THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Not reportable
Case No: 728/17

In the matter between:
NOVARTIS A G                                                                      APPELLANT

and

CIPLA MEDPRO (PTY) LTD                                    FIRST RESPONDENT
THE REGISTRAR OF TRADE MARKS             SECOND RESPONDENT

Neutral citation:  Novartis v Cipla Medpro (Pty) Ltd (728/17) [2018]
ZASCA 64 (24 May 2018)

Coram:
Lewis, Ponnan, Leach, Saldulker and Mathopo JJA

Heard:
8 May 2018

Delivered: 24 May 2018

Summary: Trade mark – application for registration of a mark – opposition by
holder of previously registered mark under s 10(14) of Trade Marks Act 194 of
1993 – onus on applicant to show no likelihood of confusion or deception
between its mark and mark already registered – likelihood of confusion between
the marks CURIDA and CURITAZ.

________________________________________________________________
ORDER
________________________________________________________________

On appeal from: Gauteng Division of the High Court, Pretoria (Makume J
sitting as court of first instance):

The appeal is upheld with costs, such costs to include the costs of two
counsel.
The order of the court a quo is set aside and substituted with the
following:
‘(a)
The opposition to trademark application no 2009/23111 CURIDA in class
5 is upheld;
(b)
Trademark application no 2009/23111 CURIDA in class 5 is not
permitted to proceed to registration; and
(c)
The trademark applicant, Cipla Medpro (Pty) Ltd, is ordered to pay the
costs of the trademark opponent, Novartis AG.’
________________________________________________________________
JUDGMENT
________________________________________________________________

Leach JA (Lewis, Ponnan, Saldulker and Mathopo JJA concurring)

[1] Are the names CURIDA and CURITAZ so similar that their use ‘would
be likely to deceive or cause confusion’ as envisaged in s 10(14) of the Trade
Marks Act 194 of 1993 (the Act)? That is the question which lies at the heart of
this appeal. It was answered in the negative by the court a quo which, however,
granted leave to the first respondent to appeal to this court. I must immediately
record that the second respondent, the Registrar of Trade Marks (the Registrar),

did not appear either in this court or the court below and clearly abides our
decision.

[2] On 2 July 2008, the appellant, a company incorporated in Switzerland,
applied for registration under the Act of the trade mark CURITAZ, in class 5 in
respect of ‘pharmaceutical preparations containing piperacillin and tazobactam’.
Its trade mark application no 2008/15000 was accepted on 25 March 2009,
advertised on 24 June 2009 and granted on 23 August 2010.

[3] In the meantime, on 18 November 2009, the first respondent applied to
the Registrar to register the trade mark no 2009/23111 CURIDA, also in class 5,
‘in respect of pharmaceutical and veterinary preparations; sanitary preparations
for medical purposes; dietetic substances adapted for medical use; food for
babies, plasters, materials for dressings: material for stopping teeth, dental wax;
disinfectants; preparations for destroying vermin; fungicides, herbicides’.
Acceptance of this application was advertised in the Patent Journal on
26 January 2011.

[4] Learning of the first respondent’s application, the appellant proceeded to
oppose it under s 21 of the Act. In doing so, the appellant relied upon s 10(14)
of the Act which provides that a mark shall not be registered if it is ‘a mark
which is identical to a registered trade mark belonging to a different proprietor
or so similar thereto that the use thereof in relation to goods or services in
respect of which it is sought to be registered and which are the same as or
similar to the goods or services in respect of which such trade mark is
registered, would be likely to deceive or cause confusion . . .’(my emphasis).

[5] The appellant’s opposition to the first respondent’s application was
founded on the contention that the first respondent’s proposed mark, CURIDA,

would be likely to so deceive or cause confusion with its mark, CURITAZ. This
the first respondent disputed. The Registrar, acting under s 59(2) of the Act,
referred the matter to the Gauteng Division of the High Court, Pretoria for it to
determine the matter. As stated at the outset, that court concluded that there was
unlikely to be confusion between the two marks. It therefore dismissed the
appellant’s application and directed the Registrar to proceed to register the
CURIDA trade mark, subject to a limited specification covering ‘antibiotics,
pharmaceutical preparations containing a combination of amoxycillin and
clavulanic acid.’

[6] I must immediately mention that as the appellant’s registration preceded
the relevant trademark application brought by the first respondent by more than
a year, the overall onus was on the first respondent who sought registration to
satisfy the court a quo that there is no reasonable probability of confusion or
deception. The reason for this was set out long ago by Murray J in J W Jagger
and Co Ltd,1 who stated that an applicant seeking to register a mark:
‘. . . is seeking a privilege, not a right to which he is entitled. He has at his command a
practically unlimited field from which to select a mark suitable to his purpose and in view of
the substantial advantages derived by him from registration it is but equitable that he should,
where necessary, adduce proof of the absence of that likelihood of deception which is
vaguely fatal to the grant of his application. It may well be that in the first instance, and in the
absence of opposition, no proof need be demanded of him: once, however, an objector alleges
the likelihood of deception, it is, I think, the applicant’s duty to disprove such likelihood.’2

[7] This approach has been followed in a line of decisions of this court3 and
can now be regarded as well settled, as was correctly conceded by counsel for
the first respondent. In the present case, however, the court a quo stated that the
onus was on the appellant, who opposed the first respondent’s application to

1 J W Jagger and Co Ltd v Furnishers Cape (Pty) Ltd 1948 (3) SA 603 (T).
2 At 607.
3See Bristol Laboratories Inc v Ciba Ltd 1960 (1) SA 864 (A) at 869E to 870E and Smithkline Beecham
Consumer Brands (Pty) Ltd v The Unilever plc 1995 (2) SA 903 (A) at 910A-B.

register its mark, to satisfy it that the two marks are so similar that there was a
reasonable possibility of confusion being caused amongst a substantial number
of consumers. In the light of what I have just said, it clearly misdirected itself.
Fortunately, nothing really turns on this misdirection to decide the issue in this
court.

[8] Before proceeding to deal with the court a quo’s conclusion, there are two
further issues that must be mentioned. The first is that although the appellant
uses its CURITAZ trademark in relation to antibiotics elsewhere in the world, it
has not yet done so in this country (and in any event did not rely on its actual
use elsewhere in support of its opposition). Secondly, the first respondent’s
application to register the trademark CURIDA is fairly broadly described, as set
out in Paragraph 3 above. In the opposition application, however, it stated that it
intends to register an antibiotic with the Medicines Control Council under the
name CURIDA, and to submit an application to the Registrar to limit the trade
mark registration, once granted, to the limited specifications set out in the order
eventually granted by the court a quo as quoted above. Consequently, the matter
was argued on the understanding that both the appellant’s mark, CURITAZ, and
the first respondent’s mark, CURIDA, will be restricted to use on scheduled
antibiotic products which only doctors will be able to prescribe and pharmacists
dispense. They are thus similar ‘goods’ as referred to in s 10(14).

[9] In the light of this, I turn to the essential issue between the parties,
namely, whether the mark the first respondent seeks to register is so similar to
that already registered by the appellant that it ‘would be likely to deceive or
cause confusion’ as envisaged by that section. As was pointed out by this court
in Roodezandt Wynmakery Ltd,4 ‘deception’ will result where members of the
purchasing public are caused to assume that the goods come from the same

4 Roodezandt Wynmakery Ltd v Robertson Winery (Pty) Ltd [2014] ZASCA 173; 2014 BIP 294 (SCA) para 4.

source whilst ‘confusion’ is where those persons will be caused to wonder if the
goods had a common origin.

[10] The approach to be adopted in deciding upon the likelihood of potential
confusion or deception is well settled. The question is a matter of fact to be
determined in the light of the particular circumstances of each individual case,
and calls for a value judgment to be made in regard to a mark’s essential
function, namely, to indicate the origin of the goods in connection with which it
is used.5 However, as this court pointed out in Yuppiechef,6 that value judgment
‘is largely a matter of first impression and there should not be undue peering at
the two marks to find similarities or differences’. In addition, as was said by
Laddie J in Compass Publishing BP,7 a passage cited with approval in both this
court8 and the England and Wales Court of Appeal:9
‘The likelihood of confusion must be appreciated globally, taking account of all relevant
factors. It must be judged through the eyes of the average consumer of the goods or services
in question. That customer is to be taken to be reasonably well-informed and reasonably
circumspect and observant, but he may have to rely upon an imperfect picture or recollection
of the marks. The court should factor in the recognition that the average consumer normally
perceives a mark as a whole and does not analyse its various details. The visual, aural and
conceptual similarities of the marks must be assessed by reference to the overall impressions
created by the marks bearing in mind the distinctive and dominant components. Furthermore
if the association between the marks causes the public to wrongly believe that the respective
goods come from the same economically linked undertakings, there is a likelihood of
confusion.’

5 Cowbell AG v ICS Holdings Ltd 2001(3) SA 941 (SCA) para 10 and Roodezandt Wynmakery para 4.
6Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd (1088/2015) 2016 ZASCA 111 (15
September 2016) para 26.
7 Compass Publishing BP v Compass Logistics Ltd [2004] EWHC 520 (Ch).
8 Century City Apartments Property Services CC & another v Century City Property Owners’ Association 2010
(3) SA 1 (SCA) para 13 and Dinnermates (Tvl) CC v Piquante Brands International & another (401/17) [2018]
ZASCA 43 (28 March 2018) para 13.
9 Maier & Anor v Assos Plc & Anor [2015] EWCA Civ 220 para 80.

[11] The cases dealing with the approach to be adopted in assessing the
prospect of confusion and deception in the context of competing marks are
legion,10 and no point would usefully be served in repeating or attempting to
restate what has been said before. Suffice it to say that in addition to what I
have already set out, Brand JA in Roodezandt11 set out certain of the pertinent
principles of comparison, which he felt could be crystallised from previous
decisions, as follows:
‘(a)
A likelihood of confusion does not only arise when every person interested or
concerned in the class of goods for which the trademark has been registered could probably
be deceived or confused. It also arises if the probabilities establish that a substantial number
of such persons will be deceived or confused.
(b)
The concept of deception or confusion is not limited to inducing in the minds of these
interested persons the erroneous belief or impression that the two competing products are
those of the objector or that there is a connection between these two products. A likelihood of
confusion is also established when it is shown that a substantial number of persons will
probably be confused as to the origin of the products or the existence or non-existence of
such a connection.
(c)
The determination of the likelihood of confusion involves a comparison between the
two competing marks, having regard to the similarities and differences in the two and an
assessment of the impact it would have on the average type of customer who is likely to
purchase the kind of goods to which the marks are applied.
(d)
The marks must not only be considered side by side, but also separately.
(e)
It must be borne in mind that the ordinary purchaser may encounter goods bearing one
mark with an imperfect recollection of the other.
(f)
If each of the competing marks contains a main or dominant feature or idea, the likely
impact made by this dominating feature on the mind of the customer must be taken into
account. This is so because marks are remembered by some significant or striking feature
rather than by the photographic recollection of the whole.’

10 In addition to the decisions already mentioned, see eg Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty)
Ltd 1984 (3) SA 623 (A) at 640G-641E, Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd 2010 (2)
SA 600 (SCA) para 8 and Adidas AG & another v Pepkor Retail Ltd 2013 BIP 203 (SCA) paras 20-23.
11 Paragraph 6.

[12] Bearing the above in mind, I turn to the two competing marks. In their
script, the similarity between the two words CURIDA and CURITAZ is self-
evident. Indeed had the latter word not ended with the letter Z, confusion would
have been inevitable, both aurally and visually. But does the Z do away with
what would otherwise have been obvious confusion?

[13] The court a quo held that the two marks were set apart by their suffixes,
‘TAZ’ in the case of the appellant’s mark and ‘DA’ in that of the first
respondent. It concluded these differing suffixes ‘will stick in a person’s
memory’ so that there was no likelihood of deception or confusion. There seem
to me, however, to be a number of reasons why the differences are not so
obvious.

[14] First, common to both marks is the prefix CURI. It is a matter of simple
common sense that the presence of a common element in word marks has an
important bearing on the issue of confusion between them.  As a prefix, CURI is
both uncommon and phonetically striking. Second, it is well known that the first
syllable of a word is generally the most important in considering the likelihood
of confusion.12 That is all the more so in cases in which, like here, there is a
common prefix which is both striking and inventive. Then there is the fact that
the Z at the end of the suffix TAZ is possible of a pronunciation that may be
either hard (as in ‘tazz’) or soft (as in ‘us’), and in the latter event the words
CURITAZ and CURIDA would be more readily capable of aural or phonetic
confusion. To me, the common prefix, CURI, rather than the respective
suffixes, is the dominant part of the two marks.

[15] I am therefore of the view that the court a quo placed undue emphasis
upon the differing suffixes in considering the question of confusion between the

12 Medicament v Smithkline Beecham Corp [2004] FCJ 811 para 42.

marks. In order to attempt to meet this, however, counsel for the first respondent
emphasised the nature of the two products and the limited market in respect of
which they would be sold. He stressed that in terms of its present specification,
the appellant’s CURITAZ is a schedule 4 antibiotic which is administered
intravenously by infusion. It is regulated by the Medicines and Related
Substances Act 101 of 1965, has to be dispensed by a pharmacist in accordance
with a doctor’s prescription, and may not be advertised other than to medical
professionals under s 10 of that Act. He emphasised that the same market
factors and legislative restrictions will apply to the first respondent’s CURIDA
antibiotic, and that both goods will therefore be available only in this highly
regulated, professional and controlled market environment, all of which will
substantially reduce any possibility of error. Put somewhat differently, the
argument was that healthcare professionals, with specialised knowledge of their
area of expertise, will not be confused by the two different names.

[16] There are, however, two answers to this. The first is to be found in the
judgment of this court in Adcock Ingram v Cipla Medpro13 which dealt with
whether the trademarks ZEMAX and ZETOMAX were likely to cause
deception and confusion. Relying on the comment in Adcock-Ingram
Laboratories Ltd v Lennon Ltd that it is the ‘doctor’s responsibility as to what
the patient should have, and his alone’14 counsel for the respondent in that case
contended there would probably be no possibility of confusion between those
two marks when compared in the context of the specialised pharmaceutical
market in which they would be used by trained medical professionals and not
members of the general public. This was essentially the same argument

13 Adcock Ingram Intellectual Property (Pty) Ltd & another v Cipla Medpro (Pty) ltd 7 another 2012 (4) SA 238
(SCA) (265/2011) [2012] ZASCA 39.
14 Adcock-Ingram Laboratories Ltd v Lennon Ltd 1983 (2) SA 350 (T) at 362 ff; [1983] 4 All SA 68 (T) at 79 ff.

advanced by the first respondent in this matter. In rejecting it, Malan JA
stated:15
‘The remark in Adcock-Ingram Laboratories Ltd v Lennon Ltd . . . 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, where patients play, and are expected to play, an active role in
relation to their own health. It reduces the patient to a passive bystander in the process of
providing him or her with treatment and medication. Such an approach is hardly reconcilable
with s 8 of the National Health Act 61 of 2003 which gives the patient the right to participate
‘in any decision affecting his or her personal health and treatment’. Patients often discuss
their medication among themselves and with their doctors. They exchange information on
which product they find most efficacious. This information may then be discussed with their
doctors or pharmacists when the issue of substituting a medicine for a generic or the more
expensive innovator product is raised. Often they provide the names of their medicines,
particularly chronic medication, to the medical practitioners treating them. They discuss the
advantages and disadvantages with them. They consider different options. In a case of
emergency a Schedule 3 medicine may be sold, for use during a period not exceeding 30 days
in accordance with the original prescription, if the pharmacist is ‘satisfied that an authorised
prescriber initiated the therapy’16 – clearly on information provided by the patient. Whatever
the position may have been in 1983, the patient is no longer a passive bystander when treated
and receiving prescribed medication.

[17] The second answer lies in the nature of the application before the court a
quo. The infringement of one mark by another is not an issue in this matter as,
in regard to s 10(4) proceedings, the court is to have regard to the notional use
of the marks in relation to all goods covered by the legislation relied upon. The
question is therefore not what the first respondent says it intends doing with its
mark, but what it will be permitted to do if its application is granted. The fact
that the appellant’s antibiotic, presently administered in a particular way, might
not be viewed as being in competition with the first respondent’s antibiotic
which is administered in a different manner, is irrelevant. Thus in Jellinek’s

15 Para 24.
16 Section 22A(6)(l) of the Medicines and Related Substances Act.

Application,17 cited with approval by this court both in Bristol Laboratories In v
Ciba Trust18 and in Adcock Ingram v Cipla Medpro,19 Romer J said:
‘The onus must be discharged by the applicant in respect of all goods coming within the
specification applied for, and not only in respect of those goods on which he is proposing to
use (the mark) immediately, nor is the onus discharged by proof only that any particular
method of user will not give rise to confusion; the test is: What can the applicant do?’
In the light of this, in Orange Brand Services v Account Works Software,20
Nugent JA went on to say:
‘. . . in opposition proceedings the question that falls to be decided is not how the parties use
or intend to use their marks, but how they would be entitled to use them if both were to be
registered – that is, how they might notionally be used. In this case if both marks were to be
registered, the respective parties would be entitled to use them in relation to computer
software, including software for accounting, and the question is whether it would be likely to
cause confusion if both marks were to be used in that way.’21

[18] In the present case, the issue therefore becomes whether confusion would
be likely should both marks be registered in respect of antibiotics, particularly if
both were registered for human use. In answering that question, the two marks
must of course be compared with each other. But in doing so, they are not to be
considered side by side and subjected to minute examination. Regard must
rather be had to the overall impression they create, bearing in mind their
distinctive and dominant components and taking into account that there is a
likelihood of confusion if the buying public are caused to wrongly believe that
they come from the same or economically linked undertakings.

[19] Importantly, as already mentioned, the dominant and striking feature that
immediately comes to mind is the common prefix CURI, whilst the effect of the

17 63 RPC 59 at 78.
18 Referred to in footnote 3, above.
19 Paragraphs 13-14.
20 Orange Brand Services Ltd v Account Works Software (Pty) Ltd [2013] ZASCA 158; 2013 BIP 313 (SCA)
para 7.
21 Paragraph 6.

different suffixes tends to diminish when the marks are expressed orally. In my
view these marks are indeed likely to cause, at least, initial confusion, even if it
might be cleared up when examined more closely. Moreover, in Adcock Ingram
v Cipla Medpro,22 in concluding that the words ZEMAX and ZETOMAX, albeit
different in both spelling and pronunciation, were likely to confuse, this court
said:
‘A patient, and perhaps also a professional, who knows only the one word and has an
imperfect recollection of it is likely to be mistaken. One must make allowance for imperfect
recollection and the effect of careless pronunciation rather than comparing the two words
letter by letter or syllable by syllable. But looking at the two marks globally and appreciating
their similarities the overall impression is that they are so similar as to be confusing.’

[20] Bearing those factors in mind, in this case, too, the similarities, both aural
and visual, between the words CURITAZ and CURIDA, are such that there is a
real likelihood of members of the public, including trained health-care
professionals, being caused to assume that the goods come from the same
source or wonder if the goods had a common origin – put differently, being
deceived or confused. The court a quo therefore erred in finding that there was
no likelihood of confusion. It ought to have held that there was such a prospect
and that the first respondent had failed to discharge the onus of showing the
contrary. Accordingly, it ought to have refused the first respondent’s application
to register its mark. In these circumstances, the appeal must succeed and there is
no reason for costs not to follow that event.

[21] The following order is made:
The appeal is upheld with costs, such costs to include the costs of two
counsel.
The order of the court a quo is set aside and substituted with the
following:

22 Paragraph 32.

‘(a)
The opposition to trademark application no 2009/23111 CURIDA in class
5 is upheld;
(b)
Trademark application no 2009/23111 CURIDA in class 5 is not
permitted to proceed to registration; and
(c)
The trademark applicant, Cipla Medpro (Pty) Ltd, is ordered to pay the
costs of the trademark opponent, Novartis AG.’

________________
L E Leach
Judge of Appeal

Appearances

For Appellant:

R Michau SC (with him L G Kilmartin)
Instructed by:

Adams & Adams Attorneys, Pretoria

Honey & Partners Inc, Bloemfontein

For First Respondent:
M Seale
Instructed by:

Brian Bacon & Associates Inc, Cape Town

Webbers, Bloemfontein