Anheuser-Busch Inc v Castlebrae Pty Ltd - [1991] FCA 634

Re: ANHEUSER-BUSCH INCORPORATED
And: CASTLEBRAE PTY LTD; CRAIG SHAUN HULL and CORAL MAY HULL
No. G612 of 1990
FED No. 634
Trade Marks - Copyright - Trade Practices
(1991) AIPC 90-840
23 IPR 54
(1991) 7 ACSR 231

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
INDUSTRIAL DIVISION
Davies J.(1)

CATCHWORDS

Trade Marks - name and image of dog used by applicant in beer advertising - applications for trademarks - prior registration by respondent - whether a substantial copy of applicant's American trademarks - whether fraudulent - "character merchandising" - whether respondent's trademarks capable of becoming distinctive of goods associated with it - expungement from register.

Copyright - whether drawings of dog artistic or literary works - whether a breach of copyright.

Trade Practices - whether respondent's conduct misleading or deceptive.

Copyright Act 1968 (Cth) - s.196

Copyright (International Protection) Regulations - Part I, Schedule 1 - Reg. 4(3)

Trade Practices Act 1974 (Cth) - s.52

Trade Marks Act 1955 (Cth) - ss.22(1), 22(5), 25(1), 26(1), 28

HEARING

MELBOURNE (heard in Sydney)

#DATE 25:10:1991

Counsel for the applicant: Mr J.V. Nicholas

Solicitor for the applicant: Corrs Chambers Westgarth

ORDER

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from using in any way in the course of business, any representation of a bull terrier which is identical to, substantially identical with or deceptively similar to the character appearing in the forms depicted in exhibit "SKL-2" to the Affidavit of Stephen K. Lambright sworn 14 October, 1990.

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from using in any way in the course of business, any presentation of a bull terrier which is identical to, substantially identical with or deceptively similar to the character appearing in the forms depicted in exhibit "DH-1" to the Affidavit of David Henderson sworn 24 October, 1990.

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from using in any way in the course of business the name "SPUDS MACKENZIE" or any name substantially identical with or deceptively similar thereto including the name "SPUDS MACSTUD".

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from selling or offering for sale or by way of trade distributing any t-short or other garment upon which appears any of the characters or names referred to in Orders 1, 2 and 3 hereof or any other name or character which is substantially identical with or deceptively similar to any such name or character.

Each of the First and Second Respondents within 28 days of the date of this Order deliver up on oath all articles of clothing, brochures, labels, advertising and promotional material in their possession or control upon which appears any of the characters or names referred to in Orders 1, 2 and 3 hereof or any other…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1991] FCA 634
Decision Date: 25 OCTOBER 1991

CaseChat Overview and Summary

Anheuser-Busch Inc brought proceedings against Castlebrae Pty Ltd and others in relation to the use of the name and image of a dog, known as "Spuds MacKenzie," in beer advertising. The dispute centred around the ownership of the trademarks and whether the defendants' use of the dog's image and name constituted a substantial copy of the plaintiff's American trademarks, potentially involving fraud and "character merchandising." The Federal Court was tasked with determining whether the defendants' trademarks were capable of becoming distinctive of the goods associated with them and whether they should be expunged from the register.

The court examined the question of whether the defendants' trademarks were substantially identical or deceptively similar to the plaintiff's trademarks. It considered the concept of "character merchandising" and whether the defendants' use of the dog's image and name was a substantial copy of the plaintiff's trademarks. The court also explored whether the defendants' trademarks had the potential to become distinctive of the goods associated with them. These legal issues required the court to balance the rights of trademark owners with the potential for distinctiveness and originality in the defendants' use of the character.

The court concluded that the defendants' use of the dog's image and name was indeed a substantial copy of the plaintiff's trademarks. It found that the defendants' trademarks were capable of becoming distinctive but that their use in the context of beer advertising constituted an infringement of the plaintiff's rights. The court ordered the defendants to cease using the dog's image and name in any way in the course of business, to deliver up all promotional materials featuring the character, and to expunge the defendants' trademarks from the register. The court also ordered the defendants to pay the plaintiff's costs.

The court issued several orders to enforce the decision, including restraining the defendants from using the dog's image and name, delivering up all promotional materials featuring the character, and expunging the defendants' trademarks from the register. The defendants were also ordered to pay the plaintiff's costs. The case highlights the importance of protecting trademark rights and the potential consequences of infringing on another's intellectual property.

Orders

Orders of the court

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from using in any way in the course of business, any representation of a bull terrier which is identical to, substantially identical with or deceptively similar to the character appearing in the forms depicted in exhibit "SKL-2" to the Affidavit of Stephen K. Lambright sworn 14 October, 1990.

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from using in any way in the course of business, any presentation of a bull terrier which is identical to, substantially identical with or deceptively similar to the character appearing in the forms depicted in exhibit "DH-1" to the Affidavit of David Henderson sworn 24 October, 1990.

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from using in any way in the course of business the name "SPUDS MACKENZIE" or any name substantially identical with or deceptively similar thereto including the name "SPUDS MACSTUD".

Each of the First and Second Respondents, whether by themselves, their servants or agents or otherwise, be restrained from selling or offering for sale or by way of trade distributing any t-short or other garment upon which appears any of the characters or names referred to in Orders 1, 2 and 3 hereof or any other name or character which is substantially identical with or deceptively similar to any such name or character.

Each of the First and Second Respondents within 28 days of the date of this Order deliver up on oath all articles of clothing, brochures, labels, advertising and promotional material in their possession or control upon which appears any of the characters or names referred to in Orders 1, 2 and 3 hereof or any other name or character which is substantially identical with or deceptively similar to any such name or character.

Pursuant to s.22 of the Trade Marks Act, 1955 (Cth) that the register kept thereunder be rectified by expunging therefrom the entries in respect of each of the trade marks numbered A466883 and A466884.

The First and Second Respondents pay the Applicant's costs of these proceedings.

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

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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