James Craig Benson v Helen Elizabeth Clark [2021] NZIPOTM 6
Whether endearing or disparaging, Australians and New Zealanders have been giving each other nicknames for well over a century, and our political leaders are not immune to this phenomenon.
Helen Clark served as the 37th Prime Minister of New Zealand from 1999 to 2008. During her time in office, she became colloquially known as ‘Aunty Helen’. The moniker was coined by members of the Māori and Pacific Island communities and popularised by the New Zealand media. Ms Clark never used the name and did not have any intention of doing so.
For trade mark applicant, James Benson, this presented “a valuable business opportunity”, and in September 2018, Mr Benson filed two trade mark applications for ‘AUNTY HELEN’ in respect of clothing, retail services, publishing services, and political services.
The applications were opposed by Ms Clark. The two key grounds of opposition were:
- that Mr Benson’s use of the AUNTY HELEN trade mark would be likely to cause consumers to wonder whether the goods and services are approved, endorsed or sponsored by Ms Clark (section 17(1)(a)); and
- that Mr Benson filed the applications in bad faith, falling short of the reasonable standards of commercial behaviour (section 17(2)).
In making his decision, the Assistant Commissioner noted that this case differs from usual oppositions in that it involves a nickname, which is not being used as a trade mark by the opponent.
Likely to cause deception or confusion
The Assistant Commissioner noted that the average consumer is accustomed to seeing endorsement of goods and services by well-known people. It was held that the reputation in the nickname AUNTY HELEN was sufficient to constitute the extent of awareness required to support an opposition on the basis that use by Mr Benson would be likely to cause consumers to wonder whether the goods and services are approved, endorsed or sponsored by Ms Clark.
Applications made in bad faith
The original applications of Mr Benson were filed for goods and services relating to politics, and it was these subsequently deleted political services amongst the other circumstances which led the Assistant Commissioner to comment that “such use would obviously connote some association with the politician or former politician”, and ultimately concluded that the applications were made in bad faith.
The applicant had also applied to register a trade mark for JACINDARELLA, which was refused by the Trade Marks Office and indicated that Mr Benson was aware of the potential for confusion as a result of unauthorised use of a politician’s nickname.
The opposition was successful and costs awarded, including a 25% uplift in costs due to the late deletion of political services by Mr Benson.
An important take-away from this decision is that in order to establish a likelihood of deception or confusion, it is not necessary for the trade mark to have been used by the opponent. Reputation and awareness in the mark may result from use by third parties such as media and news outlets.
As an aside, the nickname of Australian Prime Minister, Scott Morrison, “SCOMO” has been registered in Australia since 2019 for machines and wine. This begs the question, would consumers be caused to wonder whether SCOMO branded Savvy-B is approved, endorsed or sponsored by the Australian Prime Minister?