New Zealand: Former New Zealand Prime Minister Protects Her Nickname In New Zealand Trade Mark Opposition

Former Prime Minister of New Zealand Helen Clark has successfully opposed registration of the trade mark AUNTY HELEN in James Craig Benson vs Helen Elizabeth Clark [NZ 2021] NZIPOTM6[1]. This case is interesting as Ms Clarke neither invented nor commercialised the term Aunty Helen, which was a nickname over which she had no control or ownership.

In Aotearoa/New Zealand, the term "Aunty" is often used with affection by the Maori and broader Polynesian community – particularly in reference to a female elder within the community. So it is that Ms Helen Clark was affectionately known by the nickname Aunty Helen by many within the broader New Zealand community, during her time as Prime Minister.

Mr Benson applied to register AUNTY HELEN in relation to a broad range of goods and services across classes 25, 35 and 41, including clothing, retail of clothing and publishing. Ms Clark succeeded in establishing two separate grounds of opposition – the infamous New Zealand "reverse confusion" ground relating to a likelihood of deception and confusion[2] and also that the application was filed "in bad faith"[3].

Did Ms Clarke establish an "awareness" in AUNTY HELEN?
The Applicant attempted to argue that to establish the Section 17(1)(a) "deception or confusion" opposition ground, the Opponent must point to a reputation in a trade mark. However, the Assistant Commissioner dealt with this argument swiftly, including an interesting discussions regarding whether New Zealand law includes a right to protect a personality, publicity or image (as is present in North America). The Assistant Commissioner noted that "there is no good reason presented as to why only a trade mark reputation can be relied on and not a reputation for a legal name, a nickname, or stage name for likely deception or confusion for section 17(1)(a) purposes... is broad enough in meaning and intention to encompass the consideration of likely confusion or deception if there is a reputation for the AUNTY HELEN nickname".

Ms Clark provided significant evidence in relation to use of the term AUNTY HELEN in direct reference to her in the media and in the wider community. The Assistant Commissioner noted that "the scale of that reputation in the nickname AUNTY HELEN satisfies me that it can be said Ms Clark is known among the significant part of the general public as AUNTY HELEN". This awareness was sufficient for the Applicant to be required to establish that his use of AUNTY HELEN would not be likely to deceive or cause confusion (aka New Zealand's reverse confusion onus).

The Applicant's defence essentially relied upon there being no trade reputation for AUNTY HELEN and that any reputation in the trade mark was in a different field of activity to those for which registration was sought.

How does IPONZ view stage names and other commercial names?
Helpfully, IPONZ has published extensive guidelines of the relevant considerations to be undertaken when assessing likely confusion between a person or organisation's name and that of another party. They state:

These Guidelines refer to stage names such as Lorde and Beyoncé as examples to demonstrate that this type of publicity or personality right is not restricted solely to a person's legal name, but does extend to stage names, nicknames etc.

The Delegate expressed surprise that IPONZ itself did not raise an objection when AUNTY HELEN was examined – that is, that the term AUNTY HELEN had sufficient notoriety that there was a risk of deception or confusion, notwithstanding that it is not Ms Clark's proper name.

What about Ms Clark's lack of control of AUNTY HELEN?
The Assistant Commissioner noted that third party use of AUNTY HELEN had been significant, but always as a reference to Ms Clark. Although there is an argument that Ms Clark's lack of direct control over AUNTY HELEN suggests that it is free for anyone to use, the Commissioner correctly noted that there is a reputation in Aunty Helen and that it is always in reference to Ms Clark.

The Assistant Commissioner concluded that fair use of AUNTY HELEN as a trade mark in relation to the relevant goods and services would create an expectation of some sort of commercial or other relationship between that use and Ms Clark, sufficient to make out this opposition ground successfully.

What about Bad Faith?
The Assistant Commissioner concluded that the Applicant knew AUNTY HELEN was the nickname for the well-known former Prime Minister. Interestingly, the Assistant Commissioner looked at the Opposed Application in its entirety when it was filed – including coverage for services in class 36, 39 and 45 such as political fundraising, transport reservation relating to political events and providing information regarding political issues. The Assistant Commissioner noted that "those specifications of services are a clear indication that the trade mark AUNTY HELEN was intended to be used in connection with services related to politics. It is clear that Mr Benson intended to take commercial advantage of the AUNTY HELEN nickname for services relating to politics".

The Assistant Commissioner noted that "it is difficult to apprehend a reasonable and experienced political fundraising or information business thinking it would be acceptable to use a politician or former politician name as the name of their service without authority. Such use would obviously connote some association with the politician or former politician" , before moving to note that "the remaining goods and services in classes 25, 35 and 41 could be used in connection with politics and social issues, noting that the fact that those goods and services are broad enough to cover non-political goods and services (is not enough to distract from or camouflage the examples Mr Benson has provided about the intended goods and services the mark will be used for)".

The Assistant Commissioner concluded that as the original application was made in relation to political type services, combined with the known and obvious significance of AUNTY HELEN as a reference to Ms Clark and as the Applicant's intended use of the mark satisfied him that the application was indeed made in bad faith.

Pleasingly for many, Ms Clark succeeded in opposing registration of the application. It is worth noting that the Applicant had also applied for the trade mark JACINDARELLA. This application was objected by IPONZ in the first instance due to its clear reference to the current NZ Prime Minister Jacinda Ardern and as a result the Applicant swiftly and voluntarily withdrew that application.

What would happen in Australia?
Section 43 of the Australian Trade Marks Act prohibits registration of a trade mark if, because of some connotation that the trade mark or a sign contained in the trade mark has, use of the mark in relation to those goods or services would be likely to deceive or cause confusion.

It is important that any relevant connotation is inherent in the mark itself, rather than being created by subsequent commercial use. However, IP Australia has demonstrated on numerous occasions that it will raise this an objection to registration if (for example) someone is seeking to register a celebrity's name, nickname or other reference. Section 43 has also been relied upon successfully in relevant opposition proceedings.

In other words, an application to register HAWKIE may meet the same fate (in reference to the well-known former Australian Prime Minister Bob Hawke).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.