WHETHER A TRADEMARK QUALIFIES AS A WELL-KNOWN MARK?-APPLICATION OF BAD FAITH IN DETERMINING THE DEGREE OF WELL-KNOWNNESS

In 1995, McDonald’s opened its first restaurant in South Africa. Prior to its opening, a local businessman decided to call his burgers “Big Mac,” knowing perfectly well that McDonald’s had been using this name in other countries and a lot of South Africans associated the name “Big Mac” with McDonald’s. Should we enjoin the local businessman from using the mark? What if he has no intention to take advantage of McDonald’s mark? What if South Africans barely associate “Big Mac” with McDonald’s? What if McDonald’s is a regional fast food chain that only operates in the Americans? The answers to these questions related to the protection of well-known marks. Generally speaking, when a trademark is recognized as a well-known mark in a given jurisdiction, the proprietor of the mark can prevent others from using or registering the mark prior to registration. This article examines how much fame/reputation is needed for a mark to be qualified as a well-known mark. As we will discuss later, the evidences used to prove the degree of fame/reputation can be divided into objective and subjective evidence of bad faith, i.e., intention to take advantage of consumer recognition. This article purports that marks should be considered as well-known when objective evidence of fame/reputation falls within a certain range. Within this range, courts should be able consider subjective bad faith evidence and determine whether the mark is well-known. This article explores how courts apply subjective evidence to determine the requisite fame/reputation needed in different jurisdiction. For reasons discussed below, this article is of the view that laws should not require a set percentage of consumer recognition within this range.