JONAH LOMU New Zealand Trade Mark Invalidated

Nadene Lomu v Stylez Limited [2024] NZIPOTM 33 (12 August 2024)

Summary

This is a recent decision before the Intellectual Property Office of New Zealand (“IPONZ”) regarding an application to invalidate the JONAH LOMU trademark registration filed in the name of the late Jonah Lomu’s widow Nadene Lomu (“Mrs Lomu”). Ultimately, the application for invalidity was successful and Mrs Lomu’s registration for JONAH LOMU was invalidated.

Jonah Lomu’s rugby career and legacy

Jonah Lomu (“Mr Lomu”) #941 was a legendary rugby union player described as an icon of the game. In 1995 he burst on to the world stage in the Rugby World Cup. He had freakish abilities and was known for demolishing his opponents with his pace, size, strength and grace. He received the special merit award in 2003 from the International Rugby Players Association and was inducted into the IRB Hall of Fame in 2011. Mr Lomu retired from professional rugby in 2007. He had managed a serious genetic kidney disorder throughout his playing days and despite a successful kidney transplant, sadly died unexpectedly in 2015.

The origin of the dispute

The recent dispute has its origin, in a $800,000 New Zealand Film Commission (“NZFC”) funded documentary about the life of Johah Lomu. Mrs Lomu sent a cease-and-desist letter to the NZFC and all producers involved - filming was stalled pending the resolution of the IP issues. This was reported on www.1news.co.nz. There had been some negotiations but ultimately and reluctantly, it seems, the invalidity proceedings were commenced before IPONZ.

The JONAH LOMU intellectual property

In 1997 Mr Lomu licensed his intellectual property (“IP”) to Stylez Limited (“Stylez”) (“1997 Licence”). Mr Lomu was a director and shareholder of Stylez at that time. Stylez is the corporate trustee of the Silk Trust. The beneficiaries of the Silk Trust are Mr Lomu’s immediate family, his mother, his widow and his children. The 1997 Licence is an exclusive licence meaning only the licensee can exercise rights over the IP everyone else is excluded from using that IP, even the owner.

Following Mr Lomu’s death, his shares in Stylez were left to Mr Christopher Darlow, as executor of his will. Mrs Lomu was the residual beneficiary under the will.  In 2017 the 1997 Licence was varied pursuant to an Agreement (“2017 Variation”) and a Deed was also executed between the executor of Mr Lomu’s will, Stylez and Mrs Lomu, which covered the use of the Lomu IP (“2017 Deed”). Mrs Lomu had her own legal representation throughout this time, although Mrs Lomu’s evidence claims that the 2017 Variation was obtained unlawfully through undue influence and duress. Further that she was bullied and forced into signing the 2017 Variation.

Mrs Lomu’s claims

Mrs Lomu’s position is that Mr Lomu had confidence in her and intended that she be guardian or kaitiaki of the Lomu IP. Mrs Lomu contends that the Stylez shares should be transferred to her as residual beneficiary. Alternatively, she argues that the 1997 Licence had ended or had been terminated. Mrs Lomu says she is the valid owner of the JONAH LOMU registration.

Stylez's claims and evidence

Stylez’s position as the applicant for invalidity, was that the 1997 Licence was not terminated and that the 2017 Variation is at the heart of the invalidity application. Stylez argues that Mrs Lomu’s conduct, in obtaining the JOHAH LOMU registration, is bad faith and contrary to law. In the decision of 12 August 2024, the Assistant Commissioner, Nigel Robb was clear to state that the case only related to the validity of the registration and not the wider issues between Mrs Lomu and Stylez.

Mr Darlow’s evidence was that following Mr Lomu’s death in 2015, Mrs Lomu did not seem to grasp that the estate was hopelessly insolvent, despite Mrs Lomu maintaining that she was responsible for Mr Lomu’s management. Mr Darlow reached agreements with creditors to avoid Mr Lomu’s estate being declared bankrupt. Associated with those actions was the 2017 Variation, in which the 1997 Licence was varied and the termination provisions changed, the 2017 Deed also granted Mrs Lomu a sublicense for certain uses (not television or film) and other uses were possible with the approval of Stylez.

Mrs Lomu received payment from the Silk Trust as a beneficiary, including proceeds from a television production in 2018 not related to the controversial NZFC funded documentary.

The Assistant Commissioner’s findings

Mrs Lomu claimed that she was pressured into entering the 2017 Variation and 2017 Deed, despite having her own legal representation. It was not accepted by the Assistant Commissioner that the numerous criticisms of Mr Darlow’s conduct by Mrs Lomu, stand up to any scrutiny. Mr Darlow had acted in a professional manner.

Standing to bring the invalidity application

Under section 73(1) of the Trade Marks Act 2002 (“TMA”), only an aggrieved person has a right to challenge the validity of a registration. This is an important distinction from other jurisdictions. A person who is “…a busybody or someone who only has an intellectual or sentimental interest in the register” will not be aggrieved see Crocodile International Pte Ltd v Lacoste [2013] NZHC 2265; [2013] NZAR 1391 at [34] – [39].  The relationship between the parties satisfied the requirement that Stylez was aggrieved.

Two grounds of invalidity – bad faith and contrary to law

Bad faith

Stylez alleged that the JONAH LOMU registration was invalid on two grounds:

1.      section 17(2) of the TMA – the application was made in bad faith: and

2.      section 17(1)(b) of the TMA - the registration is contrary to law.

On the bad faith ground this was successful, the Assistant Commissioner reviewed the case law including the statement of Andrews J in Neumann v Sons of the Dessert HC Auckland Civ 2007-485-212, 5 November 2007

“[33]…That is, the Commissioner (or Court) must decide whether the knowledge of the applicant (a subjective element) was such that its decision to apply for registration would be regarded as being in bad faith by persons adopting proper standards (an objective element). In my judgement, that is the appropriate test.”

He then went on to find on the facts:

“[68] …Looking at all the circumstances surrounding the making of the application, including Mrs Lomu’s belief that making the application was acceptable (the subjective element), I consider that a reasonable and experienced business person would have recognised that the 2017 Variation Agreement and 2017 Deed were in place and they did not own Stylez. I consider the application was filed to avoid the limitations on Mrs Lomu’s use of the JONAH LOMU trade mark resulting from the 2017 Variation Agreement and 2017 Deed and to effectively remove Stylez as the exclusive licensee. A reasonable and experienced person would recognise such an application falls short of acceptable commercial conduct (the objective element).”

Contrary to law

On the contrary to law ground, Stylez contends Mrs Lomu’s use of the JONAH LOMU trade mark for Class 41 would be in breach of the 2017 Variation and the 2017 Deed. This meant that at the time of filing the application for JONAH LOMU, that use by Mrs Lomu would have been contrary to law. The Assistant Commissioner held the contrary to law ground was successful. Mrs Lomu could not use the mark without Stylez’s approval at the time the application was filed. The cease-and-desist demands were also use of the trade mark JONAH LOMU and that was contrary to law as it was in breach of the 2017 Deed.

Commentary

It is an unfortunate outcome for Mrs Lomu, and while the Assistant Commissioner appears to have some sympathy for Mrs Lomu, he could not depart from the application of the law and the facts. It was a relatively straightforward finding on bad faith and contrary to law grounds. The criticisms of Mr Darlow were unfounded.

Often the unexpected death of a family member can create inter-generational tensions, and it was possibly exacerbated by the fame and notoriety of Jonah Lomu. It is not uncommon for sports stars, film stars or other celebrities to have their IP and image owned separately from their own personal ownership capacity. It is also not uncommon for grieving families to believe that there was more money in the estate, than there actually is. In this case it seems efforts were made to accommodate Mrs Lomu’s circumstances in the 2017 Variation. Ultimately Mrs Lomu’s mistaken belief that she was solely entitled to the rights, was not accepted by Stylez and the Assistant Commissioner.  Although the parties disagreed, Stylez acted in the interest of Mr Lomu’s estate and the Silk Trust beneficiaries, which ironically also includes Mrs Lomu and her children.

Mrs Lomu has released a statement and extract from an email from Mr Darlow in 2018 on the website www.jonahlomu.com, she describes the decision as “nothing short of a judicial stitch up” and the battle as being “soul-destroying”.  Mrs Lomu said, “Regarding an appeal, my main focus and commitment is to have the estate wound up and all transfers administered in accordance with Jonah’s will, as his widow, mother of our sons and sole residuary beneficiary of his estate.”

Sylver Entertainment on their website describe the LOMU film as being in production and further comment “…The most feared and admired player of all time, rugby’s first global superstar, Jonah Lomu. The essence of this film is profoundly human. At its heart is something that touches everyone.”

The untimely death of Jonah Lomu and this latest battle have affected many people including the Lomu family, and one would hope that the legacy of one of the greatest players of the game, is not tarnished by this latest skirmish.