Australia: Mickey Mouse Gets The Gloves Off

Last Updated: 5 October 2008
Article by Nick Weston

In Disney Enterprises, Inc v Sondavid Pty Ltd FCA 1394 [2008](11 September 2008), Disney sought an order pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) (Act) to restrain the Customs CEO (until further order) from releasing certain goods seized by the Australian Customs Service (notified to Disney on 18 July 2008). Section 137 of the Act is within the date-driven Pt 13 scheme, the object of which is to "protect registered trade marks by making provision allowing the Customs CEO to seize and deal with goods that are imported into Australia if the importation infringes, or appears to infringe, a registered trade mark".

Disney is the registered owner in Australia of various trade marks including MINNIE MOUSE and MICKEY MOUSE in class 25 (which includes clothing) and a mark known as the MINNIE MOUSE device in the same class. The respondent had tried to bring in a commercial consignment of 1180 tops bearing images of Minnie Mouse, the words "Original Minnie", "Original Mickey" and "© Disney". These were seized by Customs under s 133 of the Act. On the applicants giving the usual undertaking as to damages, the orders were made ex parte.

Nothing unusual there – pretty boring really – but given that the first MICKEY MOUSE trade mark application (number 71266717) was granted in the United States 80 years ago this week – on 18 September 1928 – and notwithstanding the contentious provenance of the famous character (see HERE and HERE), it is worth a quick look at the beloved rodent's litigation pedigree, and his contribution to Australian trade marks jurisprudence, which reveals that Mickey does not mind getting the gloves off. Talk about the mouse that roared!

In 1937, Disney had a unanimous trade mark win in the High Court of Australia for the Australian rights to the name MICKEY MOUSE. The Mickey Mouse case (Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448) has gone on to become a pillar of Australian character merchandising and passing off case jurisprudence (even though it was not a passing off case).

At 453 in the Mickey Mouse case, Latham CJ in relation to the names MICKEY MOUSE and MINNIE MOUSE considered that these were:

"... so closely associated in the public mind, with ... Walter E Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are "in some way or other" connected with ... Disney."

So that, a name without an image may be sufficient to suggest an "association".

In the same case, Rich J at 454 said:

"In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name "Walt Disney" summons up a picture of " Mickey Mouse " and the picture of Mickey Mouse reminds them of "Walt Disney". The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of " Mickey Mouse " with "Walt Disney". This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas."

Dixon J, referring to the words " Mickey Mouse ", said at 457:

"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 classes of articles to which the name or representation of Mickey Mouse has been applied. That impression does not, I think, primarily relate to the origin, selection or treatment of the goods. The reason for using the names is to attract the attention of members of a public that has found pleasure and amusement in the grotesque forms and absurd antics of Disney's creatures, and at the same time to give to the goods a name or means of description at once familiar and pleasing or interesting to the possible buyer. No doubt this means that the trader makes use of elements which belong to the reputation and fame of Disney's creations and it may be that in some vague way the buyer supposes that Disney must have sanctioned it."

These concepts have been trotted out and refined in decisions such as the Ian Thorpe Case (Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited & Anor [2003] FCA 901, the Duff Beer Case, (Twentieth Century Fox Film Corporation And Another v South Australian Brewing Co Ltd and Another (1996) 34 IPR 225), and the Crocodile Dundee Case (Re Pacific Dunlop Limited v Paul Hogan; Rimfire Films Limited and Burns Philp Trustee Company Limited [1989] FCA 185; 23 FCR 553 (25 May 1989) ).

As a result of the 1937 Mickey Mouse case, it is now in the 'every Judge knows' category, that where a name or image is clearly associated in the public mind with a particular entity their use by another as trade marks would be likely to deceive, as suggesting that the goods are somehow connected with that entity.

Mickey loves a barney elsewhere too:

  • Disney putatively forced the removal of unauthorised Mickey Mouse murals from the walls of some day care centres in Florida, USA. These were promptly replaced by murals of Universal Studio and Hanna-Barbera Productions characters. Story HERE.
  • The owners, of a pub called Mickey's Mousetrap, Mickey Colarusso and Mickey Visk, were supposedly forced to drop the name and a mouse on their sign. Article HERE.

If you have made it this far, here is your reward: Japanese vision of a Mickey Mouse, Disney knock-off theme park in China where all your favourite unauthorised Disney characters wear ill-fitting, faux-fur costumes . . . and take their heads off in front of the Guests. It is GOLD. . .enjoy!

After a bit of encouragement from Disney, the unauthorised theme has quietly been dropped. Presumably, it is just a "Park" now.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.