Trade mark opposition no labour for Aunty Helen

New Zealanders and also those from other countries will be aware of New Zealand's former Prime Minister Helen Clark who served as New Zealand's leader from 1999-2008. Many will also be aware of the nickname 'Aunty Helen' by which she became colloquially known during her time in Office.

Recently, in James Craig Benson v Helen Elizabeth Clark [2021] NZIPOTM 6, Ms Clark was forced to oppose two trade mark applications to register the trade mark AUNTY HELEN in New Zealand in relation to various goods and services including clothing, and retail and publication services.

The opposition

The trade mark applications were opposed on the basis of a range of grounds, in particular that use of Aunty Helen by the Applicant Mr Benson was likely to cause deception or confusion given the reputation for the nickname Aunty Helen as a reference to Ms Clark (s17(1)(a)), and also that the application for registration of Aunty Helen was made in bad faith (s17(2)). We briefly discuss the findings in relation to each of these grounds.

Section 17(1)(a) - Use of Aunty Helen by the Applicant was likely to cause deception or confusion

Typically, an opposition under section 17(1)(a) is based on an existing reputation in a trade mark due to earlier use by the opponent. This case involved an interesting set of facts in relation to this ground of opposition as it was effectively the use of Aunty Helen as a nickname by third parties which Ms Clark sought to rely on in order to invoke this ground of opposition.

Despite the unusual situation, and the minimal use of Aunty Helen by the opponent, Ms Clark, the Assistant Commissioner held that the reputation in Aunty Helen as a nickname was sufficient to constitute the extent of awareness required to support an opposition on the basis of section 17(1)(a).

The Assistant Commissioner considered the IPONZ examination guidelines relating to implications of sponsorship, patronage, permission or approval and noted that he was surprised that an objection had not been raised by IPONZ during examination.

In concluding that confusion or deception was likely if Aunty Helen was used by the Applicant, the Assistant Commissioner considered a range of surrounding circumstances and factors. He noted that the average consumer is accustomed to seeing endorsement of goods and services by well-known people. This could extend to the use of Aunty Helen by the Applicant being taken as an endorsement of the Applicant's goods and services by Helen Clark. For this reason, confusion was possible and the application must be rejected on this basis.

Section 17(2) - The application filed by the Applicant was made in bad faith

The opposition was also made on the basis that the application was filed in bad faith. A finding of bad faith is a high threshold and requires dealings which fall short of the standards of acceptable commercial behaviour. In the majority of cases where it is plead, bad faith fails due to a lack of evidential foundation to make out the allegation.

After reviewing the evidence and parties' submissions the Assistant Commissioner concluded that the applications to register Aunty Helen were made in bad faith. The key aspect of the matter which led him to this conclusion was that the original applications were made for goods and services relating to politics and that "It is difficult to apprehend a reasonable and experienced political fund raising or information business thinking it would be acceptable to use a politicians or former politician's name as the name of their service, without authority. Such use would obviously connote some association with the politician or former politician".

In this case, it was the nexus between the (subsequently deleted) political services the applications were originally filed for, the lack of authority on behalf of Ms Clark, and the hypothetical objective view of a reasonable and experienced political business which coalesced to a finding that the applications were made in bad faith.

Takeaways

In addition to being of general interest due to the fame of the opponent as a former New Zealand Prime Minister, this case is important from a precedential standpoint as it shows that:

  • Reputation for the purposes of section 17(1)(a) need not be created or shown by use of the trade mark by the opponent. The awareness threshold may be met independent of the opponent's own actions, such as by use by third parties including the media.
  • An opposition based on bad faith may be upheld without the existence of a relationship between the parties. Bad faith may arise where the Applicant arguably 'should have known better' than to appropriate the trade mark, knowing of its association to a third party and without that party's consent, in relation to particular goods or services.

As an aside, it is interesting to note that a trade mark application for Jacindarella by the same Applicant was withdrawn by the Applicant at the application stage after receiving an objection from IPONZ. We wait with interest to see if there will be an application made for the commonly misspelled "John Keys" (sic).

Jesse Strafford - May 2021

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