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

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.