In Disney Enterprises, Inc v Sondavid Pty Ltd FCA 1394 (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  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  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  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.
- IPKat carries a few details of a current stoush in South Africa.
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.
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