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The Trade Mark Games: Mocking (Tar) Jay

On 7 July 2015, in a Trade Marks Office decision, Target Australia Pty Ltd (“Target”) has prevented Catchoftheday.com.au Pty Ltd (“Catchoftheday”) from successfully registering trade marks bearing the term “TAR JAY”. 

Target’s adoption of the -now Australian colloquial- term “Tarjay”was intended to playfully mock the retail giant in an ironic fashion by insinuating that Target’s goods were upscale, expensive and exclusive when in fact Target’s items are inexpensive and they cater to the common public.. Catchoftheday sought to ride the coattails of the tongue-in cheek nickname by applying for the composite marks which are seen below: 

Hearing Officer Iain Thompson supported Target’s opposition argument that the use of the marks would be contrary to law (Section 42(b) of Trade Marks Act 1995 (Cth)) as Catchofthedays’s use of the term “TAR JAY” would be misleading and deceptive under Australian Consumer Law 2010 (Cth).

In reaching this decision it was noted that:

  •  the TARGET trade mark is well known in Australia;
  •  even though Target has not used the word “TAR JAY” as a trade mark in Australia, this factor was not a decisive one given that the term “Tarjay” is so strongly associated with Target by the general public; and
  • the appearance of other elements in the marks such as the term “mumgo” was inadequate to displace the public’s strong association with Target.

This decision indicates it may be a costly mistake to attempt to trade mark nicknames of companies which are well recognised in the public, even for satirical purposes. It also serves as a reminder for brand owners to be more prudent in protecting their brands as even a nickname may not be safe from appropriation in “The Trade Mark Games”.

To view the decision: http://www.austlii.edu.au/au/cases/cth/ATMO/2015/54.html

Amanda Ly 

7 August 2015