Miller v Britt Allcroft (Thomas) LLC - [2000] FCA 1724

FEDERAL COURT OF AUSTRALIA
Miller v Britt Allcroft (Thomas) LLC [2000] FCA 1724
TRADE PRACTICES – application to restrain use of business name where appellant sells exclusively merchandise manufactured and sold under licence from respondents – whether conduct is likely to mislead or deceive by representing to customers that the business is somehow connected with the respondents or carried on with their licence or approval – efficacy of ‘disclaimer’ statements.
Fair Trading Act 1987 (SA) s 56
Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403 referred to
Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 referred to
Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 followed
ROBYN LEANNE MILLER V BRITT ALLCROFT (THOMAS) LLC AND BRITT ALLCROFT (THOMAS) LIMITED
NO S 72 OF 2000
JUDGES:      BEAUMONT, HEEREY & LEHANE JJ
DATE:           1 DECEMBER 2000
PLACE:         ADELAIDE

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY

NO S 72 OF 2000

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

ROBYN LEANNE MILLER
APPELLANT

AND:

BRITT ALLCROFT (THOMAS) LLC
FIRST RESPONDENT

BRITT ALLCROFT (THOMAS) LIMITED
SECOND RESPONDENT

JUDGES:

BEAUMONT, HEEREY AND LEHANE JJ

DATE OF ORDER:

1 DECEMBER 2000

WHERE MADE:

ADELAIDE

THE COURT ORDERS THAT:
1.Vary the orders made at first instance on 26 June 2000 by deleting pars (b) and (c) from Order 1.

2.Appeal otherwise dismissed, with costs.

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

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY

NO S 72 OF 2000

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

ROBYN LEANNE MILLER
APPELLANT

AND:

BRITT ALLCROFT (THOMAS) LLC
FIRST RESPONDENT

BRITT ALLCROFT (THOMAS) LIMITED
SECOND RESPONDENT

JUDGES:

BEAUMONT, HEEREY AND LEHANE JJ

DATE:

1 DECEMBER 2000

PLACE:

ADELAIDE

REASONS FOR JUDGMENT
THE COURT:
INTRODUCTION

The appellant, Robyn Leanne Miller, carries on business in a shop in the retail shopping area of Glenelg. Her business is the sale by retail of children’s toys, games and books and other products being “Thomas the Tank Engine & Friends” merchandise (“Thomas Merchandise”) which is manufactured and sold under licence from the respondents, Britt Allcroft (Thomas) LLC (“BAT”) and Britt Allcroft (Thomas) Limited (“BATL”). The appellant trades under the business name “The Thomas Shop”.
The respondents commenced proceedings in this Court against the appellant claiming (relevantly) that the use of the business name “The Thomas Shop” was likely to mislead and deceive and was thus in contravention of the provisions of s 56 of the Fair Trading Act 1987 (SA); that the appellant had wrongfully passed off her business as having an association with the respondents; and that the appellant had infringed the respondents’ trade marks registered under the Trade Marks Act 1995 (Cth). The respondents made no claim that the appellant was not entitled to (a) sell the “Thomas Merchandise” if acquired lawfully from a licensed supplier; and (b) sell only “Thomas Merchandise”. The respondents sought injunctive relief.

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: [2000] FCA 1724
Decision Date: 1 DECEMBER 2000

CaseChat Overview and Summary

Miller, the appellant, challenged a decision that found her conduct likely to mislead or deceive consumers into believing her business was connected to Britt Allcroft (Thomas) LLC, the respondents, who own the Thomas merchandise brand. The dispute arose from Miller's operation of "The Thomas Shop," a retail establishment selling Thomas merchandise, which was not officially endorsed or licensed by the respondents. The court was tasked with determining whether Miller's conduct, including the use of the name "The Thomas Shop" and the shop's appearance, was likely to mislead consumers into believing there was an affiliation with the respondents.

The legal issues centred on whether Miller's use of the name "The Thomas Shop," the shop's appearance, and the sale of Thomas merchandise created an impression of a connection or approval by the respondents. The court considered the totality of Miller's conduct and the context in which it occurred. The respondents argued that the name and appearance of the shop, coupled with the exclusive sale of Thomas merchandise, would naturally lead consumers to infer a connection or approval by the respondents. The court examined whether such an inference was reasonable given the established reputation of the respondents as the creators and owners of the Thomas brand.

The court concluded that the appellant's conduct, when viewed in its entirety, was likely to mislead consumers into believing there was a connection or approval by the respondents. The court found that the use of the name "The Thomas Shop," the shop's appearance, and the exclusive sale of Thomas merchandise conveyed a representation of a connection or approval by the respondents, which was misleading. The court rejected the argument that the respondents' lack of involvement in retailing or licensing negated the claim. The appeal was dismissed with costs, except for varying the original orders to remove certain specific provisions.

Orders

Orders of the court

1. Vary the orders made at first instance on 26 June 2000 by deleting pars (b) and (c) from Order 1.

2. Appeal otherwise dismissed, with costs.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

On behalf of the appellant it is submitted that in all the circumstances of the case as revealed in the evidence, the inference was not open that the appellant’s conduct was likely to deceive or mislead consumers into believing that the appellant’s business was in some way connected with the respondents, or was carried on with the approval or licence of the respondents. In particular, reliance is placed upon the several disclaimer statements made by the appellant.CONCLUSIONS ON THE CHALLENGE TO HIS HONOUR’S FINDING OF MISLEADING OR DECEPTIVE CONDUCT In our opinion, the question for his Honour was essentially one of fact: was the appellant’s conduct, considered in the context of all the surrounding circumstances, likely to mislead or deceive by representing to consumers that her business was somehow connected with the respondents or carried on with their licence or approval? On the appeal Senior Counsel for the appellant argued:·The respondents’ reputation in relation to Thomas merchandise was only that of a manufacturer and publisher. They had no reputation in South Australia or elsewhere as a retailer.·The use of the name “The Thomas Shop” for a shop painted in “Thomas” blue stocked entirely with Thomas merchandise did not convey any more than the true representation that the appellant was a retailer of Thomas merchandise at that shop. But the appellant’s course of conduct must be looked at as a whole. It is not appropriate to analyse separate aspects in isolation: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 at par 54. We see no error in his Honour drawing the inference that, viewed in a practical way, the representation being conveyed was that there was a connection of some sort between the shop as a business entity and the producer of the merchandise sold in it. It is not necessary for the purposes of passing off, or statutory causes of action for misleading and deceptive conduct, for a plaintiff to establish that it is engaged in the same field of activity as that of the impugned conduct of the defendant: Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403 at 431. So the fact that the respondents had not at the time of trial engaged in retailing, or in the franchising or licensing of retailers, was not necessarily fatal to their claim. Two points can be made. First, the production of merchandise and the owning or licensing of shops in which that merchandise is sold are related fields of activity. Secondly, although it is implicit rather than explicit in his Honour’s reasons, it is a common feature of retailing today for shops to bear the name of a famous trade mark, character or person’s name which is the mark under which goods and services are sold at those shops. The natural conclusion that members of the public would draw is that a shop selling only one product, being a shop which bears the trade name of that product, and is fitted out with the colours, logos and other get up of the product, is either owned or licensed in some way by the manufacturer of that product.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY	NO S 72 OF 2000

BETWEEN:	ROBYN LEANNE MILLER APPELLANT
AND:	BRITT ALLCROFT (THOMAS) LLC FIRST RESPONDENT BRITT ALLCROFT (THOMAS) LIMITED SECOND RESPONDENT
JUDGES:	BEAUMONT, HEEREY AND LEHANE JJ
DATE OF ORDER:	1 DECEMBER 2000
WHERE MADE:	ADELAIDE

JUDGES:	BEAUMONT, HEEREY AND LEHANE JJ
DATE:	1 DECEMBER 2000
PLACE:	ADELAIDE