Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd

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TRADE MARKS ACT 1995



DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Target Australia Pty Ltd to registration of trade mark applications 1560291 and 1560295 (both in Classes 25 and 35) - TAR JAY and device - filed in the name of Catchoftheday.com.au Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Ian Horak of Counsel instructed by Phillips Ormonde & Fitzpatrick

Applicant: Ben Gardiner of Counsel instructed by Kligers

Decision:

2015 ATMO 54

s52 opposition: subpara 42(b) of the Act - Opponent informally referred to as TARJAY – parody discussed - Applicant's use of trade mark likely to mislead or deceive - oppositions established – registration of Trade Marks refused

Background

  1. In this matter Catchoftheday.com.au Pty Ltd (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade marks which appear below:

Application No:                1560291

Priority Date:  30 May 2013

Goods/Services:  Class 25: Clothing, footwear, headgear

Class 35: Advertising of baby, children’s and infants' products and services; retail sales of baby, children’s and infants' products including clothing, footwear and headgear, wholesale sales of baby, children’s and infants' products; online retail and wholesale ordering of baby, children’s30 and infants' products; advertising services; online marketing of products; retailing and merchandising services; presentation of goods on communication media for retail purposes; distribution of goods (agent, wholesale, representative services, by any means, not being transport services); production of home shopping programs (production of advertisements and commercials)

Trade Mark:  

Application No:                1560295

Priority Date:  30 May 2013

Goods/Services:  Class 25: Clothing, footwear and headgear

Class 35: Advertising of baby, children’s and infants' products and services, retail sales of baby, children’s and infants products including clothing, footwear and headgear, wholesale sales of baby, children’s and infants products; online retail and wholesale ordering of baby, children’s and infants' products including clothing, footwear and headgear

Trade Mark:  

  1. I will refer to the above collectively as ‘the Trade Marks’ and ‘the Goods and Services’.  Nothing in this decision turns on the differences in the above applications of the Goods and Services of the Applicant.

  2. The Trade Marks were examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 October 2013.

  3. On 24 December 2013, Target Australia Pty Ltd (‘the Opponent’) filed Notices of Intention to Oppose followed, on 23 January 2014, by its Statements of Grounds and Particulars alleging, inter alia:

    Section 42(b): Use of the Opposed Trade Mark would be contrary to law.

    Particulars: The Opponent's TARGET Trade Marks are well known in Australia in relation to clothing, footwear, headgear, advertising of babies', children's and infant's products and sales of such goods. The Opponent is a well known Australian retailer and has established a strong reputation in Australia over the past 40 years.

    It is well known that the Opponent's Trade Mark is frequently pronounced "TAR JAY" or "TAR JEY", as if the mark…

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Details
Case
[2015] ATMO 54
Decision Date

CaseChat Overview and Summary

Target Australia Pty Ltd (the Opponent) opposed applications by Catchoftheday.com.au Pty Ltd (the Applicant) to register two trade marks, being applications 1560291 and 1560295. The Opponent, a well-established retailer operating department stores under the trade mark TARGET since 1972, argued that the Applicant's proposed marks were deceptively similar to its own registered mark and would likely cause confusion among consumers. The dispute concerned the potential for consumer confusion arising from the use of the trade mark TARGET and its colloquial pronunciation.

The court was required to determine whether the Applicant's trade mark applications should be refused registration. This involved assessing whether the proposed marks were deceptively similar to the Opponent's registered trade mark TARGET, and whether the Opponent had established grounds for opposition, particularly in relation to the potential for confusion in the marketplace. A key aspect of the determination was the significance of the colloquial pronunciation of the Opponent's trade mark as "Tarjay" or "Targét" and its widespread recognition in Australia.

The court considered evidence demonstrating the extensive use and recognition of the TARGET trade mark by the Opponent, including its long history of operation, significant revenue, and broad store network. Crucially, the court acknowledged the evidence of the colloquial pronunciation of "TARGET" as "Tarjay" or "Targét," noting its inclusion in online dictionaries and its frequent appearance in media reports dating back to at least 1983. This widespread colloquial use, even if originating from an endearing term suggesting a higher quality than the brand's actual positioning, was found to be a significant factor in assessing the potential for deception or confusion. The court ultimately refused to register the Applicant's trade mark applications. The Opponent was awarded its costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The evidence filed by the parties is comprised of the following declarations:Opponent’s evidence in supportAnita Joy Brown, Trade Mark Attorney, made on 6 June 2014, with exhibit AJB - 1.Rodney Cruise, Manger of IP Organisers Pty Ltd, made on 6 June 2014, with exhibit RC-1.Carol Margaret Harrison, Legal Counsel of the Opponent, made on 9 June 2014 with exhibits CH-1 to CH-7 Ms Harrison’s declaration confirms that the Opponent:… operates a chain of department stores offering a range of women's, men's and children's clothing, footwear, accessories, baby and nursery items, homewares, electrical toys and other general merchandise under the trade mark TARGET in Australia.ln March 1973, the company became Target Australia Pty Ltd and in August 1985, the Myer Emporium Ltd and GJ Coles & Coy Limited merged, becoming Coles Myer Limited. In 1996, Fosseys and Target merged and in 1999 Fosseys stores were converted into Target stores.In late 2006, the group name changed to Coles Group Ltd after the divestment of Myer, and in November 2007, Target was acquired by Wesfarmers Ltd as part of Wesfarmers acquisition of the Coles Group Limited.As reported in Wesfarmers Ltd's 2013 annual report, Target has 183 Target stores and 125 Target Country stores and employs more than 24,000 people. For each of the financial years 2009-2013 it had an operating revenue of more than $3.7 billion dollars. Now produced and shown to me and marked Exhibit CH-2 are relevant pages from the Annual Report for 2013 of Wesfarmers Ltd. Concerning use of the trade mark TARGET by the Opponent, Ms Harrison says:The trade mark TARGET was first used by the Opponent's predecessor in title in Australia in 1972 and use of the mark has been continuous through all Australian States and Territories since that date. Ms Harrison states that the Opponent’s stores have been colloquially known by the Australian public as ‘Tarjay’ or ‘Targét’ stores:For several decades, the Opponent's stores have become colloquially referred to by way of a supposed French pronunciation of the word Target, pronounced 'TAR JAY' or ‘Targét’, where the second syllable is accented and the 'J' or 'G' is pronounced the same as in the French word GENDARME.The Opponent has always been positioned in the marketplace as a provider of great quality and great value goods, but never as a prestige vendor. I understand that this colloquial pronunciation developed from consumers, as an endearing term, suggesting that the Opponent is akin to an up-market French boutique, or that its goods are exclusive or prestigious. In reality this is not the case, as the Opponent's goods are well renowned in Australia as being very affordable. The colloquial pronunciation may reflect the unexpected quality and style of the products sold by the Opponent. The coinage ‘Tarjay’ or ‘Targét’ has received wide recognition. Ms Harrison states:The online dictionary added this term on 21 April 2008 defining it as an alternative pronunciation of the big-box store Target. Now produced and shown to me and marked Exhibit CH-s is a copy of the entry from the website >The term has also had use in the printed media. Ms Harrison exhibits examples of such usage:"Discount Darlings", The Sun-Herald, dated 2 September 1989;[3]"The Christmas party faithful", The Age, dated 16 December 1996 and republished on the website is the new chic", The Sunday Age, dated 15 October 2006;"How Stella keeps her groove", The Sunday Age, dated 11 February 2007;"I'm not really hugely into the elitist side of fashion", The Sun-Herald, dated 4 March 2007;"The Age Diary", The Age, dated 8 September 2009;"A halal welcome to Wilders beast", The Age, dated 22 February 2013; and"New logo, same old ...? Target and News Corp try a new script", BRW, 30 May2013.[3] I note, however, that media references to ‘Tar Jay’ in Australia date from at least as early as 1983: 15 May 1983, Sydney (Australia) Sun-Herald, “You can tell by the car....,” pg. 94, col. 6:Women behind the wheel of the BMW have Brooke Shields eyebrows, scared hair and baggy army trousers bought from Target, which they pronounce Tar-jay.

Decision

Reasons for decision

Subsection 55(1) of the Act provides:55Decision(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.Note:For limitations see section 6. I refuse to register trade mark applications 1560291 and 1560295 Having been successful in these matters the Opponent is entitled to its costs which I award against the Applicant at the scale set out in Schedule 8 to the Regulations.

Ratio Decidendi

Legal Principle Established

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