Adcock Ingram has been barred by a court order from selling and distributing its newly launched painkilling drug, Lenbucod, which the Pretoria high court found infringed Aspen’s Mybucod.
The sparring between the two JSE-listed pharmaceuticals is the latest trademark battle in the industry — with companies increasingly taking legal action to protect their turf.
Aspen dragged smaller rival Adcock to court after the latter in January launched Lenbucod — arguing that the name was confusingly similar to “Mybucod” and amounted to a trademark infringement.
Adcock opposed the application, contending that Aspen’s trademark was invalid and should not have been registered, as “Bucod” was allegedly a nondistinctive, descriptive term derived from the name of the active ingredients, ibuprofen and codeine.
The court dismissed Adcock’s argument, prohibiting the company from using “Lenbucod” or any confusingly similar mark in relation to the relevant goods, saying Aspen registered its trademark in 2008 and used it for 17 years without interference or challenge.
The court also ordered the destruction of all materials bearing the infringing mark, in a move that is likely to see Adcock bleed money.
“The example tendered by the respondents is inapposite in the present case. ‘Bucod’ is an entirely contrived term, the origin or meaning of which is not readily apparent without either the specialist knowledge of a pharmacist or competitor such as the respondent,” the judgment reads.
“It is highly unlikely that a consumer would over the last 17 years, and absent any similarly named competitor product, have made the association with the pharmacological ingredients rather than the applicants as the owners of the trademark and sellers of the product.”
Aspen is worth R54bn on the JSE, while Adcock is worth R8bn.
Dale Healy, a partner in Adams & Adams trademark litigation section, said the case added to the body of work in trademark litigation.
“Adcock argued that ‘Bucod’ was descriptive and not distinctive, and thus the trademark should not have been registered. The court rejected this, finding that ‘Bucod’ was a coined term, not inherently descriptive, and had acquired distinctiveness through long-standing use,” Healy said.
“The court also noted that Adcock itself had previously registered a trademark containing ‘Bucod’ without any disclaimer [an entry against a trademark that ensures that the trademark owner does not acquire exclusive rights to the allegedly descriptive element], undermining its argument.”
Private hospital group Netcare in 2023 successfully thwarted competition from its erstwhile plastic surgeon, Dr Marisse Venter, who opened her practice a stone’s throw away from the group’s Milpark facility in Johannesburg.
The JSE-listed group approached the companies tribunal in 2022 after the Gauteng department of health made it aware that an outfit called Milpark Day Hospital had made an application for a day hospital licence.
Such notifications from the department are issued to nearby hospitals in the area in which the applicant for a hospital licence has applied to operate, so that these nearby hospitals can object to the application on various grounds.
Would you like to comment on this article?
Sign up (it's quick and free) or sign in now.
Please read our Comment Policy before commenting.