Ixnay on the TAR JAY – Target defends its urban nickname

Never one to let a good parody go astray, Target Australia Pty Ltd (aka 'Targét' or 'Tarjay') has successfully prevented Catchoftheday.com.au Pty Ltd from registering trademarks including the term 'Tar Jay'.

In the recent Trademarks Office decision in Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd ([2015] ATMO 54), Hearing Officer Iain Thompson found that Catchoftheday’s use of the opposed marks in connection with clothing and retail services (among other things) would be contrary to law, because such use would be likely to mislead or deceive consumers. 

This decision depended on a finding that the indicum 'Tarjay' was "strongly associated in the mind of the public with [Target]" – despite the fact that Target had not used 'Tarjay' or any phonetically similar term as a trademark.

Facts
The TARGET trademark was used in connection with Target’s chain of department stores operated under the same name, and in connection with various branded goods sold by Target. Target led evidence as to the use of the TARGET trademark since 1972, noting that 56% of its total sales revenue was derived from the sales of clothing, including babies' and children’s clothing and babies' and children’s products.

Target also led evidence to demonstrate that its stores were colloquially referred to as ‘Tarjay’ or ‘Targét’ by the Australian public, including:

• references in various print media dating back to 1989;
• an entry on the website www.urbandictionary.com; and
• recognition in a number of blogs and online forums. 

Target postulated that the tongue-in-cheek French pronunciation, which was adopted into urban Australian slang several decades ago, reflected the "unexpected quality and style of the products sold by [Target]". 

Catchoftheday operated one of Australia's largest online retail sales business under the same name, via its website at www.catchoftheday.com.au and through mobile and tablet applications, and has heavily promoted this business since around 2006. Catchoftheday’s subsidiary, Mumgo Pty Ltd, operates a separate online retail sales business under the name 'Mumgo' via the website www.mumgo.com.au and through mobile and tablet applications.

On May 30 2013 Catchoftheday filed applications for the composite marks shown below, which included the terms ‘Tar Jay’ and ‘Mumgo’:

On the same day BRW magazine published an article reporting that Target intended to start using its colloquial nickname ‘Tarjay’ to market the Target business.

Catchoftheday admitted in evidence that it was aware that some Australians jokingly refer to Target as ‘Tar-zhay’, but that Target had never "embraced or used" the nickname. Catchoftheday also admitted that it adopted the opposed trademarks intending to make a satirical reference to Target – although insisting that its use of the opposed marks was not intended to cause confusion.

Decision
The hearing officer found that Target’s ground of opposition under Section 42(b) succeeded – in other words, that use of the opposed marks for the claimed goods and services would be contrary to law.

In reaching his conclusion, the hearing officer noted that:

• the TARGET trademark was notoriously well known in Australia;
• the fact that Target had not used 'Tarjay' as a trademark was not a decisive factor, considering that the term was "strongly associated in the mind of the public with [Target]"; and
• the other elements in the opposed marks (including ‘Mumgo’) were insufficient to dispel the strong association with Target, given the prominence of 'Tar Jay' relative to those other elements.

The hearing officer was thus satisfied that Catchoftheday’s use of the opposed marks for the claimed goods and services would be likely to mislead members of the public into believing that:

• its goods or services were Target’s;
• its goods or services were approved or licensed by Target; or
• there was some other link between the parties, when this is not true.

Comment
Given that Target had neither used nor registered its urban nickname, its success in this case depended on proving public recognition of the nickname. Of course, Target could have avoided the fight entirely had it registered its urban nickname years ago, although it may not previously have had a genuine intention to use the mark. In fact, Target filed an application for the mark TAR-JEY less than a week after Catchoftheday’s opposed marks were filed, although the application is presently deferred, presumably until Catchoftheday’s applications have been refused.

This case should serve as a red flag for brand owners and prompt them to consider any indicia by which their businesses are recognised and referred to by the general public. A brand owner's most valuable brand may just be the one that it had not thought to register.