Arriba P/L v Cuisine to Go P/L

[1994] FCA 564

ARRIBA PTY LTD and PATTIES BAKERY PTY LTD v. CUISINE TO GO PTY LTD
No. VG236 of 1994
TIME WARNER ENTERTAINMENT COMPANY LP, WARNER HOME VIDEO PTY LTD and CUISINE TO
GO PTY LTD v. ARRIBA PTY LTD and PATTIES BAKERY PTY LTD
No. VG251 of 1994
FED No. 564/94
Number of pages - 3
Interlocutory Injunction
(1994) 29 IPR 584

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
HEEREY J

CATCHWORDS

Interlocutory Injunction - mouse logo applied to Mexican food - possibility of confusion - lack of candour by applicant as to logo origin

Trade Practices Act 1974 (Cth) ss.52, 53(a)(c)
Copyright Act 1968 (Cth)

HEARING

MELBOURNE
#DATE 9:8:1994

Counsel for the applicant: G C McGowan

Solicitor for the applicant: Sly and Weigall

Counsel for the respondent: J G Samargis

Solicitor for the respondent: Mason Sier Turnbull

ORDER

The Court orders:
1. The applications for interlocutory relief in both matters be dismissed.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

JUDGE1

HEEREY J In proceeding VG 236 of 1994 Arriba Pty Ltd and Patties Bakery Pty Ltd seek an interlocutory injunction restraining Cuisine to Go Pty Ltd from applying the image and name of the mouse cartoon character known as Speedy Gonzales to a range of Mexican food products. The character and name have been licenced to be used by Cuisine to Go Pty Ltd under a licence agreement with Warner Brothers Consumer Products.

1. In a proceeding which is frankly conceded to be responsive to the first application, Time Warner Entertainment Company LP, Warner Home Video Pty Ltd (Warner) and Cuisine to Go Pty Ltd (Cuisine to Go) brought an application (VG 251 of 1994) seeking declarations that Arriba Pty Ltd had infringed copyright in the Speedy Gonzales character and injunctive relief, both interlocutory and final, restraining Arriba Pty Ltd from reproducing its mouse character and using the name "Arriba" in connection with the supply of Mexican food.

2. Arriba Pty Ltd has been using the "Arriba" name and its mouse character in connection with Mexican food since a launch in August 1993. The name and character appear on packaging as follows:
   

(DIAGRAM OMITTED)

1. Mr Dennis Dunstan, a director of Arriba Pty Ltd, swore that the mouse logo was devised in California by a commercial artist retained by him between October 1992 and March 1993. No explanation was given for the choice of the name "Arriba". In February 1993 the name of the company was changed from Ascendency Pty Ltd to Arriba Foods Pty Ltd and then to Arriba Pty Ltd in July 1993.

2. Arriba Pty Ltd became aware in late June 1994 that Cuisine to Go was intending to sell its Mexican food products under the name "Speedy Gonzales" and using that mouse's picture. This character appears on Cuisine to Go's packaging as:
   

(DIAGRAM OMITTED)

1. The licence agreement between Warner and Cuisine to Go, although concluded on 31 October 1993 was, according to an affidavit by Mr Hugh Bryant a director of Cuisine to Go, the result of negotiations which commenced in early June 1993 and is to run from 1 July 1993.

2. I have come to the conclusion that neither application for an injunction should be allowed. The main factor which influences me in declining an injunction on the application of Arriba Pty Ltd is that I think it has been less than frank in the case it has put to the Court.

3. If one were to rely on the affidavit of Mr Dunstan, his company's logo was developed independently by the commercial artist in California. No mention at all is made of any reference at the time to what I find to be the very well established character, Speedy Gonzales. That character, as the evidence shows, is a cartoon mouse in Mexican clothing who frequently appears in a cartoon setting rushing at great speed. A document entitled "Speedy Gonzales Style Guide" exhibited to an affidavit sworn by Ms Helen Thompson on behalf of Warner gives a brief description of the character:
   

"The fastest mouse in all Mexico, Speedy Gonzales is the champion of downtrodden mice. He first raced across the screen in 'Cat-Tails for Two' (1953) and has been protecting his less clever friends ever since. The other mice call on Speedy when they are being pursued by Sylvester or Daffy Duck. Speedy easily outwits his opponents, rocketing past them shouting 'Arriba, Arriba, Andale, Andale]' Speedy can sometimes be found in the company of his lethargic cousin, Slowpoke Rodriguez, who eats anything in sight and sings 'La Cucaracha.' Speedy ran off with the Academy Award in 1955 and has been running away with the cheese ever since."

1. "Arriba" is a Spanish word meaning "above", "up", "on high" or, colloquially, "get on top".

2. The reader of Mr Dunstan's affidavit could only draw the conclusion that he was saying that his company's Mexican mouse was an original invention. However, Ms Helen Thompson deposes that she has travelled to California on a number of occasions to visit Warner Bros. She is aware that California is the home of the Looney Tunes characters, including Speedy Gonzales. She further deposes:
   

"Speedy Gonzales is extremely well known and recognised in California. Based on my knowledge of the reputation of Speedy in California and of the licensing activity conducted in respect of the Looney Tunes cartoon characters in the United States of America, including Speedy, and of the exposure of such licensed products in Warner Bros specialty stores located in California, shopping areas, the possibility of a commercial artist, or someone living in California not knowing of Speedy and not knowing his characteristics in 1992/93 period, is quite remote."

1. There is the further remarkable coincidence that in February 1993, that is about the time that the artist was retained in America to draw the logo, Mr Dunstan's company changed its name to Arriba Foods Pty Limited. I find it impossible to conclude that this was anything other than part of a conscious plan to appropriate the existing reputation of the Speedy Gonzales character associated, as it was, with the war cry "arriba, arriba". The matter is put, I think, beyond any doubt by the affidavit of Mr Noel Reid. He deposes to hearing a radio interview on 3AW in September last year when the interviewer asked Mr Dunstan how he obtained the name "Arriba", and he answered, "That is what the little mouse said as he ran across the screen".

2. I think therefore that I should accept the submission of Mr Samargis on behalf of Warner and Cuisine to Go that there has been a copying of the Speedy Gonzales image with a view to obtaining advantages from the similarities, and that if there has been any confusion that has been created by Arriba Pty Ltd's own conduct.

3. Moreover, I am also not satisfied that there is any significant room for confusion. The get-up of the two products seems to be noticeably different. There is no similarity in terms of colour or style or composition. I viewed the television advertisement currently being shown by Arriba Pty Ltd in Brisbane. The main emphasis is on the physical presentation of the product itself and the obvious enjoyment of the young men and women partaking of it. The mouse character played a short and relatively insignificant part at the end of the program.

4. Indeed, Mr McGowan for Arriba Pty Limited did not put its case on the basis of the similarity of the two mice, but rather that a potential purchaser would see the name "Speedy Gonzales", think of the expression "arriba arriba" and therefore think it was Arriba Pty Ltd's product. That chain of reasoning, of course, seeks to exploit the very thing which I have mentioned earlier, namely that Arriba Pty Ltd's name and mouse character is founded in what would seem to be deliberate copying.

5. I think the best solution for the moment is to let the parties compete in the marketplace. I am not satisfied that either will suffer any irreparable damage. Indeed it is not clear to me that they will suffer much damage at all. For those reasons I dismiss both applications.