Radio Corporation Pty Ltd v Disney

The appeal concerned an application by Radio Corporation Pty Ltd to register the words "Mickey Mouse" and "Minnie Mouse" as trade marks for radio receiving sets and kits. The application was opposed by Walter E. Disney and associated companies, who argued that the names were so closely associated with their famous characters that their use by the applicant would be likely to deceive. The Registrar of Trade Marks refused the application, and Radio Corporation Pty Ltd appealed to the High Court of Australia.

The High Court was required to determine whether the proposed trade marks were likely to deceive the public, thereby disentitling them to protection in a court of justice under section 114 of the Trade Marks Act 1905-1934. This involved considering the widespread popularity of the "Mickey Mouse" and "Minnie Mouse" characters and their association with Walter E. Disney, as well as the extensive licensing of these names and figures for use on a wide variety of goods. The court had to assess whether the use of these names on radio receiving sets would lead the public to believe that the goods were connected with Disney, despite the applicant having no affiliation with him.

The majority of the court, comprising Latham C.J., Rich and McTiernan JJ., held that registration should be refused. Their reasoning was that the names "Mickey Mouse" and "Minnie Mouse" were so closely associated in the public mind with Walter E. Disney that their use by the applicant as trade marks would be likely to deceive. They applied the principle from *Eno v. Dunn*, that a proposed trade mark should not be registered if it involves a misleading allusion or a suggestion of something not strictly true. Dixon J. reached the same conclusion, but on the ground that the use of the marks by the applicant was disentitled to protection in a court of justice within the meaning of section 114 of the Act, due to the unauthorized diversion of the celebrity and reputation created by Disney's creations.

The appeal was dismissed, and the application for registration of the trade marks was refused.