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 mark.
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.
