I consider therefore that at least a substantial portion of persons who would be interested in the goods or
services provided by McDonald's know its name, which is also its principal trade mark. At least this mark is in my
view wellknown for the purposes of section 35 of the new act. Since McDonald's has not in fact carried on business
in South Africa, people who know its mark will also know it as a foreign (and, more particularly, American) business.
It almost goes without saying that if the McDonald's mark is used as contemplated by Joburgers and Dax in relation
to the same type of fast food business as that conducted by McDonald's, it would cause deception or confusion
within the meaning of section 35(3) of the new act. In the result McDonald's has in my view satisfied all the
requirements of this subsection.
View Parallel Citation
On behalf of Dax it was contended that its use of the mark MacDonalds in respect of its Durban business was
nevertheless permitted by section 36(2) of the new act, which reads as follows:
"Nothing in this Act shall allow the proprietor of a trade mark entitled to the protection of such mark under the Paris
Convention as a wellknown trade mark, to interfere with or restrain the use by any person of a trade mark which
constitutes, or the essential parts of which constitute, a reproduction, imitation or translation of the wellknown trade mark in
relation to goods or services in respect of which that person or a predecessor in title has made continuous and bona fide use
of the trade mark [from a date which is not now relevant] ..."
The question then is whether Dax and its predecessors in title have used the mark MacDonalds continuously and
bona fide. There is considerable evidence about the name under which the business was carried on in Durban before
Joburgers bought it. Much of it is contested. I do not think it is necessary to
Page 25 of [1996] 4 All SA 1 (A)
traverse it. In my view this point may be decided simply on the requirements of bona fide use. The meaning of this
concept was considered by Trollip J in Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk
1963 (2) SA 10 (T). He was dealing with section 136 of the Patents, Designs, Trade Marks, and Copyright Act 9 of
1916. That section read in part:
"A registered trade mark may, on application to the court of any person aggrieved, be taken off the register in respect of
any of the goods for which it is registered ... on the ground that there has been no bona fide user of such trade mark in
connection with such goods during the five years immediately preceding the application ...".
At 23H24E Trollip J said:
"... 'bona fide' must be given some effective meaning. In my view it cannot be confined to meaning merely real or genuine
as opposed to fictitious or simulated, or honest as contrasted with dishonest, because it is difficult to conceive how a user, in
the sense of the exercise of a right, can be said to be fictitious, simulated or dishonest, and in any event, a fictitious,
simulated or dishonest user would not in law be a user at all, and the addition of the qualification 'bona fide' would therefore
have been totally unnecessary. The words were obviously inserted to give a particular quality to the user which it was
intended should defeat an aggrieved person's application ... The expression obviously relates to the proprietor's state of
mind in using his trade mark and therefore his object or intention in using it. Kerly on Trade Marks, 8th ed. at p. 218, says
that in the corresponding section in the U.K. Act
'the expression 'bona fide' is also used where the contrast seems to be, not between honesty and dishonesty, but
rather between what is genuine and what is a mere device to secure some ulterior object'.
...
Now the system of registering trade marks is designed to protect, facilitate and further the trading in the particular goods in
respect of which the trade mark is registered. The very name, 'trade mark', connotes that, and the definition thereof in sec
96 of the Act confirms it. I would therefore say that 'bona fide user' in sec 136 means a user by the proprietor of his
registered trade mark in connection with the particular goods in respect of which it is registered with the object or intention
primarily of protecting, facilitating, and furthering his trading in such goods, and not for some other, ulterior object."
T h e Gulf Oil c a s e w e n t o n a p p e a l (Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation
1963 (3) SA 341 (A). At 351EF
View Parallel Citation
Steyn CJ, who delivered the judgment of the court, stated that he did not propose to attempt a comprehensive
definition of what the expression "no bona fide user" meant. He then added:
"Whatever the full meaning of the phrase may be, it seems clear that user for an ulterior purpose, unassociated with a
genuine intention of pursuing the object of which the Act allows the registration of a trade mark and protects its use, cannot
pass as a bona fide user."
See also Oude Meester Groep Bpk and Another v SA Breweries Ltd; SA Breweries Ltd and Another v Distillers Corporation
(SA) Ltd and Another 1973 (4) SA 145 (W) at 150G151C.
Page 26 of [1996] 4 All SA 1 (A)
Now in the present case section 36(2) of the new act does not refer specifically to the bona fide use of a registered
mark, and the context in which the expression is used is somewhat different from that considered in the above
quoted cases. Nevertheless I consider the reasoning to be entirely applicable. A "trade mark" is defined in section
2 of the new act as
"... a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the