Parody trade marks: a take-off not a rip-off

3rd December 2015

TAR JAY and TARGET

Most Australians will agree that shopping at Target has never been cooler, thanks in no small part to the endearing, colloquial term that the discount chain stores are now known by: Targét (pronounced “tar-jay” – with a wonderful Australian drawl to finish the last syllable, of course).

In Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd, Target opposed a trade mark application by Catchoftheday for TAR JAY (a stylised logo trade mark application). Target argued that use of TAR JAY would be misleading and deceptive, prohibited under Australian consumer law and trade mark infringement under the Australian Trade Marks Act 1995. Both traders trade in a similar market (although Catchoftheday is an online retailer and Target mostly owns physical stores).

The mark TARGET (also a registered trade mark) is a well-known brand in Australia and Target pointed to evidence that TAR JAY had been endearingly used to refer to Target’s business for decades, to argue that a consumer would be misled or deceived by Catchoftheday’s use of TAR JAY.

Catchoftheday quickly conceded that its use of TAR JAY (stylised) was intentionally “cheeky and as a means of cleverly and satirically referencing [Target]”, but it argued that because it was clearly a parody, a consumer would not be misled or deceived.

Given the absence of an exclusion under the Trade Marks Act for “being cheeky”, the hearing officer did not agree that TAR JAY was an effective parody. The hearing officer accepted Target’s evidence of extensive use of TAR JAY by consumers to refer to Target, and concluded that a consumer would assume an association between TAR JAY and TARGET, which would be misleading and deceptive because there was no association.

Parody trade marks are difficult to register. However, if a parody trade mark is clever enough to be immediately recognisable by consumers as a parody, it has a better chance of being successfully registered because it won’t be misleading. It should also be newly coined – if the original trader is already known colloquially by the phrase, it probably won’t be registrable as a trade mark by another.

Take home points

•  There is no special treatment or exception for parody trade marks in Australia.
• A parody trade mark is difficult to register because it relies on imitating the style of another trade mark for comedic effect. It is almost impossible to imitate another trade mark without infringing it.
• A successful parody trade mark needs to be “a take-off, not a rip off”. It needs to be instantly recognisable as a parody and dispel any perceived association between the traders so that it is not misleading.
• If your brand is known by an endearing term, protect it by registering it and using it, such as MCDONALD’S and MACCA’S.

Originally published in BrandWrites 5th Edition