lisinopril as its active ingredient. Both medicines are Schedule 3 prescription medicines sold only by pharmacists on prescription. Cipla had originally registered its product under the name Prilosin but changed it to ZEMAX in April 2004, receiving approval from the Medicines Control Council on 29 July 2004. Adcock brought an application under section 24 of the Trade Marks Act 194 of 1993 to have ZEMAX removed from the register on the basis that it was wrongly made in terms of sections 10(12) and 10(14), arguing the marks were so similar as to be likely to deceive or cause confusion. The High Court (Prinsloo J) dismissed the application with costs. Adcock appealed to the Supreme Court of Appeal with leave.

• Whether the trade mark ZEMAX should be removed from the register as being 'likely to deceive or cause confusion' with ZETOMAX under section 10(14) of the Trade Marks Act 194 of 1993
• What is the correct approach to determining the relevant class of 'notional consumers' when assessing likelihood of confusion for prescription medicines
• Whether patients (as opposed to only medical practitioners and pharmacists) form part of the notional consumers to be considered in assessing likelihood of confusion
• What effect, if any, does section 22F of the Medicines and Related Substances Act 101 of 1965 (relating to generic substitution) have on the assessment of likelihood of confusion
• Whether a trade mark registration may be limited to only certain goods within the registered class in expungement proceedings

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 registration 2004/05322 ZEMAX in class 5 from the register in respect of all goods for which it was registered. Cipla Medpro was ordered to pay the costs of the application.

In determining whether trade marks for prescription medicines are 'likely to deceive or cause confusion' under section 10(14) of the Trade Marks Act 194 of 1993, patients must be included as part of the relevant class of notional consumers whose potential confusion must be assessed, in addition to medical practitioners and pharmacists. This is because: (1) patients have a statutory right to participate in decisions affecting their health and treatment (section 8 of the National Health Act 61 of 2003); (2) section 22F of the Medicines and Related Substances Act 101 of 1965 gives patients the right to choose whether to accept generic substitution, requiring them to be informed of such options; and (3) patients actively participate in modern healthcare by discussing medication with practitioners, exchanging information, and making choices about their treatment. When assessing likelihood of confusion under section 10(14), the enquiry is not limited to the actual use of the mark but extends to all goods in the class for which it is registered - the test is 'what can the applicant do?' with the mark, not what it intends to do, in order to protect the public. The assessment of confusing similarity requires a global appreciation of the visual, aural and conceptual similarity of the marks based on the overall impression, taking into account imperfect recollection and careless pronunciation, not precise side-by-side comparison.

The court observed that although approval by the Medicines Control Council's naming committee may indicate that body did not consider there would be confusion, such approval is irrelevant and inadmissible for determining whether marks are confusingly similar under the Trade Marks Act, as it is the function of the Registrar or court to make that determination. The Council's own documentation recognizes that intellectual property infringement is not within its concerns. The court noted that while some weight may be given to the fact that the Registrar raised no objection to registration, a court is at large to exercise its own discretion. The court also observed that although the court or Registrar has discretion under section 24(1) to limit a registration by excising some goods from the specification, in this case such limitation was not warranted and the entire registration should be expunged. The court noted that the remark in the 1983 Adcock-Ingram case that 'it is the doctor's responsibility as to what the patient should have, and his alone' has a 'sense of unreality in modern circumstances' and is 'hardly reconcilable' with current statutory rights of patient participation. The judgment also noted that meaningless marks (such as ZEMAX and ZETOMAX) cannot cause confusion based on meaning, concept or idea, but only on visual and aural similarity.

This case is significant for establishing that in assessing likelihood of confusion for prescription medicines under section 10(14) of the Trade Marks Act, patients must be included as part of the notional consumer class, not only medical practitioners and pharmacists. The judgment recognizes the modern reality of patient participation in healthcare decisions and gives effect to the legislative framework (National Health Act and Medicines and Related Substances Act) that empowers patients to make informed choices about their medication. The case confirms that the test under section 10(14) is what the proprietor 'can do' with the registered mark across the entire class of goods registered, not what it actually intends to do or is currently doing. It provides important guidance on the global appreciation test for assessing confusing similarity between pharmaceutical trade marks, emphasizing the need to consider imperfect recollection and careless pronunciation rather than precise side-by-side comparison. The case limits the application of earlier authorities (particularly Adcock-Ingram v Lennon Ltd 1983) that excluded patients from the confusion enquiry, reflecting changed social and legal circumstances regarding patient autonomy and generic substitution.