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05 Jul 2021
BY Manisha Bugwandeen-Doorasamy

Best steer clear of Aunty Helen

You might think that “Aunty Helen” is a perfectly good trade mark. After all, it could work with a variety of goods and services – tea, biscuits, rusks, knitwear, nursery schools, counselling services… perhaps you have some other suggestions!

But if you tried to use or register the name Aunty Helen as a trade mark in New Zealand, you would run into difficulties. As indeed one person, a Mr Benson, already has. Mr Benson applied to register the name Aunty Helen as a trade mark for a range of goods and services, but there was an opposition, a successful one at that. This opposition was based on bad faith. It was also based on a likelihood of confusion.

So, what is this all about? Well it turns out that Aunty Helen is the nickname of former New Zealand prime minister Helen Clark, who was in office from 1999-2008. The former prime minister successfully argued that the applicant had acted in bad faith – relevant considerations were the fact that the applications covered services related to politics, as well as the fact that Mr Benson had admitted that he knew that the former prime minister had the nickname Aunty Helen.

More interestingly, the former prime minister managed to persuade the trade mark authorities that New Zealanders seeing the name Aunty Helen used on or in relation to goods and services might well assume that their former prime minister had endorsed the product or service. In other words, New Zealanders would see this as a case of celebrity endorsement.

 

But what about the current one?

We know what you’re thinking: if New Zealanders would think that an Aunty Helen product or service was commercially linked with a former prime minister, what on earth would they make of any product featuring a name that was similar to that of a real celebrity, like their current prime minister (no disrespect intended, Aunty Helen)?

Fortunately, seemingly unable to help himself, Mr Benson also applied to register the trade mark Jacindarella, an application that he eventually withdrew, which probably tells you all you need to know about Mr Benson.

 

This case tells us what you can’t do

It’s simple really: you can’t copy famous names, and that includes nicknames. You can’t use them and you probably shouldn’t even try to register them. The test that any tribunal dealing with the matter will apply is very simple:  is this use or registration likely to cause consumer confusion, or perhaps even dilute the rights of the true owner of the name?

 

But fortunately, the case also tells us what you can do

Again, it’s simple: what you can do is make a great deal of money. If you are a well-known personality you need to understand that you have very valuable property, property that you should both protect and enforce.

We have, in previous articles, looked at some household names. We’ve discussed how basketball superstar Giannis Antetokounmpo (nickname, the Greek Freak) protects his rights and does very well financially because of it (his basketball salary isn’t bad either it must be said). We’ve discussed US football icon and activist Colin Kaepernick. We’ve discussed South African “names” like Lucas Radebe (Rhoo), Gary Player (the Black Knight) and Ernie Els (Big Easy).

We’ve looked at how astute well-advised celebrities operate. They understand that rights can vest in all sorts of things – names, nicknames, images, signatures, team numbers, catchphrases. They decide which trade marks they see as being the most valuable, they register them in all the countries they regard as being important, they register those trade marks in the product and service categories they regard as being most relevant, they do licensing deals with companies who can produce the goods that they want to sell under their trade marks, they control the quality of the merchandise bearing the trade mark, and they reap the benefits through royalty streams.

Welcome to the world of celebrity endorsement.

 

A final word for South African readers

We, of course, do have lots of well-known nicknames of our own: Juju, Gigabyte, Godzille, Aka, Nasty C, Lady Zamar, and many more. Many of them have appreciated the importance and value of their nicknames and protected these as trade marks, thereby giving them the exclusive right to use their nicknames in relation to specific goods and services. Besides providing them with the right to prevent third parties from unauthorised use and registration of their trade marks (being their nicknames), they also have the right to prevent the registration of company names and domains names which are confusingly similar.

Some of our South African celebrities have also taken advantage of their success by launching specific product lines.  For example DJ, actress and businesswoman Thando Thabethe launched the Thabooty brand specifically focussing on women’s underwear and shapewear. DJ Zinhle launched a range of jewellery under the brand Era and radio personality and DJ, Lerato Kanayo launched the Flutterby LGK range of eyelashes. The question is whether these successful South Africans have considered the value and potential of their brands, both locally and internationally, and the opportunity to benefits from the intellectual property rights which follow.

It is definitely time for our South African celebrities to step up on the global red carpet.

 

Manisha Bugwandeen-Doorasamy

IP | Trade Mark Attorney | Executive

mbugwandeen-doorasamy@ENSafrica.com

+27 82 310 1016