Dentons

As we can see from the trials and tribulations of Meghan Markle, the Duchess of Sussex, it isn’t easy being famous. Even if New Zealand celebrities don’t experience the same level of intrusive press attention as their overseas contemporaries, false endorsement is a problem. Only a few months ago former All Black Richie McCaw was reported to be considering legal action against a company selling cannabidiol products under his name without consent. The name or nickname of a well-known person can be a valuable commodity, and in the wrong hands it can be used to mislead and do real damage.

It was therefore reassuring to see the New Zealand Intellectual Property Office just release a decision* refusing to register the trade mark “Aunty Helen”. The mark was applied for in 2018 by a Mr Benson, who had no connection with Ms Helen Clark, the former Prime Minister of New Zealand who is known by the nickname “Aunty Helen”.

Mr Benson allegedly saw a TV interview with Ms Clark in which she said she had no intention to use or register “Aunty Helen” as a trade mark. He apparently saw “a valuable business opportunity” and applied to register the mark for various goods and services including clothing, political fundraising, publishing services, and providing information regarding political issues. He later deleted a number of the politically focused services and relied only on clothing, clothing retailing and various publishing related services. Ms Clark put forward evidence showing significant use of “Aunty Helen” in connection with her, by news outlets, bloggers, and on social media platforms.

The Assistant Commissioner decided that use of the mark “Aunty Helen” by Mr Benson was likely to deceive or cause confusion and the mark had been applied for in bad faith. Ms Clark’s opposition succeeded and the mark was refused registration.

Ms Clark’s dilemma hasn’t been dealt with before in a New Zealand trade mark case. Most trade mark oppositions involve a battle between two competing trade marks that may or may not be confusingly similar. Ms Clark did not have an earlier registered Aunty Helen mark, and did not even choose the nickname. Her supporters, critics and the media refer to her by the moniker far more than she does herself. In addition, the IP Office has rules about trade marks that contain someone’s name, but the question of a nickname is not specifically covered. This meant the Assistant Commissioner had to break new ground and decide whether a nickname that is not necessarily used as a trade mark can nevertheless mislead or deceive in the hands of a third party.

The Assistant Commissioner decided that based on the evidence, the scale of Ms Clark’s reputation in the nickname “Aunty Helen” meant she was known among a significant part of the general public as Aunty Helen. The genesis of that reputation was her political history, but it was accepted it has continued since then, including in connection with her run for the position of Secretary General of the United Nations. It was also held that Ms Clark did not need to be trading in the relevant goods or services Mr Benson applied for. In fact, she did not have to establish that she used her nickname as a trade mark at all. Her reputation in the nickname, however it came about, was sufficient to give rise to a risk of confusion or deception that Mr Benson hadn’t disproved.

This case shows that traders cannot help themselves to someone else’s nickname for trade mark purposes if that is likely to make consumers wonder if some official connection exists with the person in question. This is the case even if a nickname is bestowed upon you by the public (as is often the case with politicians), rather than something you choose and use yourself.

This is good news for well-known Kiwis - not just celebrities and influencers but those in public service roles too. Not only could Beyonce or Lorde rely on this decision, but potentially ScoMo and Teflon Tony too. In an interesting twist, Mr Benson had also applied to register “Jacindarella” (a reference to current Prime Minister Jacinda Ardern) as a trade mark, but this was refused by the IP Office early on and Mr Benson withdrew that application.

In a world obsessed with fame, a person’s name (or nickname) is a significant asset, and something that can easily be exploited in the wrong hands (just ask Richie). It’s reassuring to see the IP Office step up to the plate with a solid decision that will help protect the rights of well-known individuals, and reduce the chance of us lesser known individuals being misled in the future.

The authors acted as counsel for Ms Clark in this opposition proceeding. The decision has not been appealed. It can be found here.

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