The applicant, Varichem Pharmaceuticals (Pvt) Ltd, is a Zimbabwean company that manufactures pharmaceutical products and is the registered proprietor of the trademark "VARIFLEX" (registration 412/2002 in class 5) for pharmaceutical products, registered in Zimbabwe in 2002. The first respondent, Emcure Pharmaceuticals Limited, is an Indian company that manufactures and owns the trademark "VIFEX", registered in India in 1996. Both trademarks relate to cough syrup products. The first respondent's agent imported VIFEX syrup into Zimbabwe and sold it in the Zimbabwean market, the same market where applicant's VARIFLEX syrup was sold. The Medicines Control Authority of Zimbabwe granted approval for VIFEX syrup to be imported and sold in Zimbabwe. The applicant alleged that the first respondent's use of "VIFEX" infringed its "VARIFLEX" trademark as the marks were phonetically and aurally similar, likely to cause deception or confusion among consumers. The applicant sought a final interdict restraining the first respondent from using the VIFEX mark and consequential relief including destruction of products and prevention of further imports.
The application was dismissed with costs.
In determining whether a trademark infringes another registered trademark under section 8(1) of the Trade Marks Act, the court must assess whether the marks are identical or so nearly resembling each other as to be likely to deceive or cause confusion. This assessment requires consideration of the totality of the surrounding circumstances, not merely phonetic similarity of the word marks in isolation. The test is whether an ordinary person of average intelligence and proper eyesight would be likely to be deceived or confused. Relevant factors include: visual appearance of the marks and packaging, colors, fonts, descriptive words, the nature of the goods, manner of sale, and any distinctive features. Where products are sold in pharmacy settings requiring oral requests rather than self-service, and where there are sufficient visual and descriptive distinctions in packaging, phonetic similarity alone is insufficient to establish likelihood of confusion or deception. For purposes of suing the Zimbabwe Revenue Authority, the proper party is ZIMRA itself as a body corporate, not the Commissioner General.
The court noted that the law of trademark protection has origins in both common law and statute, with statutory protection arising due to inadequacies in common law protection. Trademarks serve dual purposes: enabling consumers to distinguish between competing products and showing connection between goods and the right holder. The court observed that while the principle from Indian jurisprudence (Cadla Health Care Limited v Cadila Pharmaceuticals Limited) suggests greater need to distinguish medical products is important, this does not mean the court should adopt an overly restrictive approach that examines words in abstract without considering full circumstances. The court also noted, without resolving definitively, the dispute about whether VIFEX was a prescription drug or sold over the counter, as no expert evidence was provided on this point.
This case provides guidance on the application of trademark infringement principles under Zimbabwean law, particularly in the pharmaceutical industry. It clarifies that the assessment of likelihood of confusion or deception must consider the totality of circumstances rather than merely comparing the phonetic similarity of word marks in isolation. The case emphasizes that visual differences in packaging, descriptive words, colors, and the manner of sale (particularly in pharmacy settings where products are requested orally) are all relevant factors. It also reinforces proper citation requirements for statutory bodies, confirming that ZIMRA must be sued in its own name rather than through the Commissioner General. The judgment demonstrates the application of South African precedent (Plascon-Evans Paints) in Zimbabwean intellectual property law.