Appellant Wins Battle Only to Lose the War

First trade mark case determined by recently established Supreme Court.

The recently established Supreme Court, which replaced the Privy Council as the final court of appeal, has determined its first trademark case in Austin Nichols & Co Inc v Stichting Lodestar ([2007] NZSC 103, December 11 2007). The main question for determination was the weight to be placed on the decision of the commissioner of trademarks in an opposition.

In June 2000 Stichting Lodestar applied to register the trademark WILD GEESE in respect of beers and other alcoholic beverages. Austin Nichols & Co Inc, the owner of the registered trademark WILD TURKEY in respect of the same types of goods, opposed registration. The assistant commissioner held that there was no reasonable likelihood of deception or confusion between the two marks.

Austin Nichols appealed to the High Court. The court accepted that the commissioner's decision had to be accorded weight, but that as an appeal court, it had to determine for itself whether there was a reasonable probability of confusion. The court found that there was a reasonable probability of confusion and allowed the appeal.

The Court of Appeal took the view that the High Court had not given weight to the commissioner's opinion; although the High Court was entitled to reach its own view, it should have given some deference to the decision of the commissioner. The Court of Appeal placed weight on the commissioner's decision and came to its own conclusion that there was no reasonable probability of confusion, thereby allowing Stichting Lodestar's appeal.

On appeal by Austin Nichols to the Supreme Court, the issue was whether the appellate court should give deference to the decision maker below - that is, whether the High Court should defer to the assessment of the commissioner. The Supreme Court held that while the extent of the consideration given to the decision appealed from is a matter of judgment, the appellate court must form its own view.

Although the Court of Appeal criticized the approach of the High Court, it went on to form its own view of the similarity of the marks. As the Supreme Court could find no error in the approach of the Court of Appeal, it dismissed the appeal. Although Austin Nichols was successful to the extent that the Supreme Court agreed with it about the weight to be placed on the decision of the commissioner, it was ultimately unsuccessful, as WILD GEESE is now eligible for registration despite the existence of the WILD TURKEY mark.

This article was published in Managing Intellectual Property - February 2008