McDonalds Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A)

 McDonalds Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A)

Facts

McDonald's Corporation (McDonald's) is a multinational fast food corporation that operates restaurants all over the world. McDonald's owns a number of registered trade marks, including the "Golden Arches" and the "Big Mac".

Joburgers Drive-Inn Restaurant (Pty) Ltd (Joburgers) is a South African fast food restaurant chain. Joburgers opened a number of restaurants in South Africa using the trade marks "Golden Arches" and "Big Mac".

McDonald's sued Joburgers for trade mark infringement and passing off. McDonald's claimed that Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was likely to deceive or cause confusion among consumers.

Issues

The main issues in the case were:

• Whether Joburgers' use of the trade marks "Golden Arches" and "Big Mac" infringed McDonald's trade mark rights; and
• Whether Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was a passing off.

Reasons

The Appellate Division held that:

• Joburgers' use of the trade marks "Golden Arches" and "Big Mac" infringed McDonald's trade mark rights; and
• Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was a passing off.

Trade mark infringement

The Appellate Division held that Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was likely to deceive or cause confusion among consumers. The court found that the two trade marks were similar enough to be likely to cause confusion, and that the goods in relation to which the trade marks were used were similar (hamburgers and other fast food).

Passing off

The Appellate Division held that Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was a passing off. The court found that the overall impression created by Joburgers' use of the trade marks was that its restaurants were associated with McDonald's.

Conclusion

The Appellate Division granted an interdict restraining Joburgers from using the trade marks "Golden Arches" and "Big Mac".

Summary

The case of McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A) is a landmark case in South African law. The case is particularly important for its analysis of the following issues:

• The test for trade mark infringement;
• The test for passing off; and
• The application of South African trade mark law to foreign trade marks.

Test for trade mark infringement

The Appellate Division in this case held that the test for trade mark infringement is whether the defendant's use of the trade mark is likely to deceive or cause confusion among consumers. The court found that this test is in line with the test for trade mark infringement in other common law countries.

Test for passing off

The Appellate Division in this case held that the test for passing off is whether the defendant's use of the trade mark is likely to create the impression in the minds of consumers that the defendant's goods or services are associated with the plaintiff's goods or services. The court found that this test is in line with the test for passing off in other common law countries.

Application of South African trade mark law to foreign trade marks

The Appellate Division in this case held that South African trade mark law applies to foreign trade marks. The court found that this is necessary in order to protect the goodwill of foreign trade mark owners in South Africa.

Impact of the Case

The case of McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A) has had a significant impact on the law of trade marks in South Africa. The case has established that the tests for trade mark infringement and passing off are the same as the tests in other common law countries. The case has also established that South African trade mark law applies to foreign trade marks.