Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd - [2015] ATMO 54

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

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:

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.
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.
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 were given a French pronunciation. Because of the Opponent's reputation in Australia in the mark pronounced "TARJAY" or "TARJEY" consumers are likely to be misled or deceived into believing that goods sold under the Trade Mark applied for by the Applicant are those of the Opponent or are somehow associated or affiliated with the Opponent in breach of Section 18 of the Australian Consumer Law 2010, and therefore is contrary to law and contrary to sub-section 42(b) of the Act.
Thereafter, the Applicant filed Notices of Intention to Defend.
Both parties have filed evidence as allowed by the Trade Mark Regulations 1995 (‘the Regulations’) as is further discussed below.
As a delegate of the Registrar of Trade Marks I heard the submissions of the parties in Melbourne on 29 May 2015. The Opponent was represented by Ian Horak of Counsel instructed by Phillips Ormonde & Fitzpatrick and the Applicant was represented by Ben Gardiner of Counsel instructed by Kligers.

Onus & Relevant Date

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].
The relevant date at which the grounds must be considered is the filing date of the Trade Mark.[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

The evidence filed by the parties is comprised of the following declarations:
Opponent’s evidence in support
Anita 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

Applicant’s evidence in answer
James Kirkham, Legal Counsel for Applicant, made on 10 September 2014.

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 May
2013.
[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.
The word ‘Tarjay’ (referring to the Opponent’s stores) has also had use on the Internet. Ms Harrison declares:
The word TARJAY has been consistently used to refer to the Opponent's department store on blogs and online forums.
Ms Harrison provides some 18 examples of references to ‘Tarjay’ in online blogs.
Concerning the Trade Marks, Ms Harrison states:
On 30 May 2013, Catchoftheday.com.au Pty Ltd filed trade mark applications for logo marks TAR JAY BY MUMGO.COM.AU. These were given Australian trade mark application numbers 1560291 and 1560295. On the same day, an article appeared in BRW magazine reporting the Opponent was to commence using the trade mark Tar-jay as part of its marketing strategy. A copy of this article forms part of Exhibit CH-6.
The declarations by Ms Brown and Mr Cruise corroborate the observations of Ms Harrison detailed above at [13] to [17].
Mr Kirkham explains that the Applicant:
… has, since about October 2006, conducted an online retail sales business under the name Catchoftheday, which is now one of Australia's largest online retail sales businesses, accessible at the URLs and <m.catchoftheday.com.au>, as well as mobile and tablet applications available through Apple, lnc.'s 'App Store' and Google's Android app store.
The Applicant currently employs in excess of 550 people.
The Applicant has, since about October 2006, marketed and promoted its business regularly through various forms of media throughout Australia, including television (with appearances on Today Tonight, A Current Affair, ABC News and the Footy Show), radio, print media (with appearances in The Australian, The Australian Financial Review and the major daily newspapers in each State and Territory throughout Australia), sponsorship, search engine optimisation techniques, online banners and through email marketing campaigns.
The Applicant is a subsidiary of the Catch Group Pty Ltd ("Catch Group"), the parent company of a group which also operates other successful online business including Grocery Run, Scoopon, Mumgo and Eat Now. Across all of its businesses, the Catch Group has approximately 3.67 million unique registered members.
Concerning the trade mark MUMGO Mr Kirham states:
In early 2012, the Applicant conceived of a new online retailing business targeted at parents looking to purchase baby and children's goods and services under or by reference to the trade mark "MUMGO".
On 17 February 2012, the Applicant filed a trade mark application for the mark "MUMGO" in class 3 5, which mark bears trade mark registration no. 1475316 ("Word Mark") and is registered in connection with the advertising and retail sale of baby, infant and children's goods and services.
On 1 June 2012, the Applicant acquired Ladybub Pty Ltd (subsequently renamed Mumgo Pty Ltd), which now operates the Applicant's MUMGO business from a website accessible at the URLs < and <m.mumgo.com.au> ("the MUMGO Website"), as well as mobile and tablet applications available through Apple, Inc.'s 'App Store' and Google's Android app store.
Regarding the reputation of the MUMGO trade mark Mr Kirkham says:
Not including its own cross-promotional activities (which include EDMs), the Applicant has spent approximately $353,400.00 marketing and promoting the MUMGO Website since mid-2012 when it went live.
The Applicant has derived revenue of approximately $22,378,582.00 in relation to its MUMGO business alone from mid-2012 to the end of June 2014.
As a result of the activity above, the Applicant, the MUMGO business and the MUMGO Trade Marks are very well known to millions of Australian consumers.
Turning to the Applicant’s adoption of the Trade Marks, Mr Kirkham states:
I am aware that for many years some Australians have sometimes pronounced the word TARGET as "tar-ZHAY" when referring to the Opponent. I understand that this is done jokingly - as if to infer that the Opponent's business is an exclusive French boutique when it is in fact well known as a mass-market discount department store.
My understanding is that prior to the Applicant filing its trade mark applications, the Opponent has never embraced or used "tar-ZHAY". It had never promoted itself by reference to this name or used it as a trade mark in any way.
I am aware of other businesses that have adopted and embraced nicknames used by their customers. For example, the well-known fast food business McDonalds has for several decades been known to many Australians simply as MACCAS. McD Asia Pacific LLC embraced this nickname and sought registration of the mark MACCA'S (Trade Mark No 635623) on 21 July 1994 and commenced using the trade mark "MACCA'S" in Australia to promote its goods and services.
The Opponent has in excess of 250 registered trade marks in Australia, representing one of Australia's largest trade mark portfolios, yet it did not consider TAR-ZHAY, or any variation of that mark, worthy of protection until after the Applicant sought to register the Opposed Marks. The Opponent now seeks registration of the word TARJEY (Trade Mark Application 1560933).
Mr Kirkham continues:
The Opposed Marks, depicted below, are highly stylised and incorporate a prominent representation of a child with vegemite on his face (reflective of the pre-fix of the Applicant's Opposed Marks - "tar") in addition to incorporating the Word Mark (MUMGO) and the Applicant's registered dragonfly logo.
The Applicant chose to register the Opposed Marks as part of its marketing strategy to be "cheeky" and as a means of cleverly and satirically referencing the Opponent. In choosing the Opposed Marks, there was not (and is not) any intention to mislead or deceive consumers. Quite the opposite. The Applicant has always sought to very clearly distinguish itself from traditional bricks and mortar retailers and would never have selected a mark which it thought carried any likelihood of consumers being misled.
The Applicant was aware that no steps had been taken by the Opponent to seek to register TAR-ZHAY or any similar name and on this basis, commenced designing a cheeky irreverent type mark that would be both instantly recognisable as indicating the Applicant as the trade origin for any goods and services sold under the mark, but simultaneously making fun of the Opponent.
I do not believe, and from my understanding no-one else within the Catch Group believes, that there is any likelihood of confusion in the minds of consumers that the Applicant's goods and services sold and promoted under the Opposed Marks could have any connection whatsoever with the Applicant. It is well known that the Opponent and Applicant are fierce competitors in the Australian retail market and that the Opponent fiercely protects its brand.

Subparagraph 42(b)

Subparagraph 42(b) of the Act provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
If use of a trade mark is alleged to be contrary to law in proceedings before the Registrar, the Registrar (or her delegate) is obliged to consider whether this be so. In Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24; [2001] AIPC 91-724 (‘Advantage’) Madgwick J said at [26] and [28]:
However, in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase "if its use would be contrary to law" should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that "contrary to law" in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are "clear cut", is not sustainable. As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re Application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth). I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation [1977] HCA 62; (1977) 138 CLR 1, of a power to remove a trade mark from the Register.
[…]
I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar's decision to this Court where any error of the Registrar may be corrected.
The Opponent here alleges that the use of the Trade Marks by the Applicant would contravene section 18 (‘Section 18’) of the Australian Consumer Law (‘the ACL’) in the Competition and Consumer Act 2010 [‘the CCA’].
Section 18 of the ACL is the same as section 52 of the now repealed Trade Practices Act 1974 (‘the TPA’) and decisions of the Courts which applied to section 52 of the TPA apply equally to Section 18 of the ACL.
Section 18 of the ACL provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in Part 3-1 (which is about unfair practices) limits by implication subsection (1).
At the outset I observe that Mr Gardiner (for the Applicant) submitted that:
All of the Opponent’s evidence in relation to possible deception or confusion is from its attorney or employee. This is insufficient for the purposes of s 42(b). In Cunliffe Management Pty Ltd v Rocket Trademarks Pty Ltd,[4] Hearing Officer McDonagh said, in relation to s 42(b):
For this ground to be established, it must be shown that the use of the trade would, not could, be contrary to law. Evidence is required to support assertions, such evidence needs to be more than evidence from an opponent's legal representatives and employees: Red Hat Inc v Martinek (2002) 56 IPR 292, Stepsam Investments Pty Ltd v Time Warner Entertainment Co LP [2002] AIPC 91-830.
[4] [2004] ATMO 28

However, I consider the remarks of the Registrar’s delegates in the cited decisions to be directed to the relative strength of the evidence before them and the corroborative force of the exhibit evidence. In instances such as that before me where there is no evidence of use of the indicia upon which the Opponent relies by either party, it is unrealistic to insist upon statements from third parties as to whether they have been, or are likely to be, misled or deceived. In the words of Franki, Deane and Fitzgerald JJ. in Taco Co of Australia Inc v Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177; (1982) 2 TPR 48; [1982] ATPR 40-303:
First, it is necessary to identify the relevant section (or sections) of the public (which may be the public at large) by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive falls to be tested (Weitmann v. Katies Ltd. (1977) 29 F.L.R. 336, per Franki J. at pp. 339-340, cited with approval by Bowen C.J. and Franki J. in Paula Brock v. The Terrace Times Pty. Ltd. [1982] FCA 10; (1982) A.T.P.R. 40-267 at p. 43,412).
Second, once the relevant section of the public is established, the matter is to be considered by reference to all who come within it, "including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations": Puxu Pty. Ltd. v. Parkdale Custom Built Furniture Pty. Ltd. ((1980) [1980] FCA 73; 31 A.L.R. 73, per Lockhart J. at p. 93); see also World Series Cricket v. Parish (supra), per Brennan J. at p. 203.
Thirdly, evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself conclusively establish that conduct is misleading or deceptive or likely to mislead or deceive. The Court must determine that question for itself. The test is objective. (See, generally, Annand & Thompson Pty. Ltd. v. Trade Practices Commission [1979] FCA 36; (1979) 25 A.L.R. 91, per Franki J. at p. 102; Sterling v. Trade Practices Commission [1981] FCA 54; (1981) 35 A.L.R. 59 per Franki J. (with whom Northrop J. agreed) at p. 66 and per Keely J. at p. 69; Snoid v. Handley, supra, per the Court (Bowen C.J., Northrop and Morling JJ.); and Brock v. Terrace Times, supra, per Bowen C.J. and Franki J.).
Finally, it is necessary to inquire why proven misconception has arisen (Hornsby Building Information Centre v. Sydney Building Information Centre supra, at p. 228). The fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of misleading or deceptive conduct on the part of the respondent.
The final point in the quoted passage is obviously qualified by the third point.
There is also a suggestion in Mr Kirkham’s evidence that the Opponent had not used or registered the words TAR JAY as a trade mark and thus their use was open to another trader. I agree that it was not obvious that the Opponent had used the words TAR JAY as a ‘trade mark’ which is defined by section 17 of the Act:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
It is apparent that as the Opponent did not use the words TAR JAY to distinguish goods or services in the course of trade, there was no use of the term TAR JAY as a trade mark by the Opponent. However, I note that the Opponent had announced its intention to do so earlier on the same day that the applications to register the Trade Marks were filed by the Applicant. Moreover, as prior use of the indicium TAR JAY as trade marks by the Opponent is not determinative, that is not the end of the matter and I will return to this issue shortly.
In Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; [1990] ATPR 40-994; (1989) 16 IPR 431 Hill J said at [41]:
While there remain many areas of difficulty in the application of s.52 of the Act to the facts of a decided case there have been established a number of propositions, relevant to the determination of the present case, which are no longer in dispute:
1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell at 202.
2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.
3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.
4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a "substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant's use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question." (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.
6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.
I am to consider all of the uses that the Applicant might make of the Trade Marks within the scope of any registration that might issue. To paraphrase the words of Mason J in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43;(1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood [that people will be mislead or deceived] is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of [deception]."
Additionally, to paraphrase French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411at [88]:
Is the Court satisfied that there is a reasonable likelihood that a substantial number of persons will be misled or deceived if the applicant for registration uses its mark normally and fairly in respect all goods and services covered by the proposed registration.
Thus while Mr Kirkham suggests that the Applicant only sells or provides the Goods and Services over the Internet, the Goods and Services include retail of goods by any means which includes through shops or department stores. In any event, Ms Harrison states that the Opponent has in fact also sold over the Internet since 2011 – prior to the relevant date.
Further, the Opponent need not rely on the reputation of a trade mark: it is only necessary that the indicium relied upon by the Opponent has a reputation such that the indicium is associated in the public mind with the Opponent: Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 23 FCR 553; (1989) 87 ALR 14; (1989) 14 IPR 398; [1989] ATPR 40-948; [1989] AIPC 39-044; and see QANTAS Airways Ltd v Danniel Amadio [2011] ATMO 84. Nor is this forum confined to considering only trade marks – when an indicium is associated with a trader because of usage by the public rather than the trader, a Registrar’s delegate must consider the argument put by an opponent: Advantage.
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) Kenny J said at [81]:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[5] said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[5] [2000] FCA 1587; (2000) 50 IPR 1.

As regards the assessment of reputation, in McCormick Kenny J quotes a passage from my decision in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
Kenny J continued at [86]:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
Here the Opponent has established that it has 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 – that is under or in relation to the trade mark TARGET. The Opponent estimates that 56 percent of its total sales revenue is derived from the sales of clothing, including baby’s and children’s clothing and sales of baby’s and children’s products.
Whether assessed in terms of the test in Hugo Boss or evaluated in terms of the turnover test mentioned by Kenny J at [86] of McCormick, the Opponent’s TARGET trade mark has an undoubted reputation which amounts to a notoriety.
As regards the indicium ‘Tarjay’ or ‘Targét’, I am satisfied that this is strongly associated in the mind of the public with the Opponent; the evidence strongly supports such a conclusion and, indeed, suggests that the expression has entered language.
Mr Kirkham, however, states that the Trade Marks were devised by the Applicant as part of its marketing strategy to be "cheeky" and as a means of cleverly and satirically referencing the Opponent. In effect Mr Kirkham asserts that the Trade Marks are a parody.
The approach of the Courts in cases where parody is claimed is to consider each instance on its facts.
In Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 14 IPR 398; 87 ALR 14, Burchett J stated at IPR 430:
The suggestion in the present case, as his Honour found the facts, was of an endorsement of the appellant’s shoes by Mr Hogan’s almost universally appreciated Crocodile Dundee personality, and through that of an association between Mr Hogan and the product so endorsed. The television audience would accordingly hold the shoes in higher regard. On the evidence, some evocation of Crocodile Dundee was admittedly both intended and achieved; I do not see any basis for disturbing Gummow J’s view of its true effect. That view owed much to the special nature and circumstances of Mr Hogan’s portrayal of a character really indistinguishable from his own public image. It is, too, consistent with the concession made by the advertisement’s author, as noted by his Honour (ALR at 410; IPR at 232), "that the intention of the advertisement was that viewers should get an impression of Crocodile Dundee in connection with Grosby shoes". I reject the appellant’s attempt to avoid, by miscalling its advertisement a parody, the consequences of representing Crocodile Dundee (actually addressed in the advertisement by his name Mick) as endorsing its shoes. The essence of Mr Hogan’s performance is parody, which can hardly itself be parodied, at least by what would be more accurately described as a parasitic copy -- parasitic because its vitality is drawn entirely from the audience’s memory of the original. As well might an attempt to imitate "HMS Pinafore" be called a parody of Gilbert and Sullivan!
In Southcorp Ltd v Morris McKeeman [2006] ATMO 48, after quoting the above, I stated at [22]:
… the parody, if it be such, must be of a nature that it is immediately and principally recognizable as both parody and distinct from the original and not imply some endorsement by the its owner, or a connection with the original or its owner such that the goods would be seen by the public as originating from the owner of the original.
In Coca-Cola Company v All-Fect Distributors Ltd (T/as Millers Distributing Company) (1998) 43 IPR 47 Merkel J observed
An analogous commercial use, which has also been held to fall short of representing a trade or commercial connection, can arise when an imitation product is created as a parody. In Nike Inc v "Just Did It'’ Enterprises [1993] USCA7 1181; 6 F 3d 1225 (7th Cir 1993 at 1227–8 the United States Court of Appeals for the Seventh Circuit said:
Parodies date back as far as Greek antiquity ... "Parody or satire, as we understand it, is when one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original'’ ... But parodies have a legal hurdle to overcome. Federal law prohibits copies or imitations that confuse consumers ... This protects trademarks as a form of intellectual property ... and guards against confusion, deception or mistake by the consuming public ... Whether a customer is confused is the ultimate question. If the defendant employs a successful parody, the customer would not be confused, but amused ... Thus, we agree with the district court that parody is not an affirmative defence but an additional factor in the analysis. "[T]he keystone of parody is imitation. It is hard to imagine, for example, a successful parody of Time magazine that did not reproduce Time’s trade marked red border. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody, but also vulnerable under trade mark law, since the customer will be confused'’ ... Thus the parody has to be a take-off, not a rip-off.
Merkel J continued with the caution that:
However, as was said by Lehane J in McIlhenny (citing authority at 195–6) many cases are illustrative of circumstances:
... where in the public mind the association between a particular image and a particular source is so strong that the evocation of the image in the get-up or marketing of a wide range of disparate goods or services will lead people to conclude that there is a commercial connection of some kind between the goods or services and the originator (or "owner'’) of the image.
The authorities demonstrate that in the final analysis each case will turn on its own facts.
The Applicant’s position appears to be that the matter other than the words TAR JAY appearing in small print in the Trade Marks is sufficiently prominent and well-known that it immediately counters the association in the public mind between the words TAR JAY and the Opponent. Hence the proposition is that the use of the Trade Marks will only be viewed as parody or satire and is not likely because of this to mislead or deceive.

There are a number of problems with this proposition.
·    Firstly, an indicium associated with a merchant is only worth satirizing or parodying if the association between the indicium and the merchant is particularly strong. The parody thus only works if it is immediately apparent and instantly dispels that strong association.
·    Secondly, the matter other than the words TAR JAY appearing in the Trade Marks is not prominent.
·    Thirdly, the proposition may be viewed as a concession that, but for the presence of the matter other than the words TAR JAY, the use of the Trade Marks by the Applicant would be likely to mislead or deceive. The matter other than the words TAR JAY thus purports to act in a way analogous to a disclaimer. In Abundant Earth Pty Ltd and Others v R & C Products Pty Ltd (1985) 4 IPR 387, Toohey, Morling and Beaumont JJ said at pp 393-394:
Then the appellants say that their disclaimer avoids the possibility of any consumer being misled or deceived. Again, it is not possible to generalise in the area. There may well be cases where a disclaimer is effective to eliminate confusion (see Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352 at 370 cf Malleys Ltd v Whirlpool Australia Pty Ltd, supra per Lockhart J at 45-282; Bridge Stockbrokers Limited v Bridges [1985] ATPR 40-502 per Smithers and Woodward JJ at 46,020, per Lockhart J at 46,022). But, where the competing products are small, inexpensive items the efficacy of a disclaimer, however prominent, cannot be assumed (cf Puxu, supra). The disclaimer now being affixed to the mustard is less than prominent and, we would expect, of little, if any, utility for present purposes. Nor are we persuaded that any attempt to increase the size or position of the disclaimer would improve the understanding of consumers. In the circumstances, we think that no useful purpose would be served here by any disclaimer (see Powell v The Birmingham Vinegar Brewery Co Ltd [1896] 13 RPC 235 per Lindley LJ at 256; per Smith LJ at 263–4; affirmed [1897] AC 710).
·    Fourthly, the putative purchaser is already on the Applicant’s website prepared to engage in a purchase if the parody is apprehended and is unlikely to leave for the Opponent’s website. In Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255 Besanko J commented at [68] to [69] on the following disclaimer on a website:
Mr. Bob Jane founder of the ‘Bob Jane T-Marts’ is not in any way associated with the ‘Bob Jane T-Mart’ organization. Furthermore, ‘janetyres.com’ and Bob Jane Tyre Corporation (Australia) Pty Ltd is also not in any way associated with Bob Jane T-Marts or the Bob Jane Corporation Pty Ltd.
The following may be noted about these statements. First, any disclaimer is not relevant to the alleged infringements of the applicant’s trade marks. […] Finally, the disclaimer comes too late. The searcher is already in the website, more interested in viewing the advertisements than reading disclaimers.
·    Fifthly, the Applicant has not shown that the reputation of its MUMGO trade mark is sufficient to overbear the strong association in the public mind of the indicium TAR JAY with the Opponent.
·    Sixthly, the proposition presupposes that the public is sufficiently well-educated to know that there is no link between the Opponent (who the public may or may not know is ultimately owned by Wesfarmers Ltd) and Mumgo Pty Ltd (who the public may or may not know is owned by the Applicant).
It is likely in my consideration that a person shopping on the Applicant’s website and seeing the Trade Marks will be misled into believing that it is either shopping on the Opponent’s website, or on a website operating under the auspices of the Opponent, or with its sanction or license, or that there is a link between the Applicant and the Opponent.
I conclude that the Applicant’s use of the Trade Marks would be likely to mislead or deceive and that the Opponent has established its oppositions under subparagraph 42(b) of the Act.

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

Costs

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.

Iain Thompson

Hearing Officer

Trade Marks Hearings

24 June 2015