Flim Comp v - Inconoraied y {vest pe - [1937] HCA 38 - HCA 1937 case summary

High Court of Australia|1937-07-01|Before: McTiernan JJ, By Dixon J

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H.C. or A, Trade Mark - Words likely to deceive - Disentitled to protection in a court of 1937. Names of characters with world-wide reputation in cinematograph pictus ee mark sought with respect to radio receiving sets by person other than

MELBOURNE, of names - Refusal of registration - Trade Marks Act 1905-1934 (No

'Two fantastic characters, '' Mickey Mouse" and " Minnie Mouse," by D. had acquired a world-wide popularity in cinematograph pictun names and figures had been applied by traders under licence from D.

a Dixon assigns to many classes of goods other than films as an aid to MeTien :

ane "JJ." 'The appellant, which had no connection with, or licence from, D., appl

registration as trade marks of the words "Mickey Mouse" and Mouse " in respect of radio receiving sets.

By Latham C.J., Rich and McTiernan JJ., on the ground that were so closely associated in the public mind with the name of D. use by the appellant as trade marks would be likely to deceive.

By Dixon J., on the ground that the use by the appellant of the disentitled to protection in a court of justice within the meaning of of the Trade Marks Act 1905-1934.

Apprat from the Registrar of Trade Marks. The Radio Corporation Pty. Ltd. applied to register "Mickey Mouse " and " Minnie Mouse" as trade marks it

of radio receiving sets and kits. The application was opposed by 4- yey Walter E. Disney, Walt Disney Productions Ltd., Walt Disney ees Enterprises and Walt Disney Mickey Mouse Ltd., on the ground - Rapro

that the words were so closely associated with the opponents that ope tae their use by the applicant was calculated to deceive and cause pydiny, confusion in trade and in the public mind. ran The cinema characters "' Mickey Mouse" and "' Minnie Mouse " were invented by Walter E. Disney. Their names and the figures which represent their characters were extensively known, and were well known throughout Australia. After these characters attained celebrity through the moving pictures they were turned to account in publications of many kinds and there was a large output in many countries of printed matter, including cartoons, strips and other forms of advertisement. In all this the name of Walter E. Disney was kept before the public, and his responsibility for the characters and for their persistence was a matter of common know- ledge or general belief. Another important application of the names and figures of Disney's characters concerned the retail sale of various kinds of goods. In the use of the characters as an aid to selling goods, their author and the other respondents found a valuable source of revenue. An extensive system of licensing had been set up, under which manufacturers or traders paid for permis- sion to use the names or the figures in connection with their goods, and in Australia licences had been granted for goods of different descriptions produced by numerous manufacturers. No registration had been obtained in Australia in respect of the words or figures, either as trade marks or designs or under the Copyright Act, but in Great Britain and other countries the words were registered as trade marks for picture films and publications and for various kinds of goods. The Registrar of Trade Marks refused the application, and from that decision the applicant appealed to the High Court.

Dean, for the appellant. The only subject matter of the appeal is the right of the appellant to use the words " Mickey Mouse " and "Minnie Mouse" in respect of its goods. The appellant was entitled to use these words. It merely took the name of a character

in fiction in which no one had any trade mark interest, and owner of the copyright in the pictures had no trade mark 1 and no copyright in the name. Disney has no trade mark in the name at all and none in respect of these goods. There i proof that Disney had any copyright whatever in Australia figures or in the words. With regard to the words, there ca be copyright in the two words, and, even if Disney had co in them in the Commonwealth, that is no ground for refusing tration of the trade mark. The respondents do not use th as trade marks at all; the words are used to describe character their various forms of fiction and to describe the contents of films ¢ The goods on which the words are used by the respondents are u the goods in respect of which registration is sought. Their e licensing system shows that the respondents have not treated

words or figures as trade marks and the words, therefore, cann distinguish the goods of any person. The respondents' li system negatives the possibility of any deception. Di attempting to use the trade-mark law to support his co] claims. The respondents are not entitled to copyright in Austi as America is not a member of the copyright union (Coping the Law of Copyright, 7th ed. (1936), pp. 277, 314, 365), 1

cannot be copyright in a mere name or title (Copinger on the I of Copyright, 7th ed. (1936), pp. 56, 57; Schove v. Schmincké (| Maxwell v. Hogg (2); Mathieson v. Sir Isaac Pitman & Sons ] (3); O'Gorman v. Paramount Film Service Ltd. (4) ). Even if respondents have a copyright in Australia and even if it can in the words in question, there is no reason for refusing regist as a trade mark. The respondents do not use the words as a mark in the way in which a trade mark is generally used, vi distinguish the respondents' goods from the goods of other peo and, in any event, the goods to which the appellant wishes to aj the mark are quite distinct from the pictures of the respondent there is no likelihood of deception (Kerly on Trade Marks, (1927), p. 260; Lever Bros. Ltd. v. Abrams (5); Robert Harp

(1) (1886) 33 Ch. D. 546. (3) (1930) 47 R.P.C. 541, at p. (2) (1867) 2 Ch. App. 307. (4) (1937) 2 Al E.R, 113. (5) (1909) 8 C.L.R. 609

. Lid. y. A. Boake Roberts & Co. Ltd. (1); Eno v. Dunn (2); 4: 0: oF A-

son v. Hecht (3) ; In the Matter of Lake & Elliott's Application (4) ). ei

: Rapro llagar K.C. (with him O' Bryan), for the respondents. Actually eee

registrar or this court that there is no reasonable possibility of eption arising. The four essential facts in this case are that E. Disney made a drawing and gave it an appropriate name, the drawing and the name have won world-wide fame and popularity. The name " Mickey Mouse " is inseparably associated n the public mind with the drawing or figure. The words suggest picture and vice versa. Both the name and the character are, by reason of the use made of them, in the public mind inseparably ociated with Walter E. Disney. The name has been in fact

by Disney as a trade mark in respect of films and books. It is suggested that the intention of the appellant is to steal the ting trade of the respondents, but it is suggested that the name been chosen to obtain the popularity enjoyed by that amusing Those are the essential features of the facts in this case, d the burden is thrown on the appellant of showing that there possibility of deception (Zno v. Dunn (5) ). These words and s were never used by the respondents as a trade mark ; and the which they gave were to enable people to use the device an ornament only and not as a mark to identify the goods. If figure and name are allowed to be put on goods as a trade mark, is a danger of people thinking that the goods are connected Disney. The device has not been used in Australia on of the character of the appellant's. The granting of the has not prejudicially affected the respondents, who have e mark in respect of films and similar goods. The licensing has built up a connection between Walter E. Disney and y Mouse," which name has not previously been used in on wireless sets. The respondents have trade-mark rights, (4) (1903) 20 R.P.C. 605.

and, although the respondents have copyright in the y

material necessary to determine the question of copyright ii

Mouse business." A "' Mickey Mouse " film indicates a dist type of film. The only question that arises is: Has the li of deception or confusion been negatived ? (Hno v. Dunn (1) ). connection between 'Mickey Mouse" and Walter E. so close and so widely known that the nexus of similarity is uni portant, but there is a nexus of similarity between sound films wireless sets by the mechanical reproduction of sound, el reproduction and electrical recording. The producer of the o likely to produce the other. Dean, in reply. The only question is: Has the appellant satist the court that there is no likelihood of deception? A wireless could not be supposed to be a product of Walter E. Disney. goods are completely distinct. The skill of the producers i distinct and the trade is entirely distinct (Walter v. Ashton There must be the possibility of deception in respect of the with reference to which registration is sought. The licensing enables the device to be used as a trade mark and the app has discharged the onus of showing that there is no possibil whatever of deception (Ashburner, Principles of Equity, 2nd (1933), pp. 372-375 ; In the Matter of a Trade Mark " Pup" (3

Laruam C.J. Some years ago Walter E. Disney invent fantastic and amusing cinema characters - Mickey Mouse Minnie Mouse. They have become very popular throu world. Their names and the very distinctive figures which or possibly constitute their personality are almost uni familiar - certainly they are very widely, if not universally, kn throughout Australia. :

(1) (1890) 15 App. Cas. 252. (2) (1902) 2 Ch, 282 (3) (1933) 50 R.P.C, 198. :

Radio Corporation Pty. Ltd. (which has no connection H. ©. or A.

er with Walter E. Disney) made applications for the use of ee

ey Mouse" and " Minnie Mouse" as trade marks in respect Rapro

oF . " . . _ CORPORATION o receiving sets and kits. Walter E. Disney and companies ~ pry, Len.

d with him opposed the applications. The opposition was p,.v ay.

ecessful and an appeal is now brought to this court. 'The Trade Marks Act 1905-1934, sec. 114, is in the following terms : o scandalous design, and no mark the use of which would by

ofits being likely to deceive or otherwise be deemed disentitled

'The opponents have. in my opinion, shown that the names and the are so closely associated in the public mind, in Australia and here, with Walter E. Disney and his activities, that the use of the names or the figures in connection with any goods at once that the goods are "' in some way or other connected " with er E. Disney (See, per Lord Macnaghten, Eno v. Dunn (1) ). s, the evidence shows, would be the case whatever the nature of goods to which the names were attached. It is very seldom led that there can be a world-wide association of ideas in con- with a particular name or figure, but the evidence shows this association does exist in the present case. A proposed mark should not be registered if it involves "a misleading sion or a suggestion of that which is not strictly true" (Eno Dunn (1)). Thus. in my opinion, these marks should not be registered.

do not decide this appeal upon the basis that the opponents e any exclusive right of any kind to the use of the words and in question whether by way of trade mark or under a copy- or otherwise. My opinion is based solely upon the ground as against the public, the applicants should not be granted the sive right to use the words in connection with any goods for reason that the use of the words by them as a trade mark would likely to deceive (sec. 114).

Ricu J. The appellant company applied to register as t marks the words "Mickey Mouse" and "Minnie Mouse." 4 registrar, in the exercise of the discretion conferred on him by 33 (3) of the Zrade Marks Act 1905-1934, refused the appli That sub-section reads as follows : - ''Subject to this Act registrar may either accept the application, with or modifications or conditions, or refuse it." It must always | remembered that the burden of proof is on the applicant, who m negative all likelihood of deception or confusion (Standard Pa Co. v. Hales Ltd. (1) ). When the discretion of the registrar has b exercised against the applicant, the court pays attention to h view as that of an experienced officer upon whom the primary du of deciding the matter is imposed. This increases the burden applicant must sustain. In the present case it does not appear th the registrar misdirected himself or that his discretion was guid wrong principles. It is therefore necessary for the applicant e to satisfy us in a special degree that the mark for which it. registration is open to no objection under secs. 25 or 114. It be denied that the opponents have obtained great reputation notoriety for the form and name of Mickey Mouse and Minnie M his feminine counterpart. But it is said that that reputa' unconnected with the sale or handling of goods and is anal rather to the fame of some personage of fiction or history. matters such as this we are dealing with the vague and ind impressions of the great mass of the public who neither are req nor desire to refine upon distinctions of this sort. To them i shown that the name "' Walt Disney" summons up a picture 0

of " Walt Disney." The foundation of this is authorship no d But somehow or other, how, it is fruitless to inquire, they conn the appearance on an article of the name or form of " Mick Mouse " with "' Walt Disney." This being so, it is, I think, impo for the appellant to negative all likelihood of confusion. It part of our duty to state in definite terms precisely how the p will be misled or what kind of connection they will impute. fusion involves indefiniteness of ideas. It is enough that the

to satisfy first the registrar and then the court that any H- ©. or A.

sion is improbable. ney n my opinion the appeal should be dismissed. Rapro CORPORATION Pry. Lrp. 'Dixon J. This is an appeal from a decision of the Registrar of Daa

ade Marks refusing to register as trade marks in respect of radio 7aary iving sets and kits the words " Mickey Mouse " and the words

Minnie Mouse. author of the figures called by those names, a corporation porated in the United States, two companies incorporated in e United Kingdom and a société anonyme formed in France, all promoted for the purpose of exploiting in various ways uublic interest in the two figures. After Disney's conceptions ned celebrity through the moving pictures they were turned to count in publications of many kinds, books, pictures, songs and ven music. There has been a large output in very many countries inted matter, including cartoons, strips and other forms of sement. It is said too that now a talking picture concerning e or other or both of the figures is produced almost every fort- Tn all this the name of Walt Disney has been kept before ublic, and his responsibility for the conceptions and for their ence is a matter of common knowledge or general belief. In these popertions, which, of course, are conducted on a large al scale, the corporate bodies who join in the opposition played different parts, but I do not think that it is material

ney's conceptions concerns the retail sale of all kinds of goods. esumably because of the attraction which the figures and their al activities have for so many people, traders of all sorts to affix representations of them to their goods or use the or their names in connection therewith. In the use of the ms as an aid to selling goods, their author and the trading he has promoted have found a valuable source of revenue. elaborate and extensive system of licensing has been set up. it manufacturers or traders pay for permission to use the or the figures in connection with their goods. In Australia

alone licences have been granted for all sorts and descriptions ¢ goods produced by numbers of unconnected manufacturers, articles bearing representations of or called by the names of Disne conceptions have no characteristic incommon. They go from ca soups to cotton undershirts and from bridge scorers to boys' brac Here no registration has been obtained in respect of the words figures, either as trade marks, designs or under the Copyright 1912. But in Great Britain the words are registered as trade mark for picture films and for publications. There are registrations of much the same kind in Canada and the United States, and Germany and in France the words are also registered as trade m for a long catalogue of articles. The opponents claim that they are or one of them is entitl Australia to copyright in the representations of the concepti and their names. The basis of the claim was not explained. in any case, in the present proceedings no attempt has been m to establish its correctness.

complete strangers to the opponents. The applicants have obtai no licence, and have acquired from the opponents no right of

objection can exist to applying the names to goods unconnec with films or their exhibition.

to the words, but whether, in the language of sec. 114 of the Marks Act 1905-1934, the use by the applicants of a mark

Upon the facts I have stated the question may naturally asked, in what respect will the buyers of the applicant's radio sel be misled if they bear asa trade name the words " Mickey Mou ; If to the public the use of the words or the figures upon or connection with goods meant that the goods were produced, s

or dealt in by Disney or his companies, the licensing H.C. oF A.

so extensively practised would be indefensible. In any ee the system is so widespread and covers so many unrelated Rapro CoRPORATION

classes of goods that the use of the words or figures cannot at this pry, Lr, stage have the significance of a trade mark belonging to the opponents. a 'To begin with, the figures had no connection in the public mind with trading in goods. Their celebrity and that of their author arose in the cinema and it was fostered and spread by that means and by publications based upon a notoriety so obtained. It is not "easy to say what, if any, connection is thought to exist between Disney and his companies on the one hand, and, on the other hand, _ the manufacturer or seller of goods, when a representation of Mickey

se or the name is seen upon goods exhibited for sale. The registrar thought radio receiving sets and films for talking pictures were so much mixed up in the interests and modes of _ dealing of people as to raise a sufficient doubt whether the use of _ the words "Mickey Mouse" on a receiving set would not lead to _ a belief that it had the same origin as the films for talking pictures iced by the opponents. In connection with such films it seems

that the words are used by the opponents as a trade mark, a fact "yh apparently entered into the decision of the registrar. _ I find it hard to believe that the use of the words on or in connection with a radio receiving set would produce any other _ impression than in the case of most of the other almost innumerable lasses of articles to which the name or the representation of Mickey "Mouse has been applied. That impression does not, I think, primarily relate to the origin, selection or treatment of the goods. Teason for using the names is to attract the attention of members of public that has found pleasure and amusement in the grotesque forms and absurd antics of Disney's creatures, and at the same time togive to the goods a name or means of description at once familiar ind pleasing or interesting to the possible buyer. No doubt this that the trader makes use of elements which belong to the tation and fame of Disney's creations and it may be that in gan way the buyer supposes that Disney must have

To my mind the question upon which the matter turns is whe because of this kind of unauthorized diversion to the appli use and advantage of part of the public reputation and inte which Disney has created for himself and his figures, registratio can be refused under sec. 114. It was not argued that the won were incapable of distinguishing the goods. And for the reasoni have stated I am unable to regard the possibility of a belief aris that Disney or any other of the opponents has produced or distril ec the goods as a probability. I think it is most unlikely that am would suppose it.

In the well-known case of Eno v. Dunn (1), an important ment is made by Lord Macnaghten. Dunn had applied to re as a trade mark a label representing a woman holding up a of cakes with the words "Dunn's Fruit Salt Baking Powd The Cook's Best Friend." The proprietor of Eno's fruit

Lord Morris. The passage in Lord Macnaghten's opinion follows : - " The learned judges who were in favour of Mr. in the court below seem to have come to the conclusion that } Dunn's object was to obtain the benefit of the celebrity which name adopted by Mr. Eno has acquired, but that it was not h object to steal Mr. Eno's trade. So far I am disposed to a but I do not think that those propositions cover the real que The question is one between Mr. Dunn and the public, not be Mr. Eno and Mr. Dunn. It is immaterial whether the pro registration is or is not likely to injure Mr. Eno in his trade. Bq immaterial, as it seems to me, is the fact that for a consid time Mr. Eno had on the register, as his trade mark, the 'Fruit Salt.' Mr. Eno may have gained some advantage to he was not properly entitled; but that is hardly a reason permitting Mr. Dunn to practice a deception upon the public" (

In the present case it is the same intangible advantage am from public celebrity, widespread fame and interest, that applicants seek. It is not a diversion of trade, custom oF Pp

(1) (1890) 15 App. Cas., at p. 263. (2) (1890) 15 App. Cas., at pp. 2632

pt for the refusal to pay licence fees, the continued use of the mark by the applicants will not affect any of the commercial itions of the opponents. It is clear, I think, that the opponents d on their part obtain no injunction for the protection of such an interest as that arising from the mere celebrity or reputation of ney 'sproductions. Further, in selling, so to speak, the advantage celebrity to traders as the opponents have done under their ing system, they have done much to destroy the significance they now seek to ascribe to it, namely, the significance of trade utation based upon a mark. But these are matters which do not it less right to keep off the register a mark improperly adopted. the applicants. If the circumstances are such that its adoption ll give the applicants no right to protection by injunction or other med ly under the general law, then it should be kept off the register. is what Lord Macnaghten means. Further, the burden of lishing that the mark is free from this disqualification lies on applicants. E

On the whole, I think there are present elements which leave 1 unable to discharge this burden. Those elements are, first,

ion to their own purposes on the part of the applicants of celebrity and reputation obtained by the various activities of he opponents in relation to Mickey Mouse. The latter may give e of action but I think that, at any rate in conjunction the former element, it would be enough to deprive the proposed of protection.

lcTrernan J. I agree that the appeal should be dismissed. e present case must be dealt with under sec. 114 of the Trade Act 1905-1934, which casts upon the appellant the duty of the registration of the words "Mickey Mouse" and e Mouse" as trade marks for use on its radio sets and kits

by showing affirmatively that such use is not caleulated to d the public. F The use which the respondents make of the fantastic figures wh

go by the names which the appellant seeks to register need no again discussed. The appellant relies broadly upon the alleg that the respondents do not use either name as a trade mark part of the get-up of their goods or otherwise to distinguish t) goods or in connection with any goods between which appellant's radio sets and kits there is any nexus of sil The proof of these allegations would no doubt go far to dis the onus imposed by sec. 114. But to accept that particular pn as a complete satisfaction of the requirements of the section wou be unduly to narrow its scope. Speaking of a similar enactmer sec. 73 of the Patents, Designs, and Trade Marks Act 1883, Lo

lawful to register as part of or in combination with a trad any words, the exclusive use of which would, by reason of being calculated to deceive, be deemed disentitled to protecti a court of justice. It seems to me that in registering trade n the principle to which the enactment so plainly refers ought | applied without any qualification whatever, and that the com to whom in the first instance is committed the 'discretio power,' as it is termed in the Act (sec. 94), of registering a 1 mark ought to reject words which involve a misleading allusi a suggestion of that which is not strictly true, as well as ¥ which contain a gross and palpable falsehood." His proceeded to say that to prevent the registration of words trade mark it was enough that they would lead the ordin of persons to suppose that the applicant's goods were " in som or other connected with' the opponent's preparation. He ad "The object I think was . . . to induce people to buy an impression 'not founded in truth,' and not perhaps th misleading because it is vague and indefinite, and incapable, t be, of bearing the very slightest examination."

Taking into consideration all the facts of the present cas¢ appellant has not in my opinion shown that there is no lil

Th Local Government Act 1928 | provides : - Sec. 197 (1): " Sub- ) the provisions hereinafter con- by-laws may be made for any lity . . . forthe purposes . . . (iv) Regulating the distribution of water from under the management ot car

itors for the appellant, Herman & Coltman. itors for the respondents, Owen Jones & Co.

PRESIDENT, COUNCILLORS AND RATEPAYERS OF THE SHIRE OF

'Unpaid charges for excess water supplied by measure to land by a municipal uneil which has accepted the management and control of the waterworks n its municipal district under secs. 651-653 of the Local Government Act

rates and other moneys due to any municipality on the twenty-ninth day of December, in the year One thous- and eight hundred 'and ninety-one, under any Act for the time being in force relating to local govern- ment in respect of any property by the owner of such property, and all rates and other moneys which have there-

public being deceived in the sense intended by the section by H.C. or A. use of either the name 'Mickey Mouse" or " Minnie Mouse " trade mark on the appellant's goods.

Government - Water supply - Water supplied by measure - Waterworks under 4 ©, op A. al of council - Charges for excess water - Unpaid charges - Not due " pect of any property " - Not a charge on land - Power to withhold supply during -payment - Local Government Act 1928 (Vict.) (No. 3720), secs. 197 (1) (iv),

Flim Comp v - Inconoraied y {vest pe

At a glance

Court

Decision date

Before

Source

Judgment (75 paragraphs)

Parties