AUTHOR: RISHAL BIPRAJ
Registering a trademark for your brand gives you the exclusive legal right to use your name, logo, or slogan throughout the country. Registrations certainly make it easier to take legal action if a mark is copied or where marks are so similar that they are able to deceive consumers.
In the case of Adcock Ingram Limited (“AIL”) v Cipla Medpro (Pty) Limited (“CM”), AIL claimed CM had infringed its mark “URIZONE” by CM registering the trademark “FURIZOME” for prescription UTI medicines. AIL wanted CM to be prohibited and restrained from unlawfully competing with AIL (that is by using the trademark FURIZOME or any confusingly similar trademark). The issue the Western Cape High Court had to consider was whether the trademarks were confusingly or deceptively similar.
In South African law similarity could be phonetic, conceptual or visual. A court will make a value judgment based on the overall impression given by the marks, and in particular any dominant features. A court assesses the impact the marks would have on the average consumer in the marketplace, who is reasonably well-informed and observant, taking into account the nature of the products and the manner in which they are marketed. An allowance is also made for the consumer’s imperfect recollection of the marks. A greater difference in the type of the goods may require greater similarity of the marks in order to justify a finding of the likelihood of confusion.
Both trademarks in this matter were used for the same type of goods, except that FURIZOME was a generic substitute for URIZONE. The court examined both marks and found the only distinction was that FURIZOME starts with the letter ‘F’, while the ‘N’ in URIZONE has been substituted with the letter ‘M’. The court considered these differences were insignificant and the dominant elements of both marks bore substantial similarity.
Practically the court also considered, as these were prescription medicines, prescribed by doctors and dispensed by pharmacists, that medical professionals could also make mistakes in prescriptions, as a result of imperfect recollection and mispronunciation of medicine names. As an example, the court stated that the marks sounded so similar that if professional colleagues were discussing prescribing one of these medicines over a telephone call, the other could be confused and perhaps prescribe the other drug. The court even pointed out that (as an almost universal truth!) that we should bear in mind the bad handwriting of doctors which could confuse pharmacists into dispensing the alternative drug rather than the one written down on paper. This possibility of confusion was all the more likely as both medicines were available in a 3g sachet.
Further patients are involved in the process of choosing their prescription medications and there is a risk of confusion, particularly if we make allowance for an imperfect recollection of the consumer rather than comparing the marks letter by letter. As a whole the general impression was that URIZONE AND FURIZOME were remarkably alike to the point of causing confusion.
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Email: rishal.bipraj@gb.co.za
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