The next question then is: how well should it be known to such persons? (question (b) above). On behalf of
McDonald's it was argued that the test in this regard is a qualitative and not a quantitative one. The question is
not, it was argued, how many of the relevant persons know the mark, but how profound the knowledge of the mark
is among those who do know it. In my view this argument is untenable. I suppose that knowledge of a mark could
be so vague or superficial as hardly to count as knowledge at all, but apart from that I would not have thought that
there would normally be great differences in the degree of knowledge of the mark by members of the public, or that
such differences, if they existed, would be of any relevance. In the present context the important practical question
is not whether a few people know the mark well but rather whether sufficient persons know it well enough to
entitle it to protection against deception or confusion.
How many people are sufficient? The only guideline provided by the legislature lies in the expression "well
known". This is in itself so vague as hardly to provide any assistance at all. It is certainly capable of bearing the
meaning urged upon us by counsel for McDonald's, namely a substantial number as used in the law of passing off
generally. In this regard the judge a quo commented that if it was the object of the subsection to require knowledge
only of a substantial
Page 17 of [1996] 4 All SA 1 (A)
number of persons, "it is strange that this was not simply stated to be the requirement instead of merely adopting
the terminology of section (sic) 6bis(1) of the Paris
View Parallel Citation
Convention". With respect, I do not agree. The purpose of the legislature clearly was to give legislative force to
article 6bis of the Paris Convention. To this end it was natural to repeat the language of the Convention, leaving it
to the courts to give practical effect to the vague expressions used.
On behalf of the respondents it was contended that a greater extent of public knowledge is required. The
difficulty here is one of definition and practical application. If a substantial number is not sufficient, what is? To
require one hundred percent would clearly be excessive, but how much less would suffice? Seventyfive percent,
fifty percent? What logical basis is there for laying down any such requirement? And how does one prove any such
arbitrary percentage?
It seems to me that McDonald's's contention must be sustained. The legislature intended to extend the
protection of a passing off action to foreign businessmen who did not have a business or enjoy a goodwill inside
the country provided their marks were wellknown in the Republic. It seems logical to accept that the degree of
knowledge of the marks that is required would be similar to that protected in the existing law of passing off. The
concept of a substantial number of persons is well established. It provides a practical and flexible criterion which is
consistent with the terms of the statute. No feasible alternative has been suggested.
In coming to a different conclusion the court a q u o relied heavily on the Canadian case of Robert C Wian
Enterprises, Inc v Mady (1965) 49 DLR (2d) 65. Section 16 of the Canadian Trade Marks Act provided inter alia:
"Any applicant ... for registration of a trade mark that is registrable and that he or his predecessor in title has used in
Canada or made known in Canada in association with wares or services is entitled ... to secure its registration in respect of
such wares and services, unless at the date on which he or his predecessor in title first so used it or made it known it was
confusing with
(a)
a trade mark that had been previously used in Canada or made known in Canada by any other person;"
The expression "made known in Canada" was defined in section 5, which, in so far as relevant, read as follows:
"A trade mark is deemed to be made known in Canada by a person only if it is used by such person in a country of the
Union, other than Canada, in association with wares or services, and
...
(b)
such wares or services are advertised in association with it in
(i)
any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or
users of such wares or services, or
(ii)
radio broadcasts, as defined in the Radio Act ..., ordinarily received in Canada by potential dealers in or users
of such wares or services,
and it has become well known in Canada by reason of such ... advertising."
The court had to decide inter alia whether the plaintiff 's trade mark had become "wellknown in Canada" by reason
of radio advertising. For the purpose of establishing this, the plaintiff tendered affidavits of 54 persons residing in
Page 18 of [1996] 4 All SA 1 (A)
Windsor, Ontario. The court analysed these affidavits and found them to be of insufficient weight. It therefore held
(at 81) that the plaintiff had failed to establish that its trade marks were "well known in Canada" by reason of radio
advertising.
View Parallel Citation
Despite having decided the matter in issue, the court proceeded to state the following in a passage (at 81) relied