The strange case of the man who tried to trade mark ‘Aunty Helen’

A man who planned to register “Aunty Helen” as a trade mark has been blocked from doing so in a move that’s expected to protect the reputation of high-profile Kiwis.

The Intellectual Property Office of New Zealand stopped businessman James Craig Benson from securing the trade mark for the moniker for former prime minister Helen Clark, which he intended to use for a number of commercial activities, including the production of clothing.

Lawyers Jenni Rutter and Lauren Royers, of Dentons Kensington Swan, approached Clark about opposing the trade mark application after seeing media coverage of Benson’s intended use for the name.

“It just didn’t sound right to me,” Rutter says.

Rutter says the case is precedent-setting because it involves the use of a nickname, which Clark didn’t actually create.

Royers adds the decision marks an important step in ensuring that New Zealanders with a high profile are able to protect their reputations.

She says it doesn’t matter whether you chose that nickname for yourself or whether you trade on it commercially.

“This is about protecting the reputation of the individual and ensuring that the public isn’t misled,” Royers said.

The evidence relied on showed that the nickname was first used by members of the Māori and Pacific communities, before being picked up by the New Zealand media.

The nickname became so widely used and accepted that Clark even referred to herself as “Aunty Helen” in a news interview with journalist Patrick Gower, and in a handwritten message to a fan saying “Back yourself – from Aunty Helen” in a signed copy of her book Women, Equality, Power.

Benson told the Intellectual Property Office that after spending more than 15 years in horticulture and short stints as a real estate agency and truck driver, he was considering his business options.

“Running low on ideas throughout 2017 and most of 2018, I happened to tune in to Helen Clark’s Seven Sharp interview with Jessica Mutch McKay in relation to her Women, Equality, Power: selected speeches from a life of leadership book launch,” Benson explained.

“I liked the sound and feel of Aunty Helen as a trade mark, so I then decided that this presented a valuable business opportunity for me.”

Benson reserved the company name Aunty Helen Publishing Limited and registered a number of domain names incorporating “Aunty Helen”.

In evidence were also photographs of T-shirts bearing taglines and prominently marked “©Aunty Helen™ Publishing”.

In addition to attempting to trade mark “Aunty Helen”, Benson had also previously applied to register a trade mark for “Jacindarella”.

However, he later withdrew this application.

“At the time of filing that application, I was unaware that Jacindarella was a direct reference to the current Prime Minister Jacinda Ardern,” Benson is quoted in the decision.

“The idea to register Jacindarella as a trade mark was suggested to me by an elderly family friend. I was totally oblivious at the time that Jacindarella was a direct reference to Jacinda Ardern.”

In pursuing the “Aunty Helen” trade mark, the onus rested on Benson to show that he met the requirements set out in the Trade Marks Act 2002.

The Act says a trade mark can’t be registered if it would be likely to deceive or cause confusion.

Rutter makes the point that this is not just about the rights of the parties involved, but about protecting the public.

Rutter says most case law in this space involves two competing companies arguing about whether one trade mark is confusingly similar to another.

This was a different and unusual scenario, involving a nickname rather than a competing trade mark.

The Assistant Commissioner accepted some younger people might not be familiar with the Aunty Helen reference. But he was satisfied that a significant part of the general public know Clark by the name Aunty Helen.

“The reputation is extensive and more than enough to require Mr Benson to address the likelihood of deception or confusion if he uses ‘Aunty Helen’ on the goods and services of his applications,” the decision read.

A further requirement under the Act is that a trade mark cannot be registered if it is filed in bad faith.

The lawyers for Clark argued that Benson’s conduct fell short of reasonable and acceptable standards of commercial behaviour. They said that Benson was clearly aware the name referred to Clark and that it was reasonable to infer Benson’s intention was to cause embarrassment to the former Prime Minister, especially as his application originally covered political fundraising and other political services.

They further said that the filing of the ‘Jacindarella’ application was “consistent with a pattern of bad faith filings.”

Benson countered this by saying that the argument relied on inference and that this was insufficient to establish bad faith.

The Assistant Commissioner noted that Benson knew “Aunty Helen” was the nickname for the former prime minister and questioned whether a reasonable and experienced business person would think it acceptable to register the nickname as a trade mark.

“It is difficult to apprehend a reasonable and experienced political fundraising or information business thinking it would be acceptable to use a politician’s or former politician’s name as the name of their service, without authority,” the Assistant Commissioner said.

“Such use would obviously connote some association with the politician or former politician.”

The Assistant Commissioner ultimately refused the registration on the grounds that the trade mark would be likely to cause confusion or deception and that it wasn’t made in good faith.

The Assistant Commissioner made an award of costs amounting to $6650.

Clark declined to comment when approached by the Herald.

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