Parody Marks, Reputation and ‘Misleading and Deceptive Conduct’ in Australia

In May 2013, Catchoftheday.com.au Pty Ltd applied to register the following marks:

Target Australia Pty Ltd (Target), a well known Australian retailer, opposed registration of the marks. It argued that under section 42(b) of the Trade Marks Act 1995 (Cth), use of the Trade Marks would be contrary to law.

Target’s TARGET mark is often pronounced as ‘tar jay’ by the Australian public, as if the mark were given a French pronunciation. The reason offered in the decision is that this has been used as an endearing term as if Target is “akin to an up-market French boutique, or that its goods are exclusive or prestigious”, whereas in reality the goods sold by Target are very affordable. The reality is that the pronunciation has arisen in a typically Australian way, it is a joke that everyone immediately understands, without necessarily ever thinking too much about it.

Target has never registered the mark TAR JAY, and Catchoftheday.com.au argued that this was one reason why Catchoftheday.com.au should be allowed to register the marks. In comparison, McDonalds registered the Australian nickname mark MACCA’S and has actively used it to promote its restaurant chain.

The Hearings Officer held that Target did not need to show a reputation in the TAR JAY mark; it only needed to show that it had such a reputation that the TAR JAY mark is associated in the public mind with Target. Therefore, although Target did not have a registered mark for TAR JAY, it was able to show that it had such a reputation that the TAR JAY mark was likely to mislead and deceive.

Catchoftheday.com.au stated that it chose to register the TAR JAY marks as part of its marketing strategy to be ‘cheeky’, and to cleverly and satirically reference Target. Catchoftheday.com.au argued that its intention was not to mislead and deceive consumers, but rather to parody the TARGET mark.

The Hearings Officer held that a parody is not a defence, but rather another factor in the analysis. A parody must be of such a nature that it is immediately and principally recognisable as both a parody and distinct from the original. It must not imply a connection with the original. For a parody to be successful, the consumer must be amused rather than confused.

The Hearings Officer concluded that the TAR JAY marks were likely to mislead or deceive and would, therefore, be contrary to law, so they should not be registered.

What we have learned from this case is that it is a dangerous game to register a trade mark which parodies another’s trade mark whether colloquial or official.