Target Australia Pty Limited v

Target New Zealand Limited

Intellectual Property Office of New Zealand, Assistant Commissioner Glover

1 May 2018 – 18 May 2019

[2018] NZIPOTM 16

Trade marks – non-use application – whether trade mark use on an Australian website could amount to genuine use in New Zealand – whether trade mark use on bedsheets in New Zealand could amount to genuine use in New Zealand – whether trade mark use in email newsletters could amount to genuine use in New Zealand – whether trade mark use in negotiations with a New Zealand online retailer could amount to genuine use in New Zealand.

Facts:

Target Australia Pty Ltd (“Target Australia”) is an Australian company that operates 300 department stores in Australia as part of the Wesfarmers Group. In New Zealand, Target Australia owned trade mark registrations 245344 TARGET, 245345  and 245346  in class 24; it also owned trade mark registrations 245347 TARGET, 245348  and 245349  in class 25 (together, “Target Australia’s marks”).

Target New Zealand Ltd (“Target NZ”) is a New Zealand company that trades primarily as a furniture retailer. On 15 May 2015, Target Australia wrote to Target NZ in relation to Target NZ’s use of a device it alleged was similar to Target Australia’s trade marks. On 29 May 2015, Target NZ applied to revoke Target Australia’s six trade mark registrations on the grounds of non-use under s.66(2) of the Act.

On 6 July 2015, Target NZ filed applications 1022893  and 1022894 TARGET in classes 20, 21, 24, 35, 37 and 39. The Intellectual Property Office of New Zealand (“IPONZ”) cited all six of Target Australia’s registrations against both applications.

Held, revoking all of Target Australia’s marks for non-use except in relation to bedsheets in class 24:

  1. Was Target NZ an “aggrieved person” with standing to apply to revoke Target Australia’s registrations within the meaning of s.65(1) of the Act?

(i)         Target NZ was an aggrieved person with standing to apply to revoke Target Australia’s registrations in both class 24 and 25 [29]. Target NZ’s application to revoke Target Australia’s trade marks was in response to Target Australia’s 15 May 2015 letter and it was not “acting as a mere busybody in taking those steps” [27]. There was evidence of the impact of Target Australia’s registrations on Target NZ’s continuing business operations [28].

  1. Did evidence of use of Target Australia’s marks on the Target Australia website (target.com.au) and sales via that site prove genuine use of the marks in New Zealand?

            (i)         Simply using a trade mark on a website that can be accessed worldwide does not amount to use of the mark in every jurisdiction in which the site can be accessed [39]. Evidence of sales made from a foreign website to the local jurisdiction may amount to evidence of genuine use [42].

                        800 Flowers Trade Mark [2000] FSR 697, Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, Deckers Outdoor Corp v B& B McDougall [2006] ATMO 5, referred to.

            (ii)        There was no indication on the Target Australia website that New Zealand customers were being targeted specifically [52]. Use on the Target Australia website did not amount to use in New Zealand [53].

            (iii)       There was evidence of purchases by New Zealand customers from the Target Australia website [58]. However, this was not necessarily evidence that New Zealand customers were targeted by that website [62]. Further, there was no evidence of actual use in New Zealand of Target Australia’s marks on the goods sold from the website [64].

                        VinoMofo Holdings Pty Ltd v Blackmarket.com.au Pty Ltd [2018] ATMO 14 referred to.

            (iv)       The proposition established in the High Court of Australia’s decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, (2010) 86 IPR 224 that a trade mark owner does not need to “knowingly project” its goods into a particular market in order for there to be use of a trade mark in that market has not been tested in New Zealand [76]. A different approach was taken by the Assistant Commissioner in Cadbury Ireland Ltd v Societe des Produits Nestle SA [2007] NZIPOTM 4 [77]. In any event, the correct approach did not need to be considered given there was no evidence that goods sold to New Zealand customers were TARGET-branded goods [81].

                        E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, (2010) 86 IPR 224, Cadbury Ireland Ltd v Societe des Produits Nestle SA [2007] NZIPOTM 4 referred to.

  1. Did evidence of use of Target Australia’s marks on bedsheets sold in Kmart stores in New Zealand prove genuine use of the marks in New Zealand?

            (i)         The evidence established that Target Australia had sold 13 types of TARGET-branded bedsheets in Kmart stores in the period 2012 to 2015 [84]. The TARGET word mark, Target device and Target composition mark were used on all bedsheets sold [84]. The evidence accordingly established that Target Australia used the marks at issue in relation to bed sheets in New Zealand during the relevant period. [86].

  1. Did evidence of use of Target Australia’s marks in email newsletters prove genuine use of the marks in New Zealand?

            (i)         The evidence established that 3,531 subscribers to Target Australia’s email newsletter for the period ending 4 August 2015 utilised email addresses with a “.nz” suffix [88]. However, the email newsletter was not aimed at consumers from New Zealand [94]. The newsletters could accordingly not amount to use of Target Australia’s marks in New Zealand [94].

  1. Did evidence of use of Target Australia’s marks during negotiations with a New Zealand online retailer prove genuine use of the marks in New Zealand?

            (i)         The evidence established that Target Australia was in communication with TradeMe, a New Zealand online retailer, regarding the sale of Target Australia goods on TradeMe’s website in the period 26 March 2015 to 13 April 2015 [95]. The evidence was of emails between the two companies relating to Target Australia’s intention to sell clothing and apparel products bearing trade marks of other traders [99], [106].

            (ii)        As a result, the evidence failed to establish use of Target Australia’s marks in relation to class 24 and 25 goods [112]. At most, it could have proved use in relation to retail services [112]. However, the evidence did not establish an objective commitment to sell goods via TradeMe and amounted only to investigation [116].

  1. Result

            (i)         The Assistant Commissioner directed that trade mark registrations 245344 TARGET, 245345 and
245346  remain on the register in respect of bed sheets, but that the registrations be revoked in respect of all other goods in class 24.

            (ii)        The Assistant Commissioner directed that registration 245347 TARGET, 245348 , and 245349  in class 25 be revoked.

 

 

 

 

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