The case of Target Australia Pty Ltd v
Catchoftheday.com.au Pty Ltd
When online retail sales company Catchoftheday.com.au Pty Ltd
applied to register two logos incorporating TAR JAY as trade marks
in 2013 (depicted below), Target opposed registration. Target
claimed that use of the logos would be likely to deceive or confuse
customers, arguing that it had a reputation in the name
'Tarjay' (or 'Targét') because Australian
consumers have long recognised this as an endearing alternative
name for Target stores. Several examples of third parties using
this name in printed media and online were cited in evidence.
The Delegate of the Registrar of Trade Marks assessing the
opposition found that 'Tarjay' (or 'Targét')
is 'strongly associated in the mind of the public with
[Target]' and that 'the evidence strongly supports such a
conclusion and, indeed, suggests that the expression has entered
language'. Significantly, the Delegate considered that prior
use of a trade mark was not determinative in assessing reputation
in a trade mark. In this case, Target had not used 'Tarjay'
as a trade mark, however, this nickname was associated with Target
through use by third parties.
The Delegate concluded that use of the TAR JAY logos by
Catchoftheday would be misleading or deceptive and the applications
were refused. In reaching this conclusion, the Delegate rejected
Catchoftheday's proposition that customers would view the logos
simply as parody or satire. Instead, according to the Delegate, a
customer who sees the logos while shopping on Catchoftheday's
website 'will be misled into believing that it is either
shopping on [Target's] website, or on a website operating under
the auspices of [Target], or with its sanction or license, or that
there is a link between [Catchoftheday] and [Target].' Target
has also now filed an application to register TAR-JEY as a trade
Nicknames associated with a business/product can be valuable
marketing assets. Consequently, if a nickname becomes associated
with a particular business or product, it may be worth considering
filing applications to register the nickname as a trade mark, in
addition to registering your traditional brand names.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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