In the recent case of Adcock Ingram v Cipla Medpro (1) South Africa's highest commercial appeal court has made an important judgement for branding in the pharmaceutical industry. The case involves two competing generic drugs, Zetomaz and Zemax, used in the treatment of hypertension.
"Before this ruling the test for whether brands for prescription drugs where too close to one another was dependent on whether a pharmacist would be confused. Inevitably, this meant that prescribed brand names could be similar to one another because pharmacists were considered to be clever and not easily confused. Indeed, the lower court felt that Zetomaz and Zemax were fine to co-exist on competing products," says Darren Olivier, partner at Adams & Adams.
This recent ruling has decided differently, partly due to the fact that it recognises that consumers these days are far more active in deciding which drugs they will take even if they are sold on prescription.
"For example, facts about drugs and their side effects are far more readily available on the Internet, self diagnosis is common, and the medical profession is obliged to be far more frank, open and forthright about the nature, effects and options for a drug than was the case historically," comments Olivier.
"When one takes this into account the ordinary consumer brand names have to be farther apart just in case we become confused. Consequently, the appeal court ruled that the marks Zetomaz and Zemax were too close, in the process overturning the lower court ruling and differing from precedent set in 1983."
Olivier says the judgement is interesting for a number of reasons. "It is one of the most progressive judgements of this kind worldwide. In Europe, for example, a number of courts prefer the old test and stateside the position is not settled either.
"If there is a risk of confusion the dangers could be significant - there is a large illiterate section of our population - and there have been scandals over prescription drugs being sold over the counter in RSA."
According to Olivier it shows that intellectual property (trade marks in this instance) is important to generic drug manufacturers too; they are often known take a hard stance against IP rights because they argue that it affects access to drugs.
"The judgement places a large number of already registered trademarks at risk of cancellation from the register because they are now too close to earlier marks," concludes Olivier
[1] 265/2011) [2012 ZASCA 39 29 March 2012
