Jonah Lomu continues to create headlines, almost nine years after his death, with a significant legal victory won by his company Stylez over the trade-marking of the "Jonah Lomu" name.
Stylez Ltd has won a legal challenge by invalidating the New Zealand trademark registration 1195732 for "Jonah Lomu", a mark filed by Nadene Lomu, Lomu’s widow.
While this outcome might seem harsh for the Lomu estate, the ruling by the Ministry of Business, Innovation and Employment’s assistant commissioner of trademarks is backed by solid legal reasoning
The background
Lomu, a name that resonates with rugby fans worldwide, was a force of nature on the field and a beloved member of the All Blacks. After his death in 2015, his wife, Nadene, found herself in a legal tug-of-war with Stylez Ltd over the rights to his name.
The heart of the dispute? A documentary about Lomu’s life that Stylez was supporting a United Kingdom-based production company to produce, a project Nadene Lomu strongly opposed.
In 1997, while Lomu was involved with Stylez Ltd, he gave the rights for the company to secure an exclusive licence to use the "Jonah Lomu" trademark. This was not just for merchandise but specifically for television and film, making it a big deal for anyone wanting to tell Lomu’s story on screen.
Fast-forward to 2017, an agreement was reached to make Nadene Lomu a sub-licensee with a variation agreement for the original 1997 trade mark. She had some rights to use the name — though not without the consent of the executor of Lomu’s estate and with no power to stop any TV or movie productions. She did have the opportunity to have an input into any productions.
In November 2021, Nadene Lomu filed her own trademark application, which gave her the right to use or authorise the trademark, contrary to the terms of the 2017 variation.
When she sent a cease-and-desist letter to Stylez, demanding it halt the documentary, the company did not back down.
Instead, it took legal action to cancel her trademark registration, made in 2021, arguing it was never valid in the first place.
The legal drama
In New Zealand, if you believe a trademark should not have been registered, you can ask for it to be invalidated. That is exactly what Stylez did, claiming that Nadene’s trademark was filed in bad faith and that it violated the terms of their original agreement. Nadene, on the other hand, argued that she was always meant to be the guardian of Lomu’s intellectual property and that the licence agreement had been unfairly altered.
The assistant commissioner had to sift through the nitty-gritty details of the original 1997 agreement and the 2017 deed. The key takeaway? Stylez had exclusive rights to the "Jonah Lomu" name for TV and film, and Nadene’s trademark registration was essentially an attempt to sidestep this arrangement.
The ruling? The 2021 trademark was filed in bad faith and was contrary to the law.
Why this matters
This case is more than just a dry legal dispute; it is a stark reminder of the power of exclusive licensing agreements.
When you sign one, especially something as significant as an exclusive licence, you are essentially handing over the keys to the kingdom. In this case, Stylez Ltd held rights that were almost as strong as outright ownership of the "Jonah Lomu" name when it came to TV and film.
It also highlights the importance of understanding what you are signing up for. Nadene Lomu’s misunderstanding of the terms and the limits of her rights under the agreement led to a costly and emotional legal battle.
The lesson here? Always know what you are agreeing to, especially when it involves something as important as your legacy or the legacy of someone you love.
As of now, it is unclear whether Nadene Lomu will appeal the decision. Whatever happens next, this case has certainly made waves and will likely serve as a cautionary tale for anyone navigating the complex world of intellectual property and licensing agreements.
— Adele Issacs is a senior solicitor with Dunedin lawyers and intellectual property specialists Marks & Worth.
