Taking the Bite Out of McDonalds
Joburgers Drive-Inn Restaurant, a company operating a chain of fast food outlets under the name "Chicken Licken", have brought an application before the Registrar of Trade Marks in South Africa to expunge all MCDONALD’S trade marks owned by McDonald’s Corporation in South Africa from the register on the grounds that these trade marks have not been used during the past five years. The MCDONALD’S trade mark is widely registered in South Africa in respect of a variety of goods and services relating to fast food services and foodstuffs. No MCDONALD’S hamburger outlets are in operation in South Africa or have been during the past five years.
It has been stated in public by Joburgers Drive-Inn Restaurant that they propose to open a chain of MCDONALD’S fast food outlets. They have also made application to register the trade mark MCDONALD’S in their own name in respect of, inter alia, fast food outlet services. This clear expression of intent on the part of Joburgers Drive-Inn Restaurant caused McDonald’s Corporation to bring an urgent application before the Supreme Court for an injunction restraining infringement of the MCDONALD’S registered trade marks. Both the expungement and infringement matters are expected to be heard by the Supreme Court early next year.
McDonald’s Corporation have stated that the trade mark expungement proceedings will be defended on the basis that their non-use of their MCDONALD’S trade marks in South Africa during the past five years has been due to special circumstances in the trade, namely the imposition of an embargo on conducting business in South Africa during the apartheid era by United States Federal and State legislation, and ought therefore to be excused. This case thus raises interesting questions of policy and has political undertones. It also focuses sharply upon the extent to which famous foreign trade marks are capable of enjoying protection under South African law.
Case Reference : McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Limited, Case No. 19719/1993 in the Transvaal Provincial Division of the Supreme Court - as yet unreported.
Beauty Must be Free for the Beholder
Estee Lauder Cosmetics Limited made application to register the trade mark ESTEE LAUDER BEAUTIFUL in class 3 of the international classification in respect of perfumeries. The Registrar of Trade Marks decided that the application could only be accepted for registration on condition that rights to the exclusive use of the word "BEAUTIFUL" were disclaimed. Estee Lauder disagreed with this view and appealed to the Supreme Court against the Registrar’s decision.
The Supreme Court in Estee Lauder Cosmetics Ltd -v- Registrar of Trade Marks 1993 (3) SA 43 (T) dismissed the appeal with costs thus upholding the Registrar’s view that the word "BEAUTIFUL" in respect of perfumeries is appropriate subject matter for a disclaimer. The court affirmed that the word "BEAUTIFUL" is descriptive, non-distinctive and reasonably required for use in the perfumeries trade but that its presence in the composite mark ESTEE LAUDER BEAUTIFUL did not disqualify the mark as a whole from registration; the right of other traders are adequately safeguarded by the entry of a disclaimer of the word "BEAUTIFUL" against the trade mark. The purpose and effect of the disclaimer was to preclude Estee Lauder from prohibiting other traders from using the word "BEAUTIFUL" in relation to their perfumery products. The court opined that a useful test to be applied when deciding whether a non-distinctive feature of a mark is appropriate subject matter for a disclaimer is whether the feature in question "appears to be likely to become in use regarded as an essential feature of the mark as a whole".
Spoor & Fisher