In a battle between pharmaceutical companies Cipla Medpro (Pty) Limited has been legally restrained by the Cape Town High Court from using the trade name Furizome, following a trademark infringement dispute with Adcock Ingram Limited regarding the Urizone trademark.
The Urizone pharmaceutical product is a broad- and medium-spectrum antibiotic used to treat urinary tract infections. It is sold as a single dose in a three-gram (3g) sachet, and its active ingredient is Fosfomycin.
The court found that Furizome is too similar to Urizone - the latter being a trademark owned by Adcock Ingram. This means that the name Furizome could confuse people and violate Adcock Ingram's trademark rights. Both these medicines can only be dispensed by a doctor’s prescription.
The applicants in this matter were Adcock Ingram Limited, and Adcock Ingram Healthcare (Pty) LTD, both are part of the Adcock Ingram Group. The other applicant was Zambon S.P.A, a company incorporated under the laws of Italy.
It is the registered proprietor of the trademark Urizone. Zambon entered into a licence and supply agreement with Adcock Limited regarding the marketing and distribution of Urizone products in South Africa. Both Adcock Limited and Healthcare are licensed to use Urizone trademarks in SA.
Both the Adcock companies said Urizone was launched in the country in 1993. They said more than 3 million Urizone products were sold between 2011 to 2023. Additionally, it was the only product of its kind on the South African market. The companies said they invested approximately R5 million in advertising and promoting the Urizone product between 2018 and 2022.
“For almost 8 years the Urizone product had no generic alternative on the South African market,” said the three applicants.
However, in February 2023 Adcock Healthcare said it became aware that Cipla Medpro had adopted and launched an interchangeable multi-source medicine (generic) containing the active ingredient Fosfomycin in 3g sachets under the trademark Furizome.
The applicants claimed that the use of Furizome by Cipla Medpro was intended to capitalise and take advantage of the reputation and goodwill attached to their Urizone trademark. They also pointed out that Furizome was sold similarly to their Urizone product.
They accused Cipla of contravening the South African Health Products Regulatory Authority (Sahpra) guidelines for advertisement of Medicines and Health products.
“There is a danger of deception or confusion between the trademarks, especially having regard to the oral, visual, and conceptual similarities between them,” the applicants added.
Advocate Reinard Michau SC argued that this is not the first instance in which a member of the Adcock Group of Companies has been at loggerheads with the respondent (Cipla) over its use of a trade mark which resembles a successful product of the Adcock Group of companies.
In its defence Cipla Medpro stated that brand names for pharmaceutical products are chosen by taking into account the active ingredient, as well as the mode of action or treatment area.
It noted that according to the prevailing practice, all product packaging and product names must receive approval from Sahpra before registration.
“Two alternatives were provided to Sahpra for the product name, Furizome and Fosfomycin 3g Cipla. Both names were accepted and officially registered with Sahpra on September 27, 2022,” said the Cipla.
Additionally, Cipla denied that the trademarks were similar. Stating that a doctor may prescribe Urizone to a patient and when they go to the pharmacy, a pharmacist is obliged to inform the patient that a generic substitution exists. The patient will decide which product to use.
“There is no likelihood of confusion or deception since the patient is presented with two different options,” Cipla explained.
Adv Cedric Puckcrin SC, for Cipla, said the prescribing doctor and the dispensing pharmacist will be a safeguard against potential confusion between the product names. Puckrin implored the Court to dismiss the applicants’ application.
Judge James Lekhuleni ordered Cipla Medpro to pay the applicant’s costs, including those of two counsels employed.
“Cipla Medpro is interdicted and restrained from unlawfully competing with the applicants by using in any manner or form the trademark Furizome or any confusingly similar trademark,” he said.