Hearings officer's view must be given weight by High Court

New Zealand

In Stichting Lodestar v Austin Nichols & Co Ltd (Case CA94/05, March 12 2007), the Court of Appeal has overturned a High Court decision and has reinstated a hearings officer's finding regarding confusing similarity between the marks WILD GEESE and WILD TURKEY in respect of goods in Class 33 of the Nice Classification.

In 2004 the 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 & Co Ltd, the owner of the WILD TURKEY mark, appealed to the High Court. The High Court accepted that GEESE and TURKEY did not look or sound similar but, considering the marks as a whole, the idea behind both marks was a large wild bird that is the subject of a hunt. The court placed considerable emphasis on the conceptual element of the marks.

During the High Court proceedings Stichting Lodestar, the applicant for registration of the WILD GEESE mark, 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), the court concluded that it did not have to give any weight to the views of the hearings officer. Stichting Lodestar appealed.

The Court of Appeal disagreed with the High Court's reasoning, stating that the High Court on appeal from the hearings officer is required to give some weight to the earlier decision 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 concluded that the hearings officer's findings could not be characterized as wrong. An orthodox approach was adopted and she directed herself appropriately as to the legal test she had to apply. The Court of Appeal acknowledged similarity is a matter of degree and essentially a value judgment. It said that the High Court should not have embarked on a reconsideration of the issue without assessing and giving weight to the hearings officer's conclusion. While the High Court was entitled to reach its own view, it was not to do so without bearing in mind the views 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 that 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 (IPONZ). As a result of the High Court decision IPONZ 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 now be given less prominence at the examination stage.

Kate Duckworth, Baldwins, Wellington

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