Radio Corporation Pty Ltd v Disney ("Mickey Mouse case") [1937] HCA 38; (1937) 57 CLR 448 (4 August 1937)

Radio Corporation Proprietary Limited Applicant, Appellant; and Disney and Others Opponents, Respondents.

Some years ago Walter E. Disney invented two fantastic and amusing cinema characters—Mickey Mouse and Minnie Mouse. They have become very popular throughout the world. Their names and the very distinctive figures which represent or possibly constitute their personality are almost universally familiar—certainly they are very widely, if not universally, known throughout Australia.

The Radio Corporation Pty. Ltd. (which has no connection whatever with Walter E. Disney) made applications for the use of "Mickey Mouse" and "Minnie Mouse" as trade marks in respect of radio receiving sets and kits. Walter E. Disney and companies associated with him opposed the applications. The opposition was successful and an appeal is now brought to this court.

The Trade Marks Act 1905-1934, sec. 114, is in the following terms: "No scandalous design, and no mark the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice, or the use of which would be contrary to law or morality, shall be used or registered as a trade mark or part of a trade mark."

The opponents have, in my opinion, shown that the names and the figures are so closely associated in the public mind, in Australia and elsewhere, 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 Walter E. Disney (See, per Lord Macnaghten, Eno v. Dunn[1]). This, the evidence shows, would be the case whatever the nature of the goods to which the names were attached. It is very seldom indeed that there can be a world-wide association of ideas in connection with a particular name or figure, but the evidence shows that this association does exist in the present case. A proposed trade mark should not be registered if it involves "a misleading allusion or a suggestion of that which is not strictly true" (Eno v. Dunn[2]). Thus, in my opinion, these marks should not be registered.

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

The appellant company applied to register as trade marks the words "Mickey Mouse" and "Minnie Mouse." The registrar, in the exercise of the discretion conferred on him by sec. 33 (3) of the Trade Marks Act 1905-1934, refused the application. That sub-section reads as follows:—"Subject to this Act the registrar may either accept the application, with or without modifications or conditions, or refuse it." It must always be remembered that the burden of proof is on the applicant, who must negative all likelihood of deception or confusion (Standard Paint Co. v. Hales Ltd.[3]). When the discretion of the registrar has been exercised against the applicant, the court pays attention to his view as that of an experienced officer upon whom the primary duty of deciding the matter is imposed. This increases the burden the applicant must sustain. In the present case it does not appear that the registrar misdirected himself or that his discretion was guided by wrong principles. It is therefore necessary for the applicant company to satisfy us in a special degree that the mark for which it seeks registration is open to no objection under secs. 25 or 114. It cannot be denied that the opponents have obtained great reputation or notoriety for the form and name of Mickey Mouse and Minnie Mouse, his feminine counterpart. But it is said that that reputation is unconnected with the sale or handling of goods and is analogous rather to the fame of some personage of fiction or history. 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. It is enough that they have failed to satisfy first the registrar and then the court that any confusion is improbable.

This is an appeal from a decision of the Registrar of Trade Marks refusing to register as trade marks in respect of radio receiving sets and kits the words "Mickey Mouse" and the words "Minnie Mouse." The successful opponents were Walter E. Disney, the author of the figures called by those names, a corporation incorporated in the United States, two companies incorporated in the United Kingdom and a société anonyme formed in France, bodies all promoted for the purpose of exploiting in various ways the public interest in the two figures. After Disney's conceptions attained celebrity through the moving pictures they were turned to account in publications of many kinds, books, pictures, songs and even music. There has been a large output in very many countries of printed matter, including cartoons, strips and other forms of advertisement. It is said too that now a talking picture concerning one or other or both of the figures is produced almost every fortnight. In all this the name of Walt Disney has been kept before the public, and his responsibility for the conceptions and for their persistence is a matter of common knowledge or general belief. In these operations, which, of course, are conducted on a large commercial scale, the corporate bodies who join in the opposition have played different parts, but I do not think that it is material to distinguish among them.

Another very important application of the names and figures of Disney's conceptions concerns the retail sale of all kinds of goods. Presumably because of the attraction which the figures and their fictional activities have for so many people, traders of all sorts desire to affix representations of them to their goods or use the figures or their names in connection therewith. In the use of the conceptions as an aid to selling goods, their author and the trading bodies he has promoted have found a valuable source of revenue. An elaborate and extensive system of licensing has been set up. Under it manufacturers or traders pay for permission to use the names or the figures in connection with their goods. In Australia alone licences have been granted for all sorts and descriptions of goods produced by numbers of unconnected manufacturers. The articles bearing representations of or called by the names of Disney's conceptions have no characteristic in common. They go from canned soups to cotton undershirts and from bridge scorers to boys' braces. Here no registration has been obtained in respect of the words or figures, either as trade marks, designs or under the Copyright Act 1912. But in Great Britain the words are registered as trade marks for picture films and for publications. There are registrations of much the same kind in Canada and the United States, and in Germany and in France the words are also registered as trade marks for a long catalogue of articles.

The opponents claim that they are or one of them is entitled in Australia to copyright in the representations of the conceptions and their names. The basis of the claim was not explained. But, in any case, in the present proceedings no attempt has been made to establish its correctness.

The applications for the trade marks now before us are made by complete strangers to the opponents. The applicants have obtained no licence, and have acquired from the opponents no right of any sort, actual or supposed. Their case is that the words "Mickey Mouse" and "Minnie Mouse" are simply the well-known names of highly popular characters in the fiction of the cinema and its adjuncts and that no one possesses an exclusive right to their use and no objection can exist to applying the names to goods unconnected with films or their exhibition.

On the other hand, the opponents contend that the present question is not whether they or any of them have an exclusive right to the words, but whether, in the language of sec. 114 of the Trade Marks Act 1905-1934, the use by the applicants of a mark consisting in the words would, by reason of its being likely to deceive or otherwise, be deemed disentitled to protection in a court of justice.

Upon the facts I have stated the question may naturally be asked, in what respect will the buyers of the applicant's radio sets be misled if they bear as a trade name the words "Mickey Mouse"? If to the public the use of the words or the figures upon or in connection with goods meant that the goods were produced, selected, certified, or dealt in by Disney or his companies, the licensing system so extensively practised would be indefensible. In any case, the system is so widespread and covers so many unrelated classes of goods that the use of the words or figures cannot at this stage have the significance of a trade mark belonging to the opponents. 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 Mouse 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 produced by the opponents. In connection with such films it seems that the words are used by the opponents as a trade mark, a fact which 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 classes 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. 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.

To my mind the question upon which the matter turns is whether because of this kind of unauthorized diversion to the applicant's use and advantage of part of the public reputation and interest which Disney has created for himself and his figures, registration can be refused under sec. 114. It was not argued that the words were incapable of distinguishing the goods. And for the reasons I have stated I am unable to regard the possibility of a belief arising that Disney or any other of the opponents has produced or distributed the goods as a probability. I think it is most unlikely that anyone would suppose it.

In the well-known case of Eno v. Dunn[4], an important statement is made by Lord Macnaghten. Dunn had applied to register as a trade mark a label representing a woman holding up a dish of cakes with the words "Dunn's Fruit Salt Baking Powder. The Cook's Best Friend." The proprietor of Eno's fruit salt objected. The objection failed before the Court of Appeal, but in the House of Lords it was upheld by Lord Watson, Lord Herschell and Lord Macnaghten against the dissent of Lord Halsbury and Lord Morris. The passage in Lord Macnaghten's opinion is as follows:—"The learned judges who were in favour of Mr. Dunn in the court below seem to have come to the conclusion that Mr. Dunn's object was to obtain the benefit of the celebrity which the name adopted by Mr. Eno has acquired, but that it was not his object to steal Mr. Eno's trade. So far I am disposed to agree; but I do not think that those propositions cover the real question. The question is one between Mr. Dunn and the public, not between Mr. Eno and Mr. Dunn. It is immaterial whether the proposed registration is or is not likely to injure Mr. Eno in his trade. Equally immaterial, as it seems to me, is the fact that for a considerable time Mr. Eno had on the register, as his trade mark, the words Fruit Salt. Mr. Eno may have gained some advantage to which he was not properly entitled; but that is hardly a reason for permitting Mr. Dunn to practice a deception upon the public"[5].

In the present case it is the same intangible advantage arising from public celebrity, widespread fame and interest, that the applicants seek. It is not a diversion of trade, custom or profit. Except for the refusal to pay licence fees, the continued use of the trade mark by the applicants will not affect any of the commercial operations of the opponents. It is clear, I think, that the opponents could on their part obtain no injunction for the protection of such an interest as that arising from the mere celebrity or reputation of Disney's productions. Further, in selling, so to speak, the advantage of that celebrity to traders as the opponents have done under their licensing system, they have done much to destroy the significance which they now seek to ascribe to it, namely, the significance of trade reputation based upon a mark. But these are matters which do not make it less right to keep off the register a mark improperly adopted by the applicants. If the circumstances are such that its adoption will give the applicants no right to protection by injunction or other remedy under the general law, then it should be kept off the register. This is what Lord Macnaghten means. Further, the burden of establishing that the mark is free from this disqualification lies on the applicants.

On the whole, I think there are present elements which leave them unable to discharge this burden. Those elements are, first, the belief which many people are not unlikely to hold that in some way or another Disney, or one of his companies has permitted, if not procured, the application of the name Mickey Mouse to the radio sets in connection with which it is used and, second, the unauthorized diversion to their own purposes on the part of the applicants of the celebrity and reputation obtained by the various activities of the opponents in relation to Mickey Mouse. The latter may give no cause of action but I think that, at any rate in conjunction with the former element, it would be enough to deprive the proposed mark of protection.

I agree that the appeal should be dismissed. The present case must be dealt with under sec. 114 of the Trade Marks Act 1905-1934, which casts upon the appellant the duty of justifying the registration of the words "Mickey Mouse" and "Minnie Mouse" as trade marks for use on its radio sets and kits by showing affirmatively that such use is not calculated to deceive the public.

The use which the respondents make of the fantastic figures which go by the names which the appellant seeks to register need not be again discussed. The appellant relies broadly upon the allegation that the respondents do not use either name as a trade mark or as part of the get-up of their goods or otherwise to distinguish their goods or in connection with any goods between which and the appellant's radio sets and kits there is any nexus of similarity. The proof of these allegations would no doubt go far to discharge the onus imposed by sec. 114. But to accept that particular proof as a complete satisfaction of the requirements of the section would be unduly to narrow its scope. Speaking of a similar enactment, sec. 73 of the Patents, Designs, and Trade Marks Act 1883, Lord Macnaghten said in Eno v. Dunn[6]:—"It declares that it is not lawful to register as part of or in combination with a trade mark any words, the exclusive use of which would, by reason of their being calculated to deceive, be deemed disentitled to protection in a court of justice. It seems to me that in registering trade marks the principle to which the enactment so plainly refers ought to be applied without any qualification whatever, and that the comptroller, to whom in the first instance is committed the discretionary power, as it is termed in the Act (sec. 94), of registering a trade mark ought to reject words which involve a misleading allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood." His Lordship proceeded to say that to prevent the registration of words as a trade mark it was enough that they would lead the ordinary run of persons to suppose that the applicant's goods were "in some way or other connected with" the opponent's preparation. He added: "The object I think was ... to induce people to buy under an impression not founded in truth, and not perhaps the less misleading because it is vague and indefinite, and incapable, it may be, of bearing the very slightest examination."

Taking into consideration all the facts of the present case, the appellant has not in my opinion shown that there is no likelihood of the public being deceived in the sense intended by the section by the use of either the name "Mickey Mouse" or "Minnie Mouse" as a trade mark on the appellant's goods.

[1] (1890) 15 App. Cas., at p. 263.

[2] (1890) 15 App. Cas., at p. 263.

[3] [1920] HCA 7; (1920) 27 C.L.R. 350, at pp. 353, 354.

[4] (1890) 15 App. Cas., at p. 263.

[5] (1890) 15 App. Cas., at pp. 263, 264.

[6] (1890) 15 App. Cas., at p. 263.

High Court of Australia

Radio Corporation Pty Ltd v Disney ("Mickey Mouse case") [1937] HCA 38; (1937) 57 CLR 448 (4 August 1937)

HIGH COURT OF AUSTRALIA