3 min read
It is quite common for country leaders to be given catchy nicknames by the press. Some stick better than others.
In the US, there are examples such as JFK, LBJ, and Tricky Dicky. In the UK, examples include Winnie, The Iron Lady, and most recently BoJo. In Australia, the current prime minister is known as ScoMo, and some of the nicknames given to previous prime ministers include Pig Iron Bob, Honest John and the Mad Monk.
In a recent decision by the New Zealand Trade Marks Office, an issue arose as to the protectability of a former prime minister’s nickname, namely ‘Aunty Helen’.
James Craig Benson applied for registration of the trade mark AUNTY HELEN, after seeing a television interview where he claimed that the former Prime Minister Helen Clark said that she had no intention to use or register ‘Aunty Helen’ as a trade mark. He says that as he liked the sound and feel of the name, he then decided that it presented a valuable business opportunity for him.
The opposition concerned registration of AUNTY HELEN in respect of: (i) clothing; (ii) clothing retail services; and (iii) publishing services
The opposition grounds were:
- Use likely to deceive or cause confusion: s17(1)(a)
- Application made in bad faith: s17(2)
Likely to deceive or cause confusion
Much of the argument on whether there was a likelihood of deception or confusion concerned the issue of what is protectable under the Act.
Mr Benson claimed that as Ms Clark had not used, and did not intend to use, AUNTY HELEN as a trade mark, then she should have no basis for preventing registration. However, the Assistant Commissioner of Trade Marks explained that the policy behind section 17(1)(a) is to prevent public confusion, and its scope is not limited to confusion between trade marks.
Before it became more generally used, Helen Clark had been referred to as ‘Aunty Helen’ by Pacific Island and Maori communities. This is because “Aunty” is commonly used as an affectionate reference to an adult female member of those communities. The evidence established, and Mr Benson acknowledged, that Ms Clark was widely known by the nickname ‘Aunty Helen’ in New Zealand.
While Ms Clark was no longer prime minister, and recognition of the name was not as strong as it had been, the Assistant Commissioner of Trade Marks found requisite reputation in the name AUNTY HELEN, such that there was a likelihood of an assumption of approval or endorsement. In this regard, he stated:
The average consumer has a degree of commercial realism regarding the role well-known people play in marketing and advertising. When an internationally famous actor such as George Clooney is seen sipping coffee in a television commercial, the well-known Cook Nigella Lawson is seen praising a New Zealand brand of chocolate, or an All-Black or other New Zealand personality is seen in an advertisement, a viewer is likely to understand that their presence is an endorsement and commercial in nature
The onus rests with the trade mark owner to establish that there is not a likelihood of confusion, and Mr Benson was unable to do this. Consequently, this ground of opposition was successful.
The ground of opposition on the basis of bad faith was also successful. In this regard, it was noted that Mr Benson had previously applied for registration of JACINDARELLA (a nickname for the current prime minister, Jacinda Ardern) but withdrew that when he encountered an objection to registration. He claimed that he was not aware of the potential association before encountering the objection.
It was also noted that the original application for AUNTY HELEN (restricted before the opposition was heard) included services related to politics.
On the basis that:
- Mr Benson’s previous filing and withdrawal of the JACINDARELLA application indicated he had an awareness of the potential for confusion to arise from the use of a prime minister’s nickname; and
- The fact that the application originally sought registration in relation to services relating to politics
it was found that the making of the application fell short of the standards to be expected of a reasonable and experienced business person.
The case highlights the breadth of matters that can be considered in determining whether there is a likelihood of deception or confusion. It also raises interesting questions as to the extent to which media-generated nicknames might be protectable.
In this case as in others, those seeking to walk a fine line involving ‘sharp’ business practices, can easily find themselves on the wrong side of that line.
Authored by Sean McManis