Australians have a penchant for jocular nicknames. And we're
not just talking on the footy field. Aussie jargon even stretches
to the corporate space. Take these for examples:
petrol stations are 'servos';
the Salvation Army is the 'Salvos'.
For the most part, businesses have embraced these affectionate
monikers given by the public. Some have even incorporated them as
part of their cultural association with the Australian public.
'Fair dinkum', McDonalds even formally named some of their
restaurants 'Maccas'. These nicknames show a strong
association with the brand that it is often accompanied by the
goodwill of the business.
Recent cases, right on target
A recent decision considered the use of a trade mark as a parody
in Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd 
ATMO 54. In this instance, it was Target's affiliation with its
nickname 'Tar Jay' that prevailed in its trade mark battle
with online retailer Catchoftheday.com.au. For international
readers, Target in Australia operates a chain of department stores
offering clothing, footwear, accessories and homewares. Target is
recognised for selling affordable goods, much like Walmart in the
US or Tesco in the UK.
Let's have a look at what happened when another retailer
applied to register 'Tar Jay':
Mumgo Pty Ltd (a subsidiary of CatchOfTheDay) operates an
online retail store via mumgo.com.au that sells baby
and children's goods.
Mumgo applied for the registration of the composite marks, in
reference to its own brand of baby clothing, as follows:
many people refer to Target colloquially as 'tar-jhey or
'tar-jay', a tongue-in-cheek French pronunciation which
entered the urban slang in the 1980s to 'make it more upscale
than it is'1.
in defending its registration, CatchOfTheDay conceded the trade
mark was a 'cheeky' reference to Target but insisted it to
be a parody and not likely to mislead or deceive. Further, Target
had never 'embraced or used' the 'Tar Jay' nickname
as McDonalds had with 'Maccas'.
the Hearing Officer held that use of the trade mark would
indeed be confusing as the Target mark and its nickname was very
well-known to the public. The fact that Target had itself not used
the nickname was not a decisive factor.
A para on parody
The case discussed the concept of a parody and held that each
case should be considered individually on its facts. Business
owners should be aware that claiming their trade mark is a parody
is not, on its own, a defence against infringement.
The Hearing Officer stated that the opposed trade mark should be
instantly 'recognisable as both a parody and
distinct from the original'. Here are 2 guiding tips:
the mark must not just be a poor imitation but should be one of
amusement to the customer instantly recognising it as a
the mark should not confuse the public into thinking that there
is a strong association between the original owner and the trade
mark and hence likely to deceive and mislead.
This decision indicates it may be costly to attempt to trade
mark nicknames of companies which are well recognised in the
public, even for parody purposes. It is also a prompt for brand
owners to be prudent in protecting their brands as even an
affectionate nickname may not be safe from misuse.
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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