BLOEMFONTEIN Surveys conducted in SA on behalf of US hamburger giant McDonald's Corporation had failed to show that its trademarks were well known, the Appeal Court in Bloemfontein was told yesterday.
Counsel for Joburgers Drive-Inn Restaurant, owned by Chicken Licken franchise owner George Samboros, submitted that the failure to show that the marks were well known was because of the way in which the surveys were done and the limited "universe" to which the surveys applied. They also did not deal with other requirements of section 35 of the Trade Marks Act of 1993. There was no evidence of whether the use of the marks by Joburgers or Dax Prop, a Durban based close corporation, was likely to cause deception or confusion. Counsel for McDonald's told the court that in 1993 sanctions were gradually being done away with. It was clear that McDonald's was showing an interest in SA at that stage.
It was submitted that the survey had shown that a substantial number of the public were confused by the use of the marks. The "universe" was intended to limit the survey to persons who would potentially know McDonald's. There would be no sense to ask an illiterate person from a remote rural area whether he had heard about a mark that had never traded in SA.
The McDonald's marks were originally registered in SA in 1968 and renewed every five years but were not used by the US company. In the early 1990s McDonald's sought to prevent Joburgers from using its marks.
It was unsuccessful in the Transvaal Supreme Court on the basis that it had never used the marks in SA, but subsequently reached a compromise to prevent Dax using its name in Durban. Meanwhile, McDonald's had started to trade in SA. The court will hear argument today on whether Joburgers and Dax were, entitled to seek expungement of the marks from the trademark register on the basis of non use.