The Supreme Court of Appeal (SCA) on Thursday 29 March 2012 ruled on a dispute between Adcock Ingram and Cipla Medpro on the registered trade marks ZETOMAX and ZEMAX.
Both products are generics of “Lisinopril” used in the treatment of mild to moderate hypertension and certain cardiac conditions. Both ZETOMAX and ZEMAX are registered trade marks.
Adcock Ingram launched an application last year to the High Court in Pretoria to have Cipla’s registration for ZEMAX trade mark cancelled on the basis that it is too similar to Adcock Ingram’s prior registered ZETOMAX trade mark. The High Court dismissed Adcock Ingram’s application and found in favour of Cipla. Adcock Ingram appealed to the SCA.
The SCA last week overturned the High Court ruling and ordered that Cipla Medpro’s ZEMAX trade mark should be removed from the Register of Trade Marks and in the process confirmed the right of patients in South Africa to be involved in the process of deciding on their medicine, even prescription medicine.
Cipla Medpro argued that as both ZETOMAX and ZEMAX can only be obtained on prescription from a doctor that the only question is whether doctors or pharmacists will be confused between the trade marks ZETOMAX and ZEMAX. Cipla argued that these professionals are trained not to be confused and therefore there is no possibility of confusion between the trade marks ZETOMAX and ZEMAX. Cipla was supported in its argument by a 1983 decision of the Pretoria High Court that found that it is the “doctor’s responsibility as what the patient should have, and his alone”.
In coming to its finding, the SCA took into account that Section 8 of the National Health Act 61 of 2003 gives patients the right to participate “in any decision affecting his or her personal health and treatment”. The SCA also referred to Section 22(F) of the Medicines and Related Substance Act which deals with generic substitution. The SCA agreed with Adcock Ingram’s arguments that Section 22(F) in general creates an obligation on pharmacists to inform patients of the advantages of generic substitution and in this process patients form part of the decision making process and consequently their views as to whether trade marks are confusingly similar should also be taken into account.
The SCA remarked that the 1983 view expressed by the Pretoria High Court that it is the doctor’s responsibility only as to what a patient should have had a sense of unreality in modern circumstances where patients play an active role in relation to their health.
Dr Abofele Khoele, Adcock Ingram’s Medical Executive, said “Adcock Ingram is delighted with this ruling. ZETOMAX will continue to be available as a generic for the treatment of hypertension and certain cardiac conditions”.
Carl van Rooyen of patent and trade mark attorneys Spoor & Fisher, the attorneys for Adcock Ingram, advised that the ruling of the SCA has once and for all settled the question as to whether the views of patients should be taken into account when asking the question whether there is confusion between pharmaceutical brands. The result is that pharmaceutical companies will have to be more careful when choosing names for medicines so as to ensure that there is no possibility of confusion with other medicines. He further commented that this ruling could have far reaching implications for Cipla as it will probably also result in Cipla being forced to rebrand its ZEMAX product.