Merv Brown Pty Ltd v David Jones (Australia) Pty Ltd; Miki Shoho Company Ltd v. Merv Brown Pty Ltd [1987] FCA 247

Merv Brown Pty Ltd v David Jones (Australia) Pty Ltd; Miki Shoho Company Ltd v. Merv Brown Pty Ltd [1987] FCA 247

By 20 August 1985, Merv Brown had developed sufficient reputation or goodwill in Australia with respect to 'Miki House' for children's clothing, despite no sales under the mark having yet occurred. Thus, subsequent use of 'Miki House' by David Jones and Miki Shoko for children's clothing in Australia was misleading or deceptive under the Trade Practices Act and constituted passing off. The registration and assignment of the trade mark 'Miki House' to Merv Brown was found valid, as goodwill in the clothing business passed with the assignment, satisfying the requirements of the Trade Marks Act. Claims by Miki Shoko and David Jones were rejected for lack of prior reputation/goodwill in...

Parties
Applicant: Merv Brown Pty. Ltd.; Respondent: David Jones (Australia) Pty. Ltd.; Respondent: Miki Shoko Co. Ltd.; Applicant: Miki Shoko Co. Ltd.; Applicant: David Jones (Australia) Pty. Ltd.; Respondent: Merv Brown Pty. Ltd.
Jurisdiction
Australia
Judgment Date
22 May 1987
Procedural Posture
Trial / Final Judgment
Outcome
Permanent injunctions granted against Miki Shoko and David Jones; cross claim dismissed; costs awarded to Merv Brown. NSW application by Miki Shoko/David Jones dismissed with costs.
Legal Topics
Misleading and Deceptive Conduct, Passing Off, Trade Mark Validity, Assignment of Trade Mark, Goodwill, Likelihood of Confusion
Trade Marks Trade Practices Misleading and Deceptive Conduct Passing Off Trade Mark Validity Assignment of Trade Mark Goodwill Likelihood of Confusion

Case Brief

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Parties

Merv Brown Pty. Ltd.

Applicant

David Jones (Australia) Pty. Ltd.

Respondent

Miki Shoko Co. Ltd.

Respondent

Miki Shoko Co. Ltd.

Applicant

David Jones (Australia) Pty. Ltd.

Applicant

Merv Brown Pty. Ltd.

Respondent

Procedural Posture

Trial / Final Judgment

Legal Issues

  1. 1 Whether Merv Brown Pty. Ltd. or Miki Shoko Co. Ltd./David Jones (Australia) Pty. Ltd. had the right to use the mark 'Miki House' in Australia with respect to clothing
  2. 2 Whether either party had acquired reputation or goodwill in the mark 'Miki House' in Australia prior to 20 August 1985
  3. 3 Validity of the registration and assignment of the trade mark 'Miki House' under the Trade Marks Act 1955 (Cth)

Ratio Decidendi

By 20 August 1985, Merv Brown had developed sufficient reputation or goodwill in Australia with respect to 'Miki House' for children's clothing, despite no sales under the mark having yet occurred. Thus, subsequent use of 'Miki House' by David Jones and Miki Shoko for children's clothing in Australia was misleading or deceptive under the Trade Practices Act and constituted passing off. The registration and assignment of the trade mark 'Miki House' to Merv Brown was found valid, as goodwill in the clothing business passed with the assignment, satisfying the requirements of the Trade Marks Act. Claims by Miki Shoko and David Jones were rejected for lack of prior reputation/goodwill in...

Court Disposition

Permanent injunctions granted against Miki Shoko and David Jones; cross claim dismissed; costs awarded to Merv Brown. NSW application by Miki Shoko/David Jones dismissed with costs.

Orders

  • Respondents restrained from importing/manufacturing/advertising/selling goods under or by reference to 'Miki House' or substantially similar marks.
  • Respondents restrained from falsely representing goods as of the standard/quality of or connected with the applicant.