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Mcdonalds Drive Inn Restaurant Case Study

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A. CASE BRIEF

Case name and citation:
• Name: McDonald’s Corporation v. Joburgers Drive-Inn Restaurant
• Citation: Supreme Court of South Africa, 1996

Facts:
• McDonald’s is the largest franchiser of fast-food restaurants. $900 million are spent for advertising every year. Additionally, their trademarks are most certainly some of the most famous in the world.
• In 1968, McDonald’s registered its trademark in South Africa and renewed it at regular intervals until 1985 (1974, 1979, 1980, 1985), but failed to renew it from 1985 to 1993, which meant it was not used for 8 years.
• Joburgers Drive-Inn restaurant was one of the franchiser of the famous fast food chain: Chicken Licken.
• In 1993, Mr Sombonos (Joburgers) registered McDonald’s, Big Mac, the golden arches design and some other McDonald 's marks. At the same time, he applied to the Registrar of Trademarks for the expungement of trademarks that were held by McDonalds.
• McDonald’s counterclaimed this application of expungement, and also applied again for its trademark.

Plaintiff’s arguments:
• There were some special circumstances that prevented McDonald’s from entering the market and renewing the trademark in time. (Trade sanctions and anti-apartheid pressure)
• All 52 of its trade marks were well known marks in terms of the Section 35 of the Trade Marks Act, No. 194 of 1993 ("the new Act"), and sought an order that Joburgers be interdicted and restrained from imitating, reproducing or transmitting those marks

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