Re Miss World (Jersey) Limited; Miss World (Uk) Limited v Mrs of the World Pageants, Inc [1988] FCA 12 (1 February 1988)

FEDERAL COURT OF AUSTRALIA

Re: MISS WORLD (JERSEY) LIMITED; MISS WORLD (UK) LIMITED
And: MRS OF THE WORLD PAGEANTS, INC.
No. QLD G10 of 1988
Trade Marks - Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.(1)

CATCHWORDS

Trade Marks - "Miss World" beauty contest for single women - whether use of "Mrs World" for beauty contest for married women "confusing" - relevance of results of similar litigation in U.S. - claim for interlocutory relief - consideration of degree of probability of success at trial.

Trade Practices - alleged representation of "affiliation" - whether representation implied by conducting "Mrs World" contest - well established "Miss World" contest.

Trade Practices Act 1974, ss.52, 53(d)

Trade Marks Act 1955, ss.6(3), 62(1)

HEARING

BRISBANE
1:2:1988

Counsel for the Applicants: Mr. R.N. Chesterman, Q.C. with Mr. P. Morrison

Solicitors for the Applicants: Messrs. Feez Ruthning

Counsel for the Respondent: Mr. L. Harrison Q.C. with Mr. G.A. Thompson

Solicitors for the Respondent: Messrs. Henderson Trout

ORDER

The application for interlocutory relief be dismissed;

The applicants pay the respondent's costs of and incidental to the proceedings to be taxed, including reserved costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

DECISION

This is an application for an interlocutory injunction to restrain the use of the names "Mrs of the World" and "Mrs World".

2. The applicants are associated with the "Miss World" beauty competition, which has been conducted since 1951. They do not conduct a similar competition for married women. The respondent does and the final function, called a "pageant", is to take place on the Gold Coast the day after tomorrow. It is to be attended by many people from other countries including, of course, numerous contestants. It is not the applicants' purpose to prevent the holding of the competition; they say only that it cannot be described as the "Mrs of the World" or "Mrs World" pageant.

3. This dispute has recently been the subject of litigation in the United States, where there have been a number of hearings, including two similar applications made to single judges, two similar applications made to the Court of Appeals for the Ninth Circuit and two appeals, the first of which has been determined and the second of which still awaits a hearing. In addition, it appears that an application has been made in the United States to prevent the bringing of the present application, but that was unsuccessful. Further reference to the United States proceedings is made below.

4. The first applicant is the owner of three trade marks relevant to the present proceedings, and the second applicant has carried on the business of staging "Miss World" pageants since 1980. Those pageants were conducted for many years before that date and have received much publicity in this country. From their conduct, the applicants derive very substantial profits; theirs is a multi-million-dollar business. They obtain income from the sale of rights to telecast their pageant, from funds raised by each entrant, from marketing of "Miss World" products, from licensing others to conduct pageants to select national winners (being candidates in the final "Miss World" pageant) and in other ways. The affidavit material filed on behalf of the applicants emphasises that although their contest raises large sums for charity, it also produces handsome profits and is a commercial venture - a point which is rather obscured in the applicant's brochure, part of which is exhibit 15.

5. The respondent's contest is a much more recent institution. It was first judged in 1984, when the winner was called "Mrs Woman of the World" and it was conducted with the same name in 1985. It appears that that rather curious title was chosen because of fear of legal action on the part of the applicants. In September 1986, however, the respondent, departing from an intimation it had previously given to the applicants, called its pageant the "Mrs of the World" pageant and the winner was called "Mrs World". As I have mentioned, both those names are objected to by the applicants before me. It was their use in 1986 which provoked the United States litigation. The parties there include the applicants and respondent before me, and others.

6. That litigation began with a motion in the District Court for the Central District of California for an injunction to restrain the use of "Mrs of the World". That was refused; on the applicants' intimating that they proposed to appeal, an injunction pending the appeal was sought and that too was refused. However, the Court of Appeals for the Ninth Circuit, on 20 October 1986, gave an injunction pending the appeal, which prevented the use of the expression "Mrs World" in connection with the respondent's competition, except that its winner could be called "Mrs World", subject to an obligation to give a disclaimer disassociating the contest from the applicants.

7. The appeal I have just mentioned succeeded, the case was sent back for a rehearing and the interlocutory injunction granted by the Court of Appeals continued.

8. When the matter was reheard, however, a judge again refused the applicants relief. The reasons for judgment are before me. A further appeal was instituted by the applicants against their second failure to obtain an interlocutory injunction from a single judge, and that second appeal is as I have said still pending. However, on 12 January 1988, the U.S. Court of Appeals for the Ninth Circuit granted a motion by the present respondent and others to dissolve the interlocutory injunction previously granted by that Court. No reasons for that decision are before me, but it appears clear that the case was argued.

9. In the result, then, as matters stand, the applicants have been unsuccessful in attaining interlocutory relief in the United States. There, as here, the applicants relied on registration of a "Miss World" mark. For a number of reasons, not too much should be made of the U.S. result: I have not the reasons for the most recent decision just referred to, the American law is not the same as ours and the applicants here are entitled to this Court's own view. Nevertheless, it appears to me proper to notice and to treat as a circumstance affecting discretion that it has been held in the United States that there is no sufficient likelihood of confusion between the two marks to warrant the grant of interlocutory relief. I have not been referred to any authority for or against giving weight to such matters, but it is a little undesirable that Courts should too readily adopt views opposite to those earlier entertained by competent courts in other countries, with respect to the holding of this international competition.

10. It will have been noticed that the matter comes before me shortly after the most recent United States decision just referred to. It was not, however, that decision which immediately gave rise to the present litigation. According to the evidence, representatives of the applicants viewed, in November last year, a video showing the judging of what was called the 1987 "Mrs World"; i.e. that pageant held in September 1986. They then became aware that the next final judging would take place in Australia and in mid-December 1987 gave instructions to solicitors to commence the proceedings, which came before me on this application for an interlocutory relief on Friday last. Counsel for the respondent, Mr. Harrison Q.C., with whom Mr. G.A. Thompson appeared, argued that there was delay on the part of the applicants which should be taken into account against them. It appears to me that, from the time they were instructed, the applicants' solicitors moved diligently to assemble evidence to mount this case, but no very convincing explanation is put forward for instructions having been given so long after the last "Mrs World" pageant. However, while the delay is relevant as a point against the applicants, I do not think it is, in the circumstances, sufficient in itself to justify refusal of relief.

11. Counsel for the applicants, Mr. Chesterman Q.C., with whom Mr. Morrison appeared, argued that the applicants showed not merely a serious question to be tried, but a strong case. He also contended that the balance of convenience favoured the grant of the interlocutory relief he sought.

12. For reasons developed below, it is difficult to make a positive finding, as to the balance of convenience, in favour of the applicants. Nevertheless, it appears to me permissible to grant interlocutory relief as a matter of discretion if, as Mr. Chesterman argued, it appears that there is a strong prima facie case. If the applicants' right to relief is reasonably clear, it should be given effect to.

13. Mr. Chesterman advanced three grounds for the grant of interlocutory relief; they were the Trade Marks Act 1955, provisions of the Trade Practices Act 1974 and passing off under the general law.
Trade Marks

14. The trade marks relied on were numbers A227965 and A227966 in respect of certain goods and a service mark, no. A339262 "in respect of services in this class pertaining to the staging of beauty competitions ..." Each mark consists of the words "Miss World".

15. Mr. Chesterman relied on all three marks but it seems clear that his strongest case is that on the third - the service mark - because of the breadth of its operation. That was granted for a period of seven years from 24 October 1979. There was some confusion in the evidence as to its renewal, but in the end Mr. Harrison Q.C. conceded that it had been renewed.

16. Since seven years have expired since the date as of which the mark was registered - viz. 24 October 1979 - the effect of ss.53 and 61 of the Trade Marks Act is that the original registration must be taken to be valid, unless one of the three conditions set out in s.61(1) is shown to exist. As there is no contention made that any of those conditions exists, it seems to me that I should treat the mark in question, at this stage, as valid.

17. The test of infringement is set out in s.62(1). For present purposes it is enough to note that the respondent's mark must be shown, among other things, to be "substantially identical with, or deceptively similar to" the applicants' mark. The expression "deceptively similar to" receives an expanded construction by virtue of s.6(3), which deems one mark to be deceptively similar to another "if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion".

18. It is the expression "or cause confusion" which brings the applicants its best prospect of success, in my opinion.

19. There was some evidence which Mr. Chesterman Q.C. relied on as showing the likelihood of confusion, but even in the absence of such evidence, it would be easy enough to conclude that from time to time the word "Mrs" might be mistaken for the word "Miss".

20. In considering this issue of confusion, I have derived some assistance from the reasons given in the United States District Court in the similar application determined on October 8 1987, but I do not propose to summarise those reasons.

21. Mr. Chesterman also relied upon a survey which was done in an effort to show that members of the public would be likely to think that the "Mrs World" competition is connected with the "Miss World" competition. The survey tended to demonstrate that most people do not so think, but that a minority believe that the two are connected, or that both are organised by the same people.

22. Both "Miss" and "World" are of course very ordinary and common words. The applicants have chosen for their mark a word consisting of a title held by a large proportion of the women and girls in English speaking countries, combined with the name of our planet. It is my view that a Court would not readily expand the prima facie scope of protection afforded by registration of the relevant mark by conceding a monopoly also over similar titles such as "Mrs" or "Mr", in connection with such contests. It may well be that if people knowing nothing of the organisers of these contests are asked to guess whether they are connected or identical, some will speculate that they are - no doubt influenced purely by the similarity in the names and purposes of the contests, but "confusion" of that sort is not, in my opinion, what s.6(3) contemplates. I think it unlikely to be held to be the law that the applicants' right to exclusive use of the name "Miss World" as descriptive of a beauty contest carries with it the right to prevent others from conducting a "Mrs World" contest - or, to put the conclusion more precisely, it is improbable that at a trial, on full argument, it would be so held. A contest of that kind for married women is likely to be regarded by the public as distinctly different in character from one for single women; I think the difference would tend to impress itself on the minds of those, even casually interested in them. The titles "Mrs" and "Miss" sound similar but are different in meaning in a way which is socially very important.
Other bases of application

23. As to the Trade Practices Act, Mr. Chesterman mentioned s.52 but relied primarily upon s.53(d) which reads as follows:

"A corporation shall not, in trade or commerce, in

connection with the supply or possible supply of
goods or services or in connection with the
promotion by any means of the supply or use of
goods or services -

...

(d) represent that the corporation has a
sponsorship, approval or affiliation it does
not have;".

24. The principal ground of attack was that those who heard of the "Mrs World" contest would be likely to imagine it to be affiliated with the "Miss World" contest. I think they would sometimes do so, as the surveys indicate. It is a far step, however, from that conclusion to the result that to conduct a "Mrs World" contest necessarily represents that there is an affiliation. The respondent does not claim there is one and if anyone concludes that the organisers of the later contest are affiliated with those of the earlier, he or she must merely be speculating.

25. As to passing off, it seems to me unnecessary to add much to the discussion under the heading of "Trade Marks". That is so because the applicants' passing off case is inherently weaker than that under the statute: in a passing off suit, the Court may be urged to give effect to the reluctance evidenced by the many authorities to give a monopoly of a geographical name; the word "world" is not only a, but the geographical name.
Balance of Convenience

26. Until some short time after the last decision of the Court of Appeals for the Ninth Circuit referred to above, the respondent was preparing for the now imminent pageant on the basis that it was bound by the injunction earlier granted by that Court. That is, it regarded itself as entitled to use the expression "Mrs of the World" as descriptive of the pageant and "Mrs World" as descriptive of the winner - the latter subject to the making of the disclaimer. Since the dissolution of the United States' injunction, further steps have been taken towards the use of "Mrs World", abandoning "Mrs of the World", but I am not prepared to find that those steps are irreversible.

27. It would be very inconvenient for the respondent at this late stage to be driven back to "Mrs Woman of the World". Lesser inconvenience would be occasioned by eschewing use of "Mrs World", on the basis that "Mrs of the World" is permissible, but it does not appear to me likely that giving the applicants such partial success would considerably enhance their position; nor did the applicants so contend.

28. If the applicants are, in the end, successful they will find difficulty in proving the extent to which their loss has been enhanced by the respondent's having for a time used "Mrs World" rather than "Mrs of the World" or "Mrs Woman of the World". Equally, if the respondent is forced to use "Mrs Woman of the World", it will not easily show how much loss as to publicity and "image" has been caused to it. These considerations tend to balance out, but as against that there is the fact that the respondent has, for some considerable time, prepared on the basis of using the expressions "Mrs of the World" and "Mrs World", and the final pageant is imminent.

29. In the whole of the circumstances, it appears to me clear that the proper course is to refuse the application for interlocutory relief and it will be dismissed with costs, including reserved costs.