off and unlawful competition. An order was granted by agreement on 28 September 1993 that Joburgers would not
infringe the trade marks of McDonald's pending the determination of the application. Joburgers filed a counter
application for the expungement of the McDonald's trade marks on the basis that they were registered without any
bona fide intention that they be used and that they had in fact not been used for the periods required by section
36(1) of the Trade Marks Act 62 of 1963 ("the old Act"). In the meantime, Joburgers had purchased a business in
Durban trading under the name MacDonalds. McDonald's became aware of this early in 1994 and launched
proceedings for relief on the grounds that Joburgers was in contempt of the court order of 28 September 1993. On
15 March 1994, Nugent J declared that Joburgers was in contempt and ordered that all proceedings in respect of its
counterapplication to expunge the McDonald's trade marks be stayed until it had purged its contempt. The next
day, Joburgers informed McDonald's that it had disposed of MacDonalds.
The Dax application: In May 1994, McDonald's became aware that MacDonalds in Durban was being conducted by
Dax Prop CC ("Dax") and wrote to Dax requesting an undertaking that it cease to use the name MacDonalds or any
other trade mark which was deceptively or confusingly similar to McDonald's. No such undertaking was given. Dax
then applied to register the name MacDonalds as a trade mark and launched an application against McDonald's
seeking the expungement of the McDonald's trade marks. McDonald's brought a counterapplication for an interdict
preventing Dax from infringing its trade marks.
The wellknown marks application: On 1 May 1995, the Trade Marks Act 194 of 1993 ("the new Act") came into
force and repealed the old Act. Section 35 of the new Act provided for the protection of "wellknown" trade marks
emanating from certain foreign countries. On 20 June 1995, McDonald's brought an application against Joburgers
and Dax under section 35, claiming that all 52 of
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its trade marks were wellknown marks in terms of the section and that an order should be granted interdicting and
restraining Joburgers and Dax from imitating, reproducing or transmitting those trade marks in South Africa.
Section 3(2) of the new Act provided that all applications and proceedings commenced under the old Act should
be dealt with in accordance with the provisions of that Act as if it had not been repealed. The Joburgers and Dax
applications were therefore dealt with under the old Act and the wellknown marks application under the new Act.
The applications were heard together by Southwood J who found against McDonald's in all three matters.
On appeal, McDonald's applied to adduce further evidence relating to two matters which had arisen after the
decision of the court a quo: the first related to recent business activities of Dax and McDonald's and resultant
litigation between them; and the second concerned the assignment to Dax by Joburgers of its rights in or to the
McDonald's trade marks.
Held The Court held that the general principle was that an appeal court determined whether the judgment
appealed from was right or wrong according to the facts in existence at the time the judgment was given and not
according to new circumstances which came into existence afterwards. In principle, evidence of events subsequent
to the judgment under appeal should not be admitted in order to decide the appeal although there might be
exceptions to this rule. In this case, no adequate reason was given why such an exception should be made with
regard to the evidence relating to the litigation between Dax and McDonald's. Regarding Joburgers' assignment, the
Court found that the new evidence did not suggest that a judgment in favour of McDonald's would have no practical
effect or result; at most the evidence tended to show that one of the respondents no longer had an interest in the
appeal, a situation for which section 21A of the Supreme Court Act 59 of 1959 provided no remedy. Moreover, the
new evidence was controverted by further evidence tendered by Joburgers and Dax. The application to adduce
further evidence was accordingly dismissed with costs.
On the merits, the Court first considered the wellknown marks application. The essential dispute between the
parties in this application was what level of awareness in the public mind was required for a mark to qualify as
"wellknown" in terms of section 35 of the new Act. In interpreting the expressions "wellknown trade mark" and
"well known in the Republic", the Court looked at the background to section 35 and noted that it had its origins in
article 6bis(1) of the Paris Convention on the Protection of Industrial Property of 20 March 1883, as amended. Prior
to the enactment of the new Act, it was necessary for a foreign company to show the existence of a goodwill within
South Africa to found a claim in respect of passing off; this was also the situation in the United Kingdom prior to the
enactment of the British Trade Marks Act of 1994. Section 35(1) of the new Act pertinently extended protection to
the owner of a foreign mark whether or not such person carried on business or had any goodwill in South Africa;
the protection granted was a prohibition on the use of the mark in relation to goods or services in respect of which
the mark was well known and where such use was likely to cause deception or confusion. The Court held that a
mark was "well known in the Republic" if it was well known to persons interested in the goods or services to which
it related. In the context of the present case, the important question was whether sufficient
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persons knew the mark well enough to entitle it to protection against deception or confusion. In deciding how many
people were sufficient, the concept of a substantial number of persons in the existing law of passing off provided a
practical and flexible criterion which was consistent with the terms of the new Act.
The Court then considered the evidence concerning the extent to which the McDonald's trade marks were known
in South Africa. McDonald's allegation that, in view of the vast scale of its operations, its trade marks were some of
the best known in the world had not been denied by the Respondents. The Court found that the spill over of
advertising into South Africa through printed publications and television must, in all probability, be quite extensive