McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and another; McDonald's Corporation v
Dax Prop CC and another; McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and another
[1996] 4 All SA 1 (A)
Division:
Appellate Division
Date:
27 August 1996
Case No:
547/95
Before:
Corbett CJ, EM Grosskopf, Nestadt, Schutz JJA and Plewman AJA
Sourced by:
Adv JJF Hefer
Parallel Citation:
1997 (1) SA 1 (A)
. Editor's Summary . Cases Referred to . Judgment .
Appeals Admissibility of evidence Decision on admissibility of evidence is generally one of law and not discretion
Appeal court entitled to overrule such decision on appeal if it considered it to be incorrect.
Appeals Application to adduce further evidence on appeal Circumstances which arose after decision of lower court
General principle is that appeal court determines whether judgment appealed from is right or wrong according to the facts
in existence at the time the judgment was given Evidence of subsequent events only admitted if adequate reason
existed for exception to the general rule.
Evidence Admissibility of Appeal against refusal to admit evidence Decision on admissibility of evidence is generally
one of law and not discretion Appeal court entitled to overrule such decision on appeal if it considered it to be incorrect.
Evidence Admissibility of Market surveys Even if such evidence is hearsay, may be admitted under one of the
exceptions provided in section 3(1)(c) of the Law of Evidence Amendment Act 45 of 1988 In casu, no substantial
disadvantage or prejudice to other parties and reliability of results of survey not disputed Court holding that such
evidence was admissible.
Evidence Application to adduce further evidence on appeal Circumstances which arose after decision of lower court
General principle is that appeal court determines whether judgment appealed from is right or wrong according to the facts
in existence at the time the judgment was given Evidence of subsequent events only admitted if adequate reason
existed for exception to the general rule.
Evidence Circumstantial Court must weigh up the cumulative effect of all the evidence Analysing individual items of
evidence and showing that each, by itself, has little or no probative value is wrong approach to circumstantial evidence.
Trade marks Trade Marks Act 194 of 1993 Section 35 Meaning of "wellknown trade mark" and "well known in the
Republic" A trade mark is "well known in the Republic" if it is known to a substantial portion of the persons who are
interested in the goods or services to which it relate.
Trade marks Trade Marks Act 194 of 1993 Section 36(2) Meaning of "bona fide use" Trade mark must be used for
the purpose of distinguishing the goods or services provided thereunder from the same kind of goods and services
connected in the course of trade with any other person In casu, predecessor in title had not used the trade mark bona
fide and section 36(2) could not be used as a defence.
Trade marks Trade Marks Act 62 of 1963 Section 36(1) Removal of trade mark from trade marks register
Discretion of court Court retains general discretion even where section 36(1) is applicable Party showing that it is
entitled to relief under section 36(1)
Page 2 of [1996] 4 All SA 1 (A)
will not be deprived of such relief by the exercise of this general discretion unless there are exceptional circumstances.
Trade marks Trade Marks Act 62 of 1963 Section 36(1) Removal of trade mark from trade marks register
Discretion of court Court retains general discretion even where section 36(1) is applicable In deciding whether or not
to exercise this discretion, a court must have regard to all relevant facts and circumstances The fact that it would serve
no purpose to allow the application because the applicant would not be entitled to use the trade mark by reason of some
other legislation is a relevant circumstance.
Editor's Summary
The Appellant ("McDonald's"), a franchiser of fast food restaurants, was registered in the United States of America
and operated internationally. It had registered 52 trade marks in South Africa but had not traded in or used any of
its trade marks in the country.
The Joburgers application: In 1993, a South African company, Joburgers DriveIn Restaurant ("Joburgers"), applied
for the registration of some of the trade marks used by McDonald's and also for the expungement of the trade
marks of McDonald's from the trade marks register. The managing director of Joburgers indicated in the media that
he intended opening a national McDonald's hamburger chain. In response thereto, McDonald's wrote to Joburgers
demanding that it undertake not to use the trade marks of McDonald's. Joburgers failed to provide such an
undertaking and McDonald's launched an urgent application on the basis of infringement of its trade marks, passing