In a judgment handed down on 22 December 2011, the North Gauteng High Court, Pretoria ordered the cancellation of generic pharmaceutical giant, Aspen Pharmacare’s registered trade mark ANDOSEPT. The court’s order will effectively prevent Aspen from continuing to sell its ANDOSEPT pharyngeal product.
Aspen registered its ANDOSEPT trade mark with effect from 2005 and launched a pharyngeal product under that name in 2008, in direct competition with the market-leading product ANDOLEX.
The ANDOSEPT product was placed on pharmacy shelves in packaging similar to that used for the ANDOLEX product. Pursuant to a complaint lodged with the Advertising Standards Authority of South Africa (“the ASA”) by the owner of the ANDOLEX brand, lesser-known Australian company, Wirra, the Directorate of the ASA ordered Aspen to withdraw its packaging on the basis that it imitated the ANDOLEX packaging. Aspen changed its packaging but continued to sell its product under the trade mark ANDOSEPT, which prompted Wirra to take court action.
Wirra applied to court for an order cancelling Aspen’s ANDOSEPT trade mark and an interdict restraining its continued use of the mark. Wirra’s case was that the mark ANDOSEPT is so similar to its trade mark ANDOLEX, registered in 1987, as to be likely to deceive or cause confusion. In a surprising move Aspen undertook that, if its mark was cancelled, it would not continue to use it. The undertaking meant that the court did not have to consider Wirra’s prayer for an interdict. Aspen’s fate, therefore, depended solely on whether or not its registered trade mark would survive the attack.
The court found that the trade marks were indeed confusingly or deceptively similar and ordered the cancellation of Aspen’s mark on the basis that it was incorrectly registered in the face of Wirra’s registration for ANDOLEX and its established reputation in that mark and that Aspen’s mark was an entry that wrongly remained on the Register of Trade Marks.
The court took into account that the parties’ products were over-the-counter medicines and, unlike the case with prescription-only medicines, confusion could not be prevented by pharmacists prescribing the correct medicine. The fact that the mark ANDOSEPT incorporates the unique and distinctive prefix ANDO- also weighed heavily with the court.
The Registrar of Trade Marks, who was cited as a respondent in the case, was directed by the court to remove Aspen’s trade mark registration from his register. Barring a successful appeal by Aspen, the Registrar’s removal of the trade mark from his register will signal the end of Aspen’s sale of its ANDOSEPT product.
Adams & Adams represented the Applicant, Wirra.
(Adams and Adams, Press release, January 2012)