Glaxo wins drug name case

An attempt by a pharmaceutical company to register an antibiotic drug similar to a product of Glaxo Group has been thwarted by the High Court.

In a ruling, Justice Luka Kimaru said the a Synercef trademark by Syner-Med Pharmaceuticals Ltd was bound to cause confusion and deception in the minds of the public.

According to Glaxo Group, a subsidiary of Glaxosmithkline plc.d, Zinacef was registered in Kenya in March 1978 to market the antibiotic drug.

Both Syner-Med and Glaxo Group are leading clinical and pharmaceutical companies in the United Kingdom.

Four years ago, Syner-Med applied to the Registrar of Trademarks and was allowed to register Synercef in the same class to market a similar antibiotic.

Both products contain a compound known as Cefuroxime. The application to register the second trademark was allowed by the Registrar on July 20, last year.

Glaxo was from the beginning opposed to the registration of the second antibiotic and petitioned the registrar in vain. The registrar was of the view that the two trademarks were different in length and pronunciation.

The registrar was also of the view that the packaging, colours and design of the two products were distinct and only prescribed by medical professionals who would know the difference.

Glaxo Group was dissatisfied and appealed to the High Court. In the appeal, Glaxo Group was of the view that the registrar was wrong by holding that the marks were phonetically different.

Glaxo further held that the names Synercef and Zinacef were strikingly similar and likely to cause confusion.

In opposition, Syner-Med called its general manager Tiruvalanchuzi S. Viswanathan who produced in court packages of the two rival drugs.

According to him, no one was capable of being deceived by the packaging and the contents because they were distinct.

The manager was also of the view that the drugs were sold to professional pharmacists and given out on prescription only.

In his ruling, Justice Kimaru compared the dispute with a fight over registration of names between Nivea and Nivelin both of which were petroleum jelly, Tri-histana and Trihistamin which were drugs and in Uganda the fight over bicycle registration between Raleigh and Lale.

Phonetically

The judge said that in his view, the words Synercef and Zinacef were phonetically similar in pronunciation.

“This court takes judicial notice of the fact that many people in Kenya would likely pronounce letter “SY” as “Z” and therefore the two names would be pronounced in a phonetically identical manner and not distinctly as claimed by Syner-Med,” he said.

“The fact that the two products are prescription only drugs does not preclude the fact that confusion would be caused when an order is made orally or by telephone to such professionals such as pharmacists or doctors,” he said.

The judge cancelled the registration of the Synercef saying it was too similar to Zinacef and likely to cause confusion.

Justice Kimaru also directed Syner-Med to pay the costs of the suit.