Hearings Officer’s Views to be Given Weight by Appellate Courts

Wednesday 23rd April 2008

The Court of Appeal has overturned the High Court’s ruling that WILD GEESE is confusingly similar to WILD TURKEY in respect of class 33 goods.

In 2004 a Hearings Officer ruled that although there were conceptual similarities between WILD GEESE and WILD TURKEY, the marks did not look or sound the same and were not confusingly similar.

Austin Nichols, the owner of Wild Turkey, appealed the Hearings Officer’s ruling to the High Court. In the High Court Gendall J accepted that GEESE and TURKEY did not look or sound similar but considering the marks as a whole, the idea of both marks was a large wild bird that is the subject of a hunt. Gendall J placed considerable emphasis on the idea of the marks.

In the High Court, the owner of Wild Geese, Stichting Lodestar, argued that substantial weight should be given to the Hearings Officer’s view. Referring to VB Distributors Limited v Matsushita Electrical Industrial Co Limited (1999) TCLR 349 (HC) Gendall J concluded that he did not have to give any weight to the views of the Hearings Officer.

The Court of Appeal disagreed stating that the High Court on appeal from the Hearings Officer is required to give some weight to the decision of the Hearings Officer in an area within the Hearings Officer’s expertise. The Court of Appeal called for deference by the High Court to the expertise of the Hearings Officer. The Court of Appeal placed weight on the “stark differences” between GEESE and TURKEY. The Court of Appeal ruled that the concept of the marks was not strong and the class of “hunted birds” is broad and ill-defined.
The Court of Appeal allowed the appeal, awarded costs to Stitching Lodestar and reversed the costs award in the High Court. Stitching Lodestar is entitled to costs in the Court of Appeal, High Court and for the opposition before the Hearings Officer.

The Court of Appeal’s decision is useful for parties who were successful before a Hearings Officer but find themselves as respondents to an appeal at the High Court. The Court of Appeal’s decision may also have an effect on examination practices by the Intellectual Property Office of New Zealand. As a result of the High Court decision the Intellectual Property Office has been maintaining citations of confusingly similar marks on the basis that the idea of the marks is similar. It is likely that the idea of the mark will be given less prominence at the examination stage.

The owner of Wild Turkey, Austin Nichols, has appealed to the Supreme Court. The Supreme Court is likely to hear the case before the end of 2007.

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