Christodoulou v Disney Enterprises Inc [2005] FCA 1401

Christodoulou v Disney Enterprises Inc [2005] FCA 1401

The respondents' uses of THE HUNCHBACK OF NOTRE DAME were uses of the established English title of Victor Hugo's story and described the content of the Disney films and associated products. In context, including the frequent presence of DISNEY and WALT DISNEY signs as badges of origin, the impugned words were not used to indicate a relevant connection in the course of trade or to distinguish the respondents' goods or services from those of other traders. Accordingly the uses were not uses as a trade mark within s 120 of the Trade Marks Act 1995 (Cth), so infringement was not established and it was unnecessary to decide substantial identity or deceptive similarity.

Jurisdiction
Australia
Judgment Date
04 October 2005
Procedural Posture
Action for Alleged Infringement of a Registered Trade Mark Under S 120 of the Trade Marks Act 1995 (cth) / Determination of Separate Questions Under O 29 of the Federal Court Rules
Outcome
Application dismissed; applicant ordered to pay the respondents' costs of the proceeding.
Legal Topics
['trade Mark Infringement' 'use as a Trade Mark' 'badge of Origin' 'descriptive Use of Title of Literary Work or Film' 'determination of Separate Questions']
['trade Marks' 'practice and Procedure'] ['trade Mark Infringement' 'use as a Trade Mark' 'badge of Origin' 'descriptive Use of Title of Literary Work or Film' 'determination of Separate Questions']

Case Brief

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Procedural Posture

Action for Alleged Infringement of a Registered Trade Mark Under S 120 of the Trade Marks Act 1995 (cth) / Determination of Separate Questions Under O 29 of the Federal Court Rules

Legal Issues

  1. 1 ['What sign or signs the respondents used or procured the use of in each example in suit.' 'Whether each sign was used or procured to be used as a trade mark.' "If so, whether each sign was substantially identical with or deceptively similar to the applicant's registered mark."]

Ratio Decidendi

The respondents' uses of THE HUNCHBACK OF NOTRE DAME were uses of the established English title of Victor Hugo's story and described the content of the Disney films and associated products. In context, including the frequent presence of DISNEY and WALT DISNEY signs as badges of origin, the impugned words were not used to indicate a relevant connection in the course of trade or to distinguish the respondents' goods or services from those of other traders. Accordingly the uses were not uses as a trade mark within s 120 of the Trade Marks Act 1995 (Cth), so infringement was not established and it was unnecessary to decide substantial identity or deceptive similarity.

Court Disposition

Application dismissed; applicant ordered to pay the respondents' costs of the proceeding.

Orders

  • ['The answers to the separate questions are: Question (a): The parties consented to the answer to be given to this question (see para 22 and Annexure A). Question (b): No. Question (c): Not necessary to decide.' 'The application is dismissed.' "The applicant is to pay the respondents' costs of the proceeding."]