Summary
Aunty Helen is the nickname of Helen Clark who served as New Zealand’s Prime Minister between 1999 and 2008. James Benson saw an opportunity to file this nickname as a New Zealand trade mark when he heard that Ms Clark did not wish to use “Aunty Helen” as a trade mark in a television interview. While Ms Clark had no wish to use the nickname as a trade mark, she opposed the trade mark’s registration by Mr Benson for a number of reasons.
Evidence of Bad Faith?
The former Prime Minister argued that the Aunty Helen trade marks were filed by Mr Benson in bad faith. Significantly, Mr Benson had earlier filed an application for Jacindarella, which explicitly refers to the current New Zealand Prime Minister Jacinta Adern.
Mr Benson argued that he was not aware of the reference to Jacinda Adern at the time of filing Jacindarella. He promptly withdrew the “Jacinderalla” application when the Trade Marks Office objected on the grounds that it was a reference to the current Prime Minister. However, the Hearings Officer made the inference that Mr Benson should have learned during the Jacindarella filing that it was not acceptable business behaviour to use nicknames of well-known politicians as a trade mark. Ms Clark’s assertion that Mr Benson filed the “Aunty Helen” trade mark in bad faith is strengthened in light of Mr Benson’s earlier filing. There was evidence of “a pattern of bad faith filings” by Mr Benson[1].
A related reason for challenging the trade mark was that the close association between Ms Clark and “Aunty Helen” could cause confusion and/or deceive the public as to the trade source of the publishing and clothing-related goods and services in the application.
At the time of filing, the relevant application (No. 1102116), contained Class 36 for “Political fund raising services; political fund-raising services; political fundraising services” and Class 45 for “Providing information regarding political issues”[2]. While these classes were later removed from the application, the Hearings Officer found that at the time of filing, Mr Benson clearly wished to use Ms Clark’s reputation in politics for commercial purposes. The goods and services listed in the remaining classes relating to publishing and clothing, suggested that Mr Benson intended to publish material that was related to politics under the trade mark. Therefore, scope still remained for Mr Benson to take advantage of Ms Clark’s political reputation through the use of “Aunty Helen”, even after the deletion of classes 36 and 45.
Outcome
Both of Ms Clark’s reasons for opposition were successful. It was indeed found that the application was made in bad faith and that deception or confusion could indeed arise from the proposed use of “Aunty Helen” by Mr Benson.
This decision may be contrasted with the “Honey” decision in Australia in 1988, where former Olympic long-jumper, Gary Honey, was unsuccessful in preventing Australian Airlines Ltd (formerly TAA and no longer in business) from using his image in their promotions[3]. The court held that the airline was not making a false representation of association or endorsement, despite using his image without consent for commercial benefit[4]. Perhaps an Australian court would now find differently, particularly in light of the Federal Court decision in the “Duff Beer” case[5].
In any case, this recent New Zealand trade mark dispute is a cautionary tale regarding the use of a trade mark for commercial gain of a nickname, word or monicker, that is strongly associated with a well-known individual or entity.
If you have any questions about this or other Australian or New Zealand trade mark matters, please do not hesitate to contact us.
For the full case, see here.
[1] James Craig Benson v Helen Elizabeth Clark [2021] NZIPOTM
[2] Ibid
[3] Gary Honey v Australian Airlines Limited and House of Tabor Inc [1989] AustLII
[4] Ibid
[5] Twentieth Century Fox Film Corporation and Matt Groening Productions Inc v the South Australian Brewing Co Ltd and Lion Nathan Australia Pty Ltd [1996] AustLII
