Brand owners may have grounds to oppose the registration of a parody trade mark in Australia on the basis that the use of the parody mark would lead to deception or confusion in the marketplace. There is, however, no general prohibition against parodies per se. If consumers would not be confused, but instead conclude that a name has been cleverly used as a clear parody, the brand owner is unlikely to have grounds for successfully opposing the registration of the mark.
For example, the owners of the iconic “Penfolds Grange” brand were unsuccessful in opposing a trade mark application for “Tenfolds Grunge” (Southcorp Limited v Morris McKeeman [2006] ATMO 48). The Hearing Officer in this case concluded that the “Tenfolds Grunge” mark would be seen as an obvious parody and, as such, deception or confusion was unlikely. The Hearing Officer considered that there was no doubt that “Tenfolds Grunge” made a play on, or reference to, the “Penfolds Grange” mark; however, the fact that a mark might “ape, mimic or parody” another mark does not in itself disbar it from registration.
Similarly, the Australian Post Corporation (the “POST OFFICE”) was unsuccessful in opposing a trade mark application for “POST WITHOUT THE OFFICE” (Australian Postal Corporation v Sendle Pty Ltd [2017] ATMO 42), with the Hearing Officer concluding that consumers would be sufficiently careful and astute so as not to be confused or deceived by the use of this mark.
On the other hand, Hasbro successfully opposed a trade mark application for “LIVE-OPOLY” covering toys/games and entertainment services on the basis of Hasbro’s rights in the “MONOPOLY” brand, the “world’s most popular board game” (Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43). The Hearing Officer in this case held that the inclusion of the “OPOLY” element in the “LIVE-OPOLY” mark would lead to potential purchasers concluding that there was some connection with the “MONOPOLY” game, when this was not the case.
Also, Target Australia successfully opposed a trade mark application for marks incorporating “TARJAY” on the basis that “TARGET” stores have been colloquially referred to over the years by way of a French sounding pronunciation i.e. “TARJAY” or “TARGÉT” (Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54). The Applicant argued that it chose to apply to register the “TARJAY” marks as part of its marketing strategy to be “cheeky” and as a means of cleverly and satirically referencing Target; however, the Hearing Officer concluded that a parody only works if it is immediately apparent and, in this case, shoppers would be likely to be misled.
Take home message: A brand owner may have grounds to oppose the registration of a parody trade mark in Australia if the mark is not clearly a parody mark. A parody mark must be of a nature that is immediately recognisable as a parody and not imply some endorsement by, or commercial connection with, the brand owner that would lead to deception or confusion in the marketplace.
In addition to opposing the registration of a parody mark, a brand owner may have grounds for objecting to the use of a parody mark in Australia on the basis that such use constitutes misleading and deceptive conduct in contravention of the Competition and Consumer Act 2010 (Cth) and/or the common law tort of “passing off”.
