Who owns a nickname? AUNTY HELEN trademark registration refused in New Zealand – Intellectual Property

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Whether endearing or derogatory, Australians and New Zealanders have been calling each other nicknames for more than a century, and our political leaders are not immune to this phenomenon.

Helen Clark was the 37and Prime Minister of New Zealand from 1999 to 2008. During her tenure, she became colloquially known as ‘Aunty Helen’. The nickname was coined by members of the Maori and Pacific Islander communities and popularized by the New Zealand media. Mrs. Clark never used the name and had no intention of doing so.

For trademark applicant James Benson, this represented “a valuable business opportunity” and in September 2018 Mr Benson filed two trademark applications for “AUNTY HELEN” relating to clothing, retail services, publishing and political services.

The claims were contested by Ms. Clark. The two main grounds for opposition were:

  1. that Mr. Benson’s use of the AUNTY HELEN mark would likely cause consumers to question whether the goods and services are endorsed, endorsed or sponsored by Ms. Clark (Section 17(1)(a)); and
  2. that Mr. Benson filed the claims in bad faith, below reasonable standards of commercial behavior (Article 17(2)).

In rendering his decision, the Assistant Commissioner noted that this case differs from typical oppositions in that it is a nickname, which is not used as a trademark by the opponent.

Likely to cause deception or confusion

The Assistant Commissioner noted that the average consumer is used to seeing endorsements of goods and services by well-known people. It was held that the fame of the nickname AUNTY HELEN was sufficient to constitute the extent of knowledge required to support an objection on the ground that Mr. Benson’s use would likely cause consumers to question whether the goods and services are approved, endorsed or sponsored by Ms. Clark.

Requests made in bad faith

Mr. Benson’s initial claims were made for politically related goods and services, and it was these subsequently removed political services, among other circumstances, that led the Deputy Commissioner to say that “such use would obviously imply some association with the politician or former politician”, and ultimately concluded that the requests were made in bad faith.

The applicant had also applied for registration of a trade mark for JACINDARELLA, which was refused by the Trade Mark Office and indicated that Mr Benson was aware of the risk of confusion resulting from the unauthorized use of the nickname of a politician.

The opposition was successful and costs awarded, including a 25% increase in costs due to Mr Benson’s late removal of political services.

An important element to remember from this decision is that, in order to establish a likelihood of deception or confusion, it is not necessary that the mark has been used by the opponent. The reputation and notoriety of the mark may result from its use by third parties such as the media and news organizations.

Full Decision: James Craig Benson vs. Helen Elizabeth Clark [2021]NZIPTM 6

As an aside, Australian Prime Minister Scott Morrison’s nickname “SCOMO” has been registered in Australia since 2019 for machinery and wine. This begs the question, would consumers be left wondering if the SCOMO branded Savvy-B is endorsed, endorsed or sponsored by the Prime Minister of Australia?

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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