Miki Shoko Co Ltd & Anor v Merv Brown Pty Ltd

Miki Shoko Co Ltd and David Jones (Australia) Pty Ltd applied to the High Court of Australia for special leave to appeal a decision of the Full Federal Court. The Full Federal Court had granted leave to appeal from an earlier decision of Northrop J, but in substance dismissed the applicants' case. The dispute concerned the applicants' claim to use the trademark "Miki House" for goods imported from Japan and sold by David Jones (Australia) Pty Ltd. The respondent, Merv Brown Pty Ltd, had purchased the rights to the name "Miki House" and claimed to have generated goodwill in Australia prior to the launch of the Japanese goods.

The legal issues before the High Court were whether the Full Federal Court had erred in upholding the respondent's claim to goodwill in the name "Miki House" and whether this goodwill provided a sufficient foundation for actions in passing off and under Part V of the Trade Practices Act 1974 (Cth). Specifically, the court needed to consider whether the respondent's preparations to sell goods under the name "Miki House" constituted sufficient activity to establish goodwill, even though the respondent had not yet launched its own goods into the Australian market.

The Full Federal Court, in its reasoning which the High Court was asked to review, found that the respondent had indeed generated sufficient goodwill. This conclusion was based on the respondent's activities undertaken between late 1984 and August 1985, which included acquiring genuine "Miki House" goods from the first applicant as samples and using these, along with sketches and photographs of Japanese stores, to solicit business from Australian retailers. The courts below considered this preparatory activity, which demonstrably involved the first applicant's goods and brand, to be the foundation for the respondent's claim to protection against the importation and sale of the Japanese goods.