1. The Plaintiff is a Corporation under the Laws of the State of Delaware in the United
States of America with principal office at 1 McDonald's Plaza, Oak Brook, Illinois 60521, and carries
on the business of developing, operating, franchising and servicing a worldwide chain of fast food
restaurants operating under the trade name and trademark McDONALD'S, and the Plaintiff has
carried on the aforesaid business for a period of approximately forty (40) years.
2. The Plaintiff is and was at all material times the registered proprietor of a number of
trademarks registered in Jamaica including Trademark Certificate No. B21019, registered on the 27th
June, 1979, B17398, B16214 and B17849, all registered on or about the 13th day of March, 1973
in respect of the Plaintiff's corporate logo the components of which are the word "McDONALD'S"
with an arched "M" design and known as the "McDONALD'S" arches. The aforesaid registered
trademarks are and were at all material times valid and subsistent.
3.
The Plaintiff's name, style and trademarks are well known in Jamaica and around the
world through the Plaintiff's extensive operations, marketing and advertising and in particular the
name McDONALD'S is associated by members of the public with the Plaintiff and is distinctive of
the Plaintiff's business and the Plaintiff's restaurants and in the circumstances, the Plaintiff has
extensive reputation and goodwill in Jamaica.
4.
The First Defendant is a Company formed under the Laws of Jamaica on or about the
16th September, 1971 wrongfully utilising the Plaintiff's name to carry on a restaurant business at 1
Cargill Avenue, Kingston 10 in the Parish of Saint Andrew. The Second Defendant is and was at all
material times the principal shareholder and Managing Director of the First Defendant.
5.
The Defendants operated the aforesaid restaurant at 1 Cargill Avenue in the Parish of
Saint Andrew operated until the year 1982 and thereafter the aforesaid premises was leased and the
Defendants ceased operating a restaurant at the aforesaid premises during the period 1982 to 1995.
The lessees of the Defendants' premises operated a restaurant until 1990 when the restaurant was
closed and the usage of the premises as a restaurant entirely ceased.
6.
Commencing from the month of October, 1994 the Plaintiff publicly announced and,
thereafter, implemented plans to open restaurants in Jamaica, the first such restaurant having been
opened on or about the 28th September, 1995 at Ironshore, Montego Bay in the Parish of Saint
James.
7.
The Defendants have since the month of January, 1995 passed-off and attempted to
pass-off the Defendants' said business and restaurant at 1 Cargill Avenue, Kingston 10 in the Parish
of Saint Andrew as being the business of the Plaintiff or as associated with the business of the Plaintiff
and further, the Defendants have infringed the Plaintiff's aforesaid registered trademarks by using a
colourable imitation of the Plaintiff's arched "M" corporate logo on the Defendants' signs displayed
at the premises 1 Cargill Avenue, Kingston 1 0 in the Parish of Saint Andrew.
PARTICULARS
- 7(A) The Second Defendant formed the First Defendant in 1971 to carry on a restaurant
business using the name "McDonald's Corporation" which is not the name of anyone having an
interest in the First Defendant. The Second Defendant obtained the signature of one SANDRA
McDONALD as a subscriber to the First Defendant's Memorandum and Articles of Association,
when SANDRA McDONALD had no interest in the First Defendant and whose name appeared as
a sham so that the Defendants could attempt to justify the adoption and use of the Plaintiff's name in
their restaurant business.
- 7(B) In a further attempt to wrongfully associate their business with the Plaintiff's and to
thereby deceive, mislead and/or confuse the public, the Defendants used the word "Corporation" with
the name "McDONALD'S" in order to form the First Defendant with a name which is an exact
imitation of the Plaintiff's name, in the circumstances, where the word "Corporation" though
commonly used in the United States of America is not commonly utilised as part of the name of
companies incorporated in Jamaica.
- 7(C) Following upon the Plaintiff's public announcement in October 1994, that it was
opening restaurants in Jamaica, the Defendants commenced to renovate the building at 1 Cargill
Avenue, Kingston 10 in the Parish of Saint Andrew and to prominently display signs and banners
thereon bearing the names "McDONALD'S" and the further words "Re-opening soon McDonald's
Fast Food".
- 7(D) The opening of the Plaintiff's first Jamaican restaurant operated under licence on the
28th September, 1995 at Ironshore, Montego Bay in the Parish of Saint James was publicly
announced and advertised throughout Jamaica and following upon the public announcements of the
opening of the Plaintiff's aforesaid restaurant the Defendants opened their restaurant at 1 Cargill
Avenue, Kingston 10 in the Parish of Saint Andrew in that same week using the name
"McDONALD'S".
- 7(E) The Defendants have altered their previous signs and get-up at the aforesaid restaurant
at 1 Cargill Avenue, Kingston 1 0 in the Parish of Saint Andrew by deleting a knife, fork and spoon
which were previously depicted on the Defendants' signs at the restaurant so as to more closely
imitate the Plaintiff's signs, logos and get-up.
- 7(F) The Defendants have further altered the manner and get-up of their operations from
a sit down diner and drive in restaurant to a fast food restaurant similar to that of the Plaintiff's
restaurants.
- 7(G) The Defendants' use of the letter "M" in the sign "McDONALD'S" displayed at the
restaurant at 1 Cargill Avenue, Kingston 10 in the Parish of Saint Andrew is a colourable imitation
of the arched "M" in the Plaintiff's corporate logo and constitutes an infringement of the Plaintiff's
registered trademarks referred to in paragraph 2 hereof.
- 7(H) The Defendants refer to food items on their menus at the restaurant at 1 Cargill
Avenue, Kingston 10 in the Parish of Saint Andrew with the prefix "McD" and/or "Mc" so as to
imitate the Plaintiff's menus and in a manner similar to that used by the Plaintiff to describe food items
at its restaurants.
- 7(I) The Defendants' use of the names "McDONALD'S" and/or "MCDONALD'S
CORPORATION" in association with the operation of its fast food restaurant at 1 Cargill Avenue,
Kingston 10 in the Parish of Saint Andrew is identical to the trade name of the Plaintiff.
8.
The Plaintiff repeats the matters set out in paragraph 7(A) to (H) hereof and states that
in addition to constituting a wrongful passing-off by the Defendants and an infringement by the
Defendants of the Plaintiff's registered trademarks, the Defendants' actions also constitute a breach
of Section 37 of the Fair Competition Act as the Defendants have falsely and misleadingly represented
to the public, and particularly by the use of the name "McDONALD'S" in association with their
restaurant at 1 Cargill Avenue, Kingston 10 in the Parish of Saint Andrew, that the Defendants'
restaurant business is associated with or related to the business of the Plaintiff.
9. In the premises, unless restrained by this Honourable Court the Defendants threaten
and intend to continue their wrongful acts of passing-off, infringement of trademark and breach of
the provisions of the Fair Competition Act by representing that their business and restaurant at 1
Cargill Avenue, Kingston 10 in the Parish of Saint Andrew is connected to or associated with the
Plaintiff. By reason of the Defendants' wrongful acts the Plaintiff has suffered loss and damage.
AND THE PLAINTIFF CLAIMS AGAINST THE DEFENDANTS:
1. An Injunction to restrain the Defendants whether by themselves or by their directors, officers
servants or agents or any of them or otherwise howsoever from doing any act to infringe the
Plaintiff's registered trademarks No. B21019, B17398, B16214, B17849 or any of them and
being the Plaintiff's corporate logo.
2. An Injunction to restrain the Defendants whether by themselves or by their directors, officers,
servants or agents or any of them or otherwise howsoever from passing-off or attempting to
pass-off the Defendants' restaurant business at 1 Cargill Avenue, Kingston 10 in the Parish
of Saint Andrew or any other restaurant as and for the business of the Plaintiff by the use in
connection therewith of the name or trading style "McDonald's" or "McDonald's Corporation"
or "McD" or any name or trading style containing the word "McDonald's" or any colourable
imitation thereof.
3. An Injunction to restrain the Defendant, whether by themselves or by their directors, officers,
servants or agents or any of them or otherwise howsoever from using the name or trading
style "McDonald's" or "McDonald's Corporation" or "McD" or any colourable imitation
thereof and so thereby representing to the public in a false and misleading respect that the
Defendants' restaurant business at 1 Cargill Avenue, Kingston 1 0 in the Parish of Saint
Andrew or any other restaurant is connected to or associated with the Plaintiff in breach of
the provisions of the Fair Competition Act.
4. An Injunction restraining the Defendants whether by themselves, their officers, directors,
servants, agents or any of them or otherwise howsoever from carrying on a restaurant
business at 1 Cargill Avenue, Kingston 10 in the Parish of Saint Andrew or any other
restaurant under the name or style "McDonald's" or "McDonald's Corporation" or "McD" or
any name or style which includes the words "McDonald's" or which so nearly resembles the
same or any colourable imitation thereof.
5. Obliteration upon oath of all marks upon all signs, banners, advertising material or other
articles which bears the name, mark or style "McDonald's" or "McDonald's Corporation" or
"McD" or which would be a breach of the aforesaid injunctions prayed for and verification
upon oath by the Defendants that they no longer have in their possession custody or control
any sign advertising material or other article so marked.
6. An enquiry as to damages and payment of all sums found due upon the taking of such an
enquiry.
7. Further or other relief as the Court may deem fit.
8. Costs.
|