goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services
connected in the course of trade with any other person".
Bona fide use of a trade mark within the meaning of section 36(2) must therefore be use for the purpose of
distinguishing the goods or services provided under that mark from the same kind of goods and services connected
in the course of trade with any other person. In the instant case Joburgers was the immediate predecessor in title
to Dax. I have already set out the circumstances in which Joburgers acquired the MacDonalds business in Durban.
Briefly, Joburgers was interdicted from using the McDonald's trade marks. It then bought the MacDonalds business
and traded under that name in breach of the interdict. Its purpose in using the trade mark MacDonalds was not to
distinguish its business from that of others, but rather the converse: to use a mark confusingly similar to that of
McDonalds. This is clearly an ulterior purpose in the sense discussed in the above cases. Joburgers continued to
trade in this way until it was declared to be in contempt of court. It then promptly disposed of the business to Dax.
On behalf of McDonald's an attack was launched on Dax's good faith in acquiring the business. In my view it is not
necessary to consider this argument. Once it is found that Dax's predecessor in title, Joburgers, did not use the
mark MacDonalds bona fide, it follows that section 36(2) cannot provide any defence to a claim under section 35(3).
I consider therefore that the wellknown marks application should have succeeded in the court a quo, at least in
respect of the mark McDonald's. McDonald's applications based on passingoff and unlawful competition have
therefore become moot and need not be considered further.
I now turn to the Joburgers application and the Dax application. As stated above, these applications have to be
decided in accordance with the terms of the old act.
It will be recalled that each of these matters involved an application for the removal from the register of the
McDonald's trade marks and an application by McDonald's for an interdict restraining the use of its
View Parallel Citation
marks. It was common cause that the decisive issue related to removal if the applications for removal were
granted, the applications for interdicts would fall away. Per contra, if removal was refused, the interdicts had to be
granted.
The applications for removal from the register were brought under section 36(1) of the old act. This subsection
provides inter alia:
"... a registered trade mark may, on application to the court ... by any person aggrieved, be taken off the register in respect
of any of the goods or services in respect of which it is registered, on the ground either
(a)
that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it
should be used in relation to those goods or services by him, and that there has in fact been no bona fide use of the
trade mark in relation to those goods or services by any
Page 27 of [1996] 4 All SA 1 (A)
proprietor thereof for the time being up to the date one month before the date of the application; or
(b)
that up to the date one month before the date of the application a continuous period of five years or longer elapsed
during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in
relation to those goods or services by any proprietor thereof for the time being;"
A great deal of evidence and argument was presented to us on whether Joburgers and Dax have established a
case for removal under these provisions, and, if they have, whether McDonald's has succeeded in showing that, as
far as the application under section 36(1)(b) was concerned, its nonuse of the marks was excusable as being "due
to special circumstances in the trade" for the purposes of section 36(2). In my view it is not necessary to consider
these aspects. The position now is that the wellknown marks application has succeeded, at least as far as the
mark "McDonald's" is concerned. Although, as stated above, there are some McDonald's marks which do not
incorporate the name McDonald's, we were assured that the marks were all in some way associated with one
another. Moreover, the case was fought on a winner take all principle. It was not suggested by Joburgers or Dax
that, even if the marks containing the name McDonald's were well known, they would still be entitled to use, say,
the clown device. The prize at issue is the mark McDonald's. The wellknown marks application has effectively
awarded it to McDonald's.
In these circumstances it seems anomalous and even futile to proceed with the applications for removal from the
register. Even if these applications succeeded it would not benefit Joburgers or Dax. They would still be interdicted
from using the mark McDonald's.
It has been held that, because section 36(1) states that a registered trade mark "may" be removed from the
register in the circumstances specified therein, the tribunal has a general discretion to refuse expungement in
addition to the specific terms of the section. See Webster and Page, op cit., at 371372 and authorities there cited.
As far as this court is concerned, the matter is, however, still open. See Distillers Corporation (SA) Ltd v SA Breweries
Ltd and Another; Oude Meester Groep Bpk and Another v SA Breweries Ltd 1976 (3) SA 514 (A) at 540C. The parties
before us, and the court a quo, accepted that such a discretion exists. The circumstances of the present case show,
in my view, how desirable it is, from a
View Parallel Citation
practical point of view, that such a discretion should exist. The use of the word "may" in the section appears to