Missed the Target: Registration of Parody Trade Marks in Australia

As this Kat is incredibly 'hip' and 'cool', he very much likes to keep his paws on the pulse of today's youth's vernacular. This original and often playful use of language illustrates current attitudes towards some aspects of modern society, and no other country where this Kat has lived has done it quite so well as Australia. A famous example of a unique expression for a company is Macca's (McDonald's), which the fast-food company even appropriated as its own name due to its wide-spread use with the general populous. With this in mind, could a company have a claim in a mark that acts similarly as Macca's, having never used it within the relevant jurisdiction, and if so, could a registrant have a defence in parody against this claim?

The case of Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54, decided in June, aimed to answer this question in the fair land of Australia. At issue in the case was an application for the mark "TAR JAY" by Catchoftheday, encompassing a wide array of goods and services in classes 25 and 35, mainly focusing on those relating to clothing and the sale thereof.

Target, a chain of popular department stores that sell all manner of goods, including clothes, at affordable prices, has had a presence in the country since the 1920s, and some Australians have taken to calling the stores "Tarjay" (or "Targét"), changing the pronunciation of the name to a more French-like one, suggesting that Target is akin to a high-end French boutique selling up-scale, high-priced goods. The use of the colloquial pronunciation is quite prominent in Australia, and even this Kat can attest to having attempted to utter this very name during his time Down Under.

The Registrar of Trade Marks had to decide whether the mark would be contrary to law under the Australian Trade Marks Act 1995, specifically whether its registration amounted to misleading or deceptive conduct under section 18 of the Australian Consumer Law (enacted through the Competition and Consumer Act 2010). This requires identifying the relevant section (or sections) of the public (which may be the public at large) by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive, taking into account all segments of that section irrespective of their intelligence, education, vocation or other socio-economic factors. Secondly, any evidence to actual confusion can be submitted (and can be persuasive to the court), but it is not deemed to be essential for this assessment. And finally, it has to be inquired as to why a proven misconception has arisen, should any evidence be given on actual confusion.

Iain Thompson, the Hearing Officer in the case, summarized the question deducted from prior case law as to the applicability of section 18 to possible misleading or deceptive conduct: "...the question whether there is a likelihood [that people will be mislead or deceived] is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of [deception]". He further added that this is an assessment made by the Court in relation to "...a reasonable likelihood that a substantial number of persons will be misled or deceived if the applicant for registration uses its mark normally and fairly in respect all goods and services covered by the proposed registration".

Little known fact:
Kats always hit their Target

The Applicant argued that, as they are an online retailer, the mark would not be used in respect to all goods and services covered by the mark [this Kat notes that the name 'Tarjay' has been presented as a legitimate business tactic by Target in early 2014]. Mr Thompson did not accept this argument, as Target have operated an online store for some time before the application was lodged. The Opponent also does not have to rely on the reputation of any previous marks (as they relied on their registration for the mark "TARGET"), but all that is needed to be proven is that the Opponent's reputation is such that it leads to the public to believe the applied for mark is associated with their business, even if the mark or a colloquial term is used by the public only and not the business themselves.

Due to Target's large presence in Australia (and in the sale of clothes and similar articles), and turnover in the billions of dollars per year, Mr Thompson accepted that they indeed do have an undoubted reputation, especially in relation to the mark "TARGET" in the minds of the relevant public. He further concluded that evidence presented indicated highly that the term "Tarjay" or "Targét" had a strong association with the brand in the minds of that public.

What made this case curious was the defence asserted by the Applicant, stating that the registration was done with the mindset of being 'cheeky', parodying the Target brand. This, however, has to still be done so the goods or services are distinct from the original brand, yet retain a slight satirical connection to those goods or services [a narrow line to tread, this Kat ponders]. Mr Thompson saw that this was, based on prior discussion in precedent, a factual assessment for each individual case, and concluded that a person shopping on the Applicant's website and seeing the mark would be mislead into believing the brand is associated with Target. Even with the differences in the mark, i.e. the different spelling and the inclusion of a figurative mark depicting a baby an the word "Mumgo", it was not enough to disassociate the mark with the Opponent. The registration of the mark was therefore refused.

The case illustrates the difficulty in registering satirical or parody marks, especially when they relate to big, well-known brands. How one can create an effective, original parody of a brand, yet still remain separate from it is indeed incredibly difficult, and it seems that even with distinct features and spelling in the applied for mark it can still lead to rejection. Nevertheless the case was quite interesting, and reminded this Kat of his time Down Under.