upon by the court a quo:
"Furthermore, I think I should say that there was really no attempt, in my view, to show that the plaintiff 's trade marks
were 'well known in Canada'. All that was attempted was to show that they were well known in Windsor, Ontario and
surrounding territory. It was argued that, if they were well known in any part of Canada, they were "well known in Canada'
within section 5 of the Trade Marks Act. I cannot accept this view. A thing may be regarded as known in Canada if it is
known only in some part of Canada but, in my view, it is not 'well known' in Canada unless knowledge of it pervades the
country to a substantial extent ... I do not think a trade mark can be regarded as 'well known in Canada' when knowledge of
it is restricted to a local area in Canada. In my view it must be 'well known' across Canada 'among potential dealers in or
users of' the wares or services with which it is associated."
It should be noted that the court in the Wian case was faced with different problems from those arising in our case.
In the Canadian legislation there was no uncertainty about the class of persons to whom the trade mark had to be
well known. Section 5(b)(ii) of the Act in effect defined the class as being "potential dealers in or users of such
wares and services" (i.e., the wares or services in association with which the trade mark was used by the plaintiff).
The further question, i.e., when a mark must be regarded as well known to such a class, also did not arise in the
Wian case. The only matter dealt with in the above passage was the geographical area within which the mark had
to be well known. This is not a question which arises in the present case. Moreover, the court's views in this regard
were based on the Canadian legislation which differs from ours. In all these circumstances I do not find the Wian
case of any assistance. I may note in passing that the reasoning in the above passage has in any event not been
accepted unreservedly in Canada. See Valle's Steak House v Tessier et al. (1974) 49 CPR (2d) 218 at 226.
I turn now to the evidence concerning the extent to which the McDonald's trade marks are known in the
Republic. As I have stated earlier, McDonald's is one of the largest, if not the largest, franchiser of fast food
restaurants in the world. At the end of 1993 there were 13 993 McDonald's restaurants spread over 70 countries.
The annual turnover of McDonald's restaurants amounts to some $23 587 million. McDonald's trade marks are used
extensively in relation to its own restaurants as well as to those that are franchised. The level of advertising and
promotion which has been carried out by McDonald's, its subsidiaries, affiliates and franchisees in relation to
McDonald's restaurants exceeds the sum of $900 million annually. Their international marketing campaigns have
included sponsorship of the 1984 Los Angeles and 1992 Barcelona Olympics. McDonald's has also been a sponsor of
the 1990 Soccer World Cup Tournament in Italy and the 1994 World Cup Soccer Tournament in the United States of
America. Mr Paul R Duncan, the vice president and general counsel of McDonald's, stated on affidavit that, in view of
the vast scale of his organisation's operations, the McDonald's trade marks are in all probability some of the
Page 19 of [1996] 4 All SA 1 (A)
best known trade marks in the world. This was not denied. Although there was no evidence on the extent to which
the advertising outside South Africa
View Parallel Citation
spilled over into this country through printed publications and television, it must, in all probability, be quite
extensive. In addition the McDonald's trade marks would be known to many South Africans who have travelled
abroad. This again would not be an insignificant number.
Spontaneous acts by South Africans have confirmed that there is a general level of knowledge in this country
about the operations of McDonald's. Thus McDonald's disclosed that, between 1975 and 1993 it received 242
requests from South Africans to conclude franchising agreements. Some of these applicants were prominent
companies. For reasons which are not relevant at present, none of these applications were acceded to.
The conduct of Joburgers and Dax in the present case confirms the reputation attaching to the McDonald's marks.
Intrinsically the word McDonald has no attractive force. It is a fairly common surname. Had it not been for the
reputation it has acquired over the years nobody would wish to appropriate It. it is therefore significant that
Joburgers and Dax have gone to considerable trouble and expense to obtain control over the McDonald's marks.
Joburgers announced its intention of operating under the name McDonald's in a provocative manner through an
article in the Sunday Times which was bound to stimulate legal action against it. It may be noted in passing that the
article in the Sunday Times, which is quoted above, itself clearly presupposes that its readers would be aware of
McDonald's, its business, products and marks.
After an interdict was obtained against Joburgers, it purchased the business of MacDonalds in Durban. I have
already referred to the litigation between Joburgers and the Khans arising out of that purchase. In her affidavit in
those proceedings Mrs Pead, who, it will be recalled, is a director of Joburgers, made it quite clear what the purpose
of the transaction was. She said:
"[Joburgers] wishes to secure the goodwill built up through the eighteen years use of the MacDonalds trade mark for itself.
Should [Joburgers] not be able to do so its position in regard to the proceedings with McDonald's Corporation ... will be
severely prejudiced."
When the court held that Joburgers was in breach of the interdict by conducting the MacDonalds business in
Durban, the business was sold to Dax, a business associate of Joburgers. Both Joburgers and Dax have applied for
the registration of McDonald's marks or similar ones, and have applied for the expungement of these marks in the
name of McDonald's.
Quite obviously Joburgers and Dax both consider that the McDonald's mark is a valuable asset, worth a great
deal of trouble, expense and risk to secure. They have not given any explanation for this attitude. If one assumes
that they intend to trade under the name McDonald's or MacDonalds, there is only one possible explanation, namely
that in their view the McDonald's marks enjoy a high reputation in this country.