You can't always get (the trade mark registration) you want: Rock Royalty, Aunty Helen, Jacindarella and bad faith

By Thomas Campbell
Intellectual Property Patents & Trade Marks

Lessons from recent decisions 4 min read

Does a trade mark for JAGGER & STONE remind you of a certain rock band? Should New Zealand's former Prime Minister have the right to oppose trade mark registration of her nickname?

Recent Trade Mark Office decisions in Australia and New Zealand shine a light on the opposition ground of bad faith.

Key takeaways

  • A trade mark that exploits the reputation of others and falls short of acceptable commercial behaviour may be opposed on the grounds of bad faith.
  • In Australia, evidence after an application's filing date can be relevant to determining the Applicant's intentions and thus establishing bad faith.
  • In New Zealand, establishing bad faith does not require the trade mark to be in use by the Opponent.

Who in your organisation needs to know about this?

Legal counsel and marketing teams.

Don't riff off rock royalty

In the Australian Trade Mark Office decision of Musidor B.V. v We the Wild Ones Pty Ltd [2021] ATMO 25, the Applicant applied for the trade mark 'JAGGER & STONE' covering various clothing-related goods. The application was opposed by Musidor B.V., a company formed by Rolling Stones band members and their financial manager Prince Lowenstein, on the grounds that it was made in bad faith.

In Australia, the opposition ground of bad faith is determined at the time of filing. The test involves both subjective and objective elements including the knowledge of the applicant at the time of making the application and standards of acceptable commercial behaviour.

This formidable Opponent had no difficulty in establishing that it was synonymous with the words JAGGER & STONE. The Opponent provided evidence of Mick Jagger and the band's significant reputation, with reports describing them as 'one of the most successful rock and roll bands of all time' and Jagger as 'the greatest front man of all time'. There were references to the many awards and accolades received, although it is not clear if the evidence detailed the iconic combination of that head wobble and strut. The Hearing Officer held that Mick Jagger and The Rolling Stones were fashion icons (relevant as the opposed trade mark covered clothing) and that the Applicant sought to exploit this – the application was filed in bad faith.

The decision is a useful reminder that, although bad faith is to be determined at the time of filing, evidence of trade mark use after the filing date can be used to infer the intentions of the Applicant at the time of filing. In this case, the Jagger & Stone Instagram account featured the trade mark alongside images of models posing with electric guitars and amplifiers, with signs proclaiming 'If the music is too loud you are too old'. The Hearing Officer found that use of the mark in this way strengthened the allusion to Mick Jagger and The Rolling Stones and the inference was drawn that the trade mark was filed to exploit the iconic rockers' public celebrity and fame.

IPONZ prevents exploitation of Aunty Helen and Jacindarella

Across the Tasman, former Prime Minister Helen Clark successfully opposed applications for 'AUNTY HELEN' on similar grounds to James Craig Benson v Helen Elizabeth Clark [2021] NZIPOTM 6.

The approach to bad faith in the New Zealand context also involves an assessment of what the Applicant knew at the time of filing and whether the conduct falls short of reasonable standards of commercial behaviour.

In this case the Applicant was an individual by the name of James Benson. Mr Benson attempted to secure trade mark registrations for 'AUNTY HELEN' after seeing a television interview in which Ms Clark allegedly claimed she had no intention to use or register 'AUNTY HELEN' as a trade mark. To Mr Benson, a 'valuable business opportunity' arose. He applied for trade mark applications which covered clothing and publishing among other (potentially politically-focussed) services.

Ms Clark – who was shown to be known extensively by the nickname Aunty Helen both during and after her prime ministership – opposed the applications on the grounds that registration would lead to confusion and that the applications were filed in bad faith. The former Prime Minister was successful in opposing registration on both grounds.

In finding that bad faith had been established, the Assistant Commissioner held that it was irrelevant 'AUNTY HELEN' was not being used by Ms Clark as a trade mark. The fact that Mr Benson knew it was a nickname for a well-known former politician and intended to take commercial advantage of that nickname for services related to politics fell short of 'acceptable commercial behaviour'.

Mr Benson was not assisted by a peculiar trade mark filing history – his previous trade mark application for 'JACINDARELLA' was voluntarily withdrawn.