Many Australians colloquially refer to the department store Target as “Tar-Jay” (with a fake French accent), cheekily introducing an up-market French boutique association to Target’s affordable goods. Such association apparently dates back at least to media references in 1983. The word “Tarjay” entered UrbanDictionary.com in 2008: “Target Store said with a fake french accent to make it sound more upscale than it is.”
Would use of a trade mark by a third party to sell children’s clothing featuring “TARJAY” as the dominant element confuse consumers? Or would consumers know that it was a parody? These were precisely the questions considered by the Delegate of the Registrar of Trade Marks in Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54.
For those international readers, Target in Australia operates a chain of department stores offering clothing, footwear, accessories, homewares and other general merchandise. It is renowned for selling affordable goods. Although there have been many media and popular culture references to the pronunciation “Tarjay”, Target had not itself ever used “tarjay” and had no trade mark for “tarjay”. That all changed on the morning of 30 May 2014, when an article in the BRW Magazine reported that Target was to commence using “tar-jay”. The same afternoon, Catchoftheday.com.au applied for registration of the following trade marks:
Target opposed the registration of this Trade Mark, arguing that the use of the trade mark would be misleading and deceptive. The ground of opposition was that the use of the trade mark would be contrary to law, which is a ground for refusal of registration of a trade mark pursuant to section 42(b) of the Trade Marks Act 1995 (Cth). Target argued that since its TARGET trade marks were well-known and it was well-known that its trade mark is frequently pronounced “tar jay”, consumers were likely to be misled or deceived into believing that goods sold under the Trade Mark were sold by Target, or were associated or affiliated with target.
In response to Target’s opposition, CatchoftheDay.com.au ran a number of arguments:
- There was no evidence of deception or confusion apart from evidence of Target’s attorney or employee;
- Target has not used the trade mark “TAR JAY” itself; and
- the Trade Marks were a parody of Target and consumers would therefore not be misled or confused.
The Delegate’s decision
The Delegate rejected each argument and found that the Trade Marks would be likely to mislead consumers. Therefore, the Delegate refused to register the Trade Marks.
On the first argument, the Delegate found that there was no requirement to put on evidence of evidence of actual consumer confusion. The delegate referred to the decision in Taco Co v Taco Bell, in which the Full Court stated that evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive, but not essential.
On the second argument, while Target had not used “TAR JAY” itself, the Delegate found that prior use of “TAR JAY” as a trade mark was not determinative. It was only necessary that the indicium has a reputation such that the indicium is associated in the public mind with Target. The delegate found that TARGET had an undoubted reputation which amounted to notoriety, and the indicium “TAR JAY” was strongly associated in the minds of the public with Target.
Finally, the delegate also rejected the third “trade mark parody” argument. Unlike copyright law, there is no exception under trade mark law for parodies. Therefore, the defence relied upon by Catchoftheday.com.au was that, since the TARJAY mark was obviously a parody, consumers would not be misled or deceived by the allusion or reference to Target.
The delegate first considered the nature of parody, citing the earlier decision of the same delegate in Southcorp Ltd v Morris McKeeman [2006] ATMO 48 (an application for the trade mark “Tenfolds Grunge”). In that decision, the delegate had stated that to be a successful parody, the parody must be of a nature that it is immediately and principally recognizable as both parody and distinct from the original and not imply a connection or endorsement by the original owner. The delegate referred to the US parody decision in Nike Inc v “Just Did It’’ Enterprises [1993] USCA7 1181; 6 F 3d 1225 where the Court stated that parody is not an affirmative defence, but an additional factor in the analysis. “If the defendant employs a successful parody, the customer would not be confused but amused…”
The delegate rejected Catchoftheday.com.au’s argument that the other words appearing with TARJAY (“by Mumgo”) countered the association in the public mind between “TARJAY” and Target:
- the parody only works if it is immediately apparent and instantly dispels the strong association between the indicium and the merchant.
- the other words were not prominent.
- since Catchoftheday.com.au accepted that without the additional words, the use of TARJAY would be likely to mislead or deceive, the other words purported to act as a disclaimer.
- by the time the parody is apprehended, the putative purchaser is already on the Applicant’s website – the disclaimer came too late.
- Catchoftheday.com.au did not show any reputation in “mumgo”.
- the public might not know that there is no link between Catchoftheday.com.au and Target.
Parodies and Australian trade mark law
The consideration of parody is the most interesting aspect of the decision to us, since decisions on trade mark parodies under Australian law are sparse. While the questions to be asked remind us of some of the other “parody” trade mark decisions that we have considered on this blog (such as “Starbucks v Charbucks”, “Snaks 5th Avenchew v Saks 5th Avenue”, Lady GaGa v Lady Goo Goo), these are all overseas cases.
There are a few Australian parody decisions under the law of misleading and deceptive conduct or passing off, and even fewer Australian court decisions under the law of trade marks. In Coca-Cola Co v All-Fect Distributing Co, Merkel J considered that the use of a coca cola bottle shape for confectionery was not trade mark infringement. Merkel J noted that “the cola bottle confectionery is presented as a fun product “perhaps cheekily” imitating the contour bottle but not as representing any other connection with it.” His Honour noted that where an imitation product is created as a parody, it may fall short of representing a trade or commercial connection. (The decision that the bottle shape did not connote origin was overturned on appeal, but the Full Court’s decision did not expressly discuss parodies).
The TARJAY case highlights the fine and difficult line that parodies must tread. In Nike v “Just Did it”, the Court stated: “A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that is not the original and is instead a parody”. That is, a successful parody must both draw an association with the original, while as the same time also dispelling the notion that there is an actual connection between the parody mark and the original trade mark owner.
