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Do not miss your target when picking a trade mark
The line between a successful parody and a fraudulent imitation may be a fine one. If attempting to poke fun at another trader’s trade mark or name, be careful that you do not fall on the wrong side of that line.
Background
Catchoftheday.com.au Pty Ltd, (“the Applicant”) applied to register the two following trade marks in respect of clothing and retail sale of clothing in Australia:
The Opposition
The Opponent operates a chain of big box department stores under the name TARGET. The Opponent’s stores have been colloquially referred to as Targét (or Tarjay) - pronounced with a fake French accent - by consumers to suggest that they are shopping at a more upmarket “French boutique” rather than an affordable department store[1]. However, the Opponent itself had not used this version of its name, or sought to register it as a trade mark.
Target Australia Pty Ltd (“the Opponent”) opposed the registration on the basis that the use of the marks would mislead or deceive consumers, in breach of section 18(1)[2] of the Australian Consumer Law in the Competition and Consumer Act 2010 (Cth). Section 42(b) of the Trade Marks Act 1995 (Cth) provides a ground of opposition that the use of the trade marks would be “contrary to law”[3].
Registrar’s Decision
The Australian Registrar of Trade Marks confirmed that when considering if use of a trade mark would be contrary to law, that the Opponent is not restricted to relying upon its reputation of its own trade mark as “it is only necessary that the indicium relied upon by the Opponent has a reputation such that the indicium is associated in the public mind with the Opponent”. This proposition has been accepted many times by both the Courts and Commissioner of Trade Marks in New Zealand.
The fact that all use of “Targét” (or Tar Jay) had been by the public, and not the trader itself, did not discount such use from consideration of whether there was a reputation in that indicium.
Notwithstanding the complete absence of use of Targét or Tarjay by Target, the Registrar was satisfied “that this is strongly associated in the minds of the public with the Opponent”. Given such strong association, there was a “real danger” that use of TAR JAY by the Applicant could be likely to deceive or cause confusion.
As a defence, the Applicant argued that its use of TAR JAY would be seen to be a parody due to the inclusion of the other matter in the trade marks. The Registrar accepted that while parody is not an affirmative defence it can be a factor to be considered in the analysis of whether consumers are likely to be confused or deceived[4].
The Applicant’s position was that the other matter other than the words TAR JAY included in its trade marks was sufficiently prominent and well-known that it immediately counters the association in the public mind between the words TAR JAY and the Opponent. Therefore, such use is not likely to mislead or deceive.
The Registrar did not, on the facts, accept this argument as he did not agree that the strong association with the Opponent would be instantly dispelled due to the other matter in the trade marks and therefore the Applicant’s trade mark was not a successful parody.
The registration of the applications was refused.
Elena Szentivanyi - July 2015
[1] The Opponent’s evidence included that Tarjay had entered Urban Dictionary and various newspaper articles and internet extracts showing use of Targét or Tarjay as referring to Target.
[2] Section 18 is the same as section 52 of the now repealed Trade Practices Act 1974 (Cth) on which section 9 of the Fair Trading Act 1986 (NZ) is based.
[3] This section corresponds to section 17(1)(a) of the New Zealand Trade Marks Act 2003.
[4] The Registrar referred to: the United States Court of Appeals for the Seventh Circuit decision of Nike Inc v “Just Did It” Enterprises [1993] USCA7 1181; 6 F 3d 1225; 7th Cir 1993 at 1227-8.
