By Hema Shekhawat and Pranit Biswas
Trademarking a name is not an unusual occurrence. Many IP Offices over the world allow registration of trade marks in names, including in India. However, a line is indeed drawn when one attempts to trade mark the name of a third party – especially when the name in question is a famous one, that too of a living person as opposed to someone who has long left this world.
In a recent intriguing trade mark opposition case before the Assistant Commissioner of the Intellectual Property Office of New Zealand, the venerable Mrs. Helen Clark, former Prime Minister of New Zealand (1999-2008) was constrained to file opposition against one Mr. James Craig Benson’s application nos. 1102116 and 1102309 for the mark AUNTY HELEN. Mrs. Clark is famously and affectionately known as Aunty Helen in New Zealand as well as internationally. The Applicant, Mr. Benson, purportedly decided to adopt the mark AUNTY HELEN as Mrs. Clark apparently once during an interview stated that she does not intend to use or register the said nickname as a trade mark. In fact, a key defence relied upon by Mr. Benson was that Mrs. Clark does not and has not in the past used the term AUNTY HELEN commercially or as a trademark. Incidentally, or perhaps not, Mr. Benson had also filed an application for the mark JACINDARELLA (application no. 1109244) in classes 25, 35, 36, 39, 41 and 45. The term “Jacindarella” was used by the New Zealand media to refer to Ms. Jacinda Ardern (the current Prime Minister of New Zealand), which was a clever combination of the words JACINDA and CINDERELLA.
Contentions Of The Opponent – Mrs. Helen Clark
The opponent had relied on the below grounds in the opposition as enumerated under the Trade Marks Act 2002 of New Zealand:
|Relevant Sections||Objections of the Opponent|
|Section 17(1)(a)||Use of AUNTY HELEN by Mr Benson is likely to cause deception or confusion given the reputation there is for the nickname AUNTY HELEN as a reference to Ms Clark.|
|Section 17(1)(b)||Use of AUNTY HELEN by Mr Benson will be likely to mislead or deceive and will amount to false or misleading representation giving rise to a breach of sections 9 and 13 of the Fair Trading Act 1986 and will also amount to passing off.|
|Section 17(2)||the application for registration of AUNTY HELEN was made in bad faith|
|Section 25(1)(c)||Ms Clark’s AUNTY HELEN nickname is a trade mark, that is well known, and use of AUNTY HELEN by Mr Benson would prejudice the interests of Ms Clark.|
|Section 32(1)||Mr Benson is not entitled to claim to be the owner of the AUNTY HELEN trade mark|
The Opponent had also submitted substantial evidence, including many news articles referring to Mrs. Clark as AUNTY HELEN, as well as details of the Applicant’s/ Mr. Benson’s other trade mark application for the mark JACINDARELLA.
The Applicant’s (Mr. Benson’s) rebuttals
Mr. Benson in his counterstatement had contended that:
- Clark is nether at present, nor in the past, used the term AUNTY HELEN in commerce, including the goods and services falling under his applications.
- Only third parties refer to Mrs. Clark as AUNTY HELEN and she herself does not refer to herself as such.
- The said mark is not distinctive with respect to any goods or services of Mrs. Clark.
- Clark has not made any assertion regarding ownership of the said mark.
- The said mark is capable of distinguishing the goods and services of the Applicant from those of others.
- His conduct in filing the applications does not fall below the standards of acceptable commercial behaviour.
Mr. Benson had also submitted evidence to substantiate his claims and positions, including that he had reserved the company name ‘Aunty Helen Publishing Limited’ as well as several domain names comprising of the term AUNTY HELEN.
Interestingly, Mr. Benson had also submitted that for relying on section 17(1)(a) as a ground of opposition, the opponent needs to first establish there is certain reputation attached to the trade mark before the question of likelihood of confusion or deception can be considered. The Applicant/Mr. Benson had also raised the question of censorship – that the oppositions are an attempt to limit his right to freedom of expression, and hence amounts to quasi-censorship. Although, this was rebutted by the argument by the Opponent that a successful opposition would not impact the right to freedom of expression. The Assistant Commissioner of IPONZ also concurred that opposition would not prevent the Applicant from selling clothing, publishing or expressing his opinion. Another interesting contention of the Applicant was that allowing the opposition would have the effect of granting the Opponent a monopoly right in her ‘image’ or personality, which is not a recognised right in New Zealand.
The Assistant Commissioner’s Observations
Upon analysing the submissions and evidence submitted by both parties, which included substantial evidence by the Opponent, the Assistant Commissioner of IPONZ deliberated upon the below questions:
|Question/ Issue||Assistant Commissioner’s Deliberations/ Observations/ Rulings|
|Does AUNTY HELEN need to be used as a trade mark by Ms Clark?||No. The ambit of Section 17(1)(a) cannot be limited to trade mark reputation. The section is broad enough to encompass likelihood of confusion if there is a reputation in the AUNTY HELEN nickname. It does not matter what ‘species’ of reputation is under consideration. The Assistant Commissioner also noted that when a trade mark encompasses a name, written consent from the said named person may be required.|
|How is the likelihood of confusion or deception to be approached in this case?||Similar to how one would look at it from a trade mark perspective, with minor variations, considering that the word/term in question is a nickname.
In this case, for there to be a likelihood of confusion, there must be consumers who are aware of the reputation in the nickname – which they do.
|What amounts to reputation?||The Opponent need not be trading in goods or services. Reputation is something which has a low threshold, and it can be equivalent to neutral terms like “awareness”, “cognisance” or “knowledge”.|
|Is there a reputation for the nickname AUNTY HELEN in New Zealand?||Yes, and the same was also admitted by the Applicant. Ms. Helen Clark is a well-known person in New Zealand and is indeed referred to as AUNTY HELEN by many third parties and is known by the said nickname to a significant portion of the general public.|
|What amounts to likely confusion or deception?||The mark in question has to be looked at from the perspective of how it will be presented to the consumer. The overall impression has to be considered (including the nature of goods, method of sale, etc.).
In this regard, the Assistant Commissioner considered both sides’ arguments and also relied upon the IPONZ guidelines on suggestions of endorsement or licence, specifically regarding when objections under section 17(1)(a) may be raised because of concerns over requirements of consent, sponsorship, etc. The guidelines and the specific excerpts mentioned in the Assistant Commissioner’s order also include the requirement for consent when the mark applied for is the name of famous persons or organisations.
The Assistant Commissioner considered this aspect from both parties’ point of views and even acknowledged that the inclusion of a well-known person’s name in a trade mark will not always lead to likely confusion of consumer. It is pertinent to note here that the IPONZ had in fact not raised any objection under Section 17(1)(a) while examining the AUNTY HELEN trade mark applications. The Assistant Commissioner was in fact surprised to note that no such objection was raised in the examination stage.
However, the Assistant Commissioner digressed from the Trade Marks Examiner’s opinion, and was of the opinion that an Objection could have been raised, as was done for the application for the mark JACINDARELLA. Taking into consideration many factors as well as examples, the Assistant Commissioner held that the Applicant has not been able to establish that the use of AUNTY HELEN on the goods and services of the applications is not reasonably likely to cause deception or confusion.
|Element of Bad Faith u/s 17(2)||The Assistant Commissioner relied on a plethora of case laws and noted that bad faith is a serious allegation, which has to be supported by evidence. The Assistant Commissioner took note of various contentions made by the Applicant himself (including knowledge of Ms. Clark, the nickname AUNTY HELEN associated with her, application for the mark JACINDARELLA) and noted that a person making such an application would understand that the use of the term AUNTY HELEN is likely to imply some degree of sponsorship or endorsement. The Assistant Commissioner also noted the fact that the specification of services under classes 36, 39 and 45 indicated that the mark AUNTY HELEN was intended to be used in connection with services related to politics, and accordingly take commercial advantage of the nickname. Although, the said classes were later amended/deleted by the Applicant. Accordingly, the Assistant Commissioner made a finding of bad faith and held the said ground of opposition to be in favour of the Opponent.|
As the Assistant Commissioner held in favour of the Opponent with respect to the grounds of opposition under Sections 17(1) and (2), there was no need to make findings regarding other ancillary grounds. As such, the application nos. 1102116 and 1102309 for the mark AUNTY HELEN were refused registration. The Assistant Commissioner also decreed costs amounting to $6,650 (New Zealand Dollars).
The above administrative decision by the Assistant Commissioner of the IPONZ is a fascinating case study about the various considerations one must keep in mind when dealing with trade marks which comprise of famous names. In fact, New Zealand being a common law country, such a decision would have value beyond the borders of the remote island nation in the Southern Hemisphere, and may be of precedential value in other common law countries as well, including India.
THIRD PARTY APPLICATIONS FOR FAMOUS NAMES IN INDIA
This case from New Zealand also draws attention to another prominent common law country wherein there is a lot of potential of such trade mark misuse, namely India. India has innumerable celebrities – from sportspersons to politicians to Bollywood stars, whose names one might one to exploit as a trade mark.
In India, there is no specific provision under the Trade Marks Act, 1999, which prohibits registration of names as trade marks. As such, many celebrities, ranging from Sachin Tendulkar to Kajol, have obtained trade mark registrations for their names. A name can be registered, provided that it is capable of distinguishing goods and services of the Applicant from those of others.
However, the question is, can a person/ third party successfully obtain registration over a trade mark which is the name of a famous person? The Trade Marks Act, 1999 does bar such applications under Section 14, which is reproduced below:
- Use of names and representations of living persons or persons recently dead.—
Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the Registrar with such consent.
As such, one would imagine that the Registry would prohibit a third party from registering famous names such as that of our very own incumbent Prime Minister of India, Shri Narendra Modi. In fact, for example, an application no. 2955410 for the trade mark was filed by one Mr. Chahuhan Rameshbhai Kanjibhai (Trading As : NAMO GROUP FOUNDATION) in class 45 on May 05, 2015. In this regard, the Registry had issued an Examination Report dated June 17, 2016, wherein it had directed the Applicant to provide a consent letter of the person appearing in the mark – which in this case would have been the Prime Minister himself! As no reply to the said office action was filed, the mark was deemed as abandoned. Thus, it is likely that the Indian Trade Marks Registry would object to registration of such trade marks.
However, it would be interesting to see whether the Registry would refuse registration to marks such as NaMo (a moniker by which Prime Minister Modi is referred to by a rather large strata of society) or RaGa (a similar moniker and shortened version of the politician Mr. Rahul Gandhi).