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.

Société des Produits Nestlé SA v International Foodstuffs Co 2013 JDR 2699 (GNP)

Société des Produits Nestlé SA v International Foodstuffs Co 2013 JDR 2699 (GNP)

Facts

Société des Produits Nestlé SA (Nestlé) is the owner of the registered trademark "MAGGI" for a variety of food products, including noodles. International Foodstuffs Co (IFC) is a South African company that sells a variety of food products, including noodles. IFC sold noodles under the trademark "MAGGI PLUS".

Nestlé sued IFC for trade mark infringement. Nestlé claimed that IFC's use of the trademark "MAGGI PLUS" infringed its registered trademark "MAGGI".

Issues

The main issue in the case was whether IFC's use of the trademark "MAGGI PLUS" infringed Nestlé's registered trademark "MAGGI".

Reasons

The Gauteng North High Court (GNP) held that IFC's use of the trademark "MAGGI PLUS" infringed Nestlé's registered trademark "MAGGI". The court reasoned that the two trademarks were similar enough to be likely to cause confusion among consumers.

Similarity of the trademarks

The GNP explained that the test for trade mark infringement is whether the two trademarks are similar enough to be likely to cause confusion among consumers. The court found that the trademarks "MAGGI" and "MAGGI PLUS" were similar enough to be likely to cause confusion among consumers because they were both pronounceable in the same way and they both began with the word "MAGGI".

Likelihood of confusion

The GNP also explained that the court must consider a number of factors in determining whether there is a likelihood of confusion among consumers. These factors include:

• The degree of similarity between the two trademarks;
• The nature of the goods or services in relation to which the trademarks are used; and
• The knowledge of the average consumer.

The GNP found that there was a likelihood of confusion among consumers in this case because the two trademarks were similar and the goods in relation to which the trademarks were used were the same (noodles). The court also found that the average consumer would be likely to be confused by the two trademarks because they were both pronounceable in the same way and they both began with the word "MAGGI".

Conclusion

The GNP granted Nestlé an interdict interdicting and restraining IFC from using the trademark "MAGGI PLUS". The court also ordered IFC to pay Nestlé's costs.

500-Word Summary

The case of Société des Produits Nestlé SA v International Foodstuffs Co 2013 JDR 2699 (GNP) is an important case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The test for trade mark infringement; and
• The factors that the court will consider in determining whether there is a likelihood of confusion among consumers.

The GNP's decision that IFC's use of the trademark "MAGGI PLUS" infringed Nestlé's registered trademark "MAGGI" is significant. The decision means that businesses cannot use trademarks that are similar to the well-known trademarks of other businesses without their permission.

The GNP's decision to consider the knowledge of the average consumer in determining whether there is a likelihood of confusion among consumers is also significant. The decision means that businesses need to be aware of the knowledge of the average consumer when choosing trademarks for their products.

adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3

adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3

Facts

adidas AG and Another (adidas) are the owners of four well-known registered trademarks for parallel stripes applied to their sporting footwear. Pepkor Retail Limited (Pepkor) is a South African retailer that sells a variety of products, including sporting footwear. Pepkor sold sporting footwear with two and four parallel stripes.

adidas sued Pepkor for trade mark infringement and passing off. Adidas claimed that Pepkor's use of two and four parallel stripes on its sporting footwear infringed its registered trademarks and was likely to deceive or cause confusion among consumers. Adidas also claimed that Pepkor's get-up, incorporating four stripes, was a passing off.

Issues

The main issues in the case were:

• Whether Pepkor's use of two and four parallel stripes on its sporting footwear infringed adidas' registered trademarks; and
• Whether Pepkor's get-up, incorporating four stripes, was a passing off.

Reasons

The Supreme Court of Appeal (SCA) held that Pepkor's use of four parallel stripes on its sporting footwear infringed adidas' registered trademarks and that Pepkor's get-up, incorporating four stripes, was a passing off.

Trade mark infringement

The SCA explained that trade mark infringement occurs when a person uses a mark in the course of trade in relation to goods or services in a way that is likely to deceive or cause confusion. The court found that Pepkor's use of four parallel stripes on its sporting footwear was likely to deceive or cause confusion among consumers because consumers would be likely to think that the footwear was manufactured or endorsed by adidas.

Passing off

The SCA also explained that passing off occurs when a person misrepresents to the public that their goods or services are the goods or services of another person. The court found that Pepkor's get-up, incorporating four stripes, was a passing off because it was likely to deceive or cause confusion among consumers into thinking that the footwear was manufactured or endorsed by adidas.

Conclusion

The SCA granted adidas an interdict interdicting and restraining Pepkor from infringing adidas' registered trademarks and from passing off its footwear as adidas' footwear. The court also ordered Pepkor to pay adidas' costs, including the costs of two counsel.

Summary

The case of adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3 is a landmark case in South African trade mark 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 these tests to the use of parallel stripes on sporting footwear.

The SCA's decision that Pepkor's use of four parallel stripes on its sporting footwear infringed adidas' registered trademarks is significant. The decision means that businesses cannot use well-known trademarks of other businesses on their products without the permission of the trademark owners.

The SCA's decision that Pepkor's get-up, incorporating four stripes, was a passing off is also significant. The decision means that businesses cannot use the get-up of other businesses on their products to deceive or confuse consumers into thinking that their products are the products of the other businesses.

Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

Facts

Verimark (Pty) Ltd (Verimark) was a South African retailer that sold car care products. Verimark produced a television advertisement for its car care products in which it used a depiction of a BMW vehicle. The advertisement showed the BMW vehicle being set on fire, but the Verimark products were able to prevent the fire from damaging the vehicle.

BMW AG (BMW) was the German manufacturer of BMW vehicles. BMW sued Verimark for trade mark infringement. BMW claimed that Verimark's use of the BMW trade mark in the advertisement was unauthorized and that it was likely to cause confusion among consumers.

Issues

The main issue in the case was whether Verimark's use of the BMW trade mark in the advertisement constituted trade mark infringement.

Reasons

The Supreme Court of Appeal (SCA) held that Verimark's use of the BMW trade mark in the advertisement did not constitute trade mark infringement. The court reasoned that Verimark's use of the BMW trade mark was bona fide and that it was unlikely to cause confusion among consumers.

Bona fide use

The SCA explained that bona fide use of a trade mark is a defense to trade mark infringement. The court found that Verimark's use of the BMW trade mark in the advertisement was bona fide because Verimark was using the trade mark to indicate that its products were compatible with BMW vehicles.

Likelihood of confusion

The SCA also explained that trade mark infringement occurs when the use of a trade mark is likely to cause confusion among consumers. The court found that it was unlikely that Verimark's use of the BMW trade mark in the advertisement would cause confusion among consumers because the advertisement clearly showed that the BMW vehicle was not being damaged by the Verimark products.

Conclusion

The SCA dismissed BMW's appeal and ordered BMW to pay Verimark's costs.

Summary

The case of Verimark (Pty) Ltd v BMW AG (2007 (6) SA 263 (SCA)) is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The concept of bona fide use of a trade mark; and
• The concept of likelihood of confusion in trade mark infringement cases.

The SCA's decision that Verimark's use of the BMW trade mark in the advertisement was bona fide is significant. The decision means that businesses can use the trade marks of other businesses in their advertising if they are doing so to indicate that their products are compatible with the products of the other business.

The SCA's decision that it was unlikely that Verimark's use of the BMW trade mark in the advertisement would cause confusion among consumers is also significant. The decision means that businesses have greater freedom to use the trade marks of other businesses in their advertising, provided that they do not create a risk of confusion among consumers.

Beecham Group plc and Others v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Beecham Group plc and Others v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Facts

Beecham Group plc and Others (Beecham) were the owners of a registered trade mark for the shape of the antibiotic tablet Augmentin. Triomed (Pty) Ltd (Triomed) imported and sold a generic antibiotic tablet with the same shape as Augmentin. Beecham sued Triomed for trade mark infringement.

Issues

The main issue in the case was whether the shape of a tablet could be a valid trade mark.

Reasons

The Supreme Court of Appeal (SCA) held that the shape of a tablet could not be a valid trade mark. The court reasoned that the shape of a tablet was a functional feature of the tablet and that functional features cannot be trade marks.

Functional features

The SCA explained that a functional feature is a feature of a product that is necessary to the use of the product or that gives the product a technical advantage. The court found that the shape of the Augmentin tablet was a functional feature because it was necessary to the use of the tablet and because it gave the tablet a technical advantage in terms of manufacturing and packaging.

Trade marks

The SCA also explained that a trade mark is a sign that distinguishes the goods or services of one person from the goods or services of other persons. The court found that the shape of the Augmentin tablet could not distinguish Beecham's tablets from the tablets of other manufacturers because any manufacturer could produce tablets with the same shape.

Conclusion

The SCA dismissed Beecham's appeal and ordered Beecham to pay Triomed's costs.

Summary

The case of Beecham Group plc and Others v Triomed (Pty) Ltd (2003 (3) SA 639 (SCA)) is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The concept of a functional feature;
• The concept of a trade mark; and
• The relationship between functional features and trade marks.

The SCA's decision that the shape of a tablet could not be a valid trade mark is significant. The decision means that businesses cannot obtain trade marks for functional features of their products. The decision also means that consumers cannot rely on the shape of a product to identify the source of the product.