The short point raised by this appeal was whether, on an appeal from a decision of the Commissioner of Trade Marks  under the Trade Marks Act 1953, the High Court must defer to the assessment of the Commissioner if the conclusion he or she has reached is one on which reasonable minds may differ. 

On appeal from opposition proceedings (involving an application for WILD GEESE opposed by the owner of the mark WILD TURKEY) the High Court had disagreed with the Commissioner’s decision and allowed the appeal. 

When the matter came before the New Zealand Court of Appeal, it expressed the view that the High Court was “required to give some weight to the decision of the Commissioner in an area within the Commissioner’s expertise”. In a controversial passage in its judgment the Court of Appeal had observed that the High Court was entitled to reach a conclusion contrary to that of the Commissioner but not to do so without considering and giving weight to the Commissioner’s decision. 

The matter went on a further appeal to the Supreme Court principally on the issue of what test should apply on such appeal. The International Trademark Association (INTA) sought (and was granted) leave to intervene because it believed that the appropriate standard of appellate review and the weight to be given to the Commissioner’s decision would affect almost all future trade mark appeals, with important implications for trade mark owners.

In its decision, the Supreme Court held that an appeal under the Trade Marks Act 1953 (and similarly under the new New Zealand Trade Marks Act 2002) is a general appeal. The High Court is required to come to its own view on the merits. The weight it gives to the decision of the Commissioner is a matter of judgment. If the High Court is of a different view from the Commissioner and of the opinion that the Commissioner’s decision is wrong, it must act on its own view.

The Supreme Court went on to observe that those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate Court, even where that opinion is an assessment of fact and degree and entails a value judgment. If the appellate Court’s opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is ‘wrong’ in the only sense that matters, even if it is a conclusion on which minds might reasonably differ. In such circumstances it would be an error for the High Court to defer to the lower Court’s assessment of the acceptability and weight to be accorded to the evidence, rather than forming its own opinion.

In this particular appeal, the Court held that there was no basis for caution in differing from the assessment of the Commissioner. The case entailed no question of credibility and turned on a judgment of fact and degree not the exercise of a discretion entrusted to the Commissioner.

The approach to appeals outlined by the Supreme Court would also apply to cognate appeals from the Commissioner of Patents or Commissioner of Designs under the Patents and Designs Acts 1953. In a case heard before but with judgment delivered after the Supreme Court decision (Ministry of Health v HealthTrio Inc (Wellington High Court, 30 January 2008, Clifford J)) the Court held that on appeals from a decision of the Assistant Commissioner of Patents, it must be established that the Assistant Commissioner proceeded on a wrong principle, gave undue weight to an irrelevant matter, insufficient weight to a relevant one, or was plainly wrong. Clifford J also held that the Assistant Commissioner possessed considered specialist expertise in matters relating to patents and the Court should pay appropriate deference to their decisions.

Given the Supreme Court ruling in the Austin Nichols case, the approach taken in the Ministry of Health decision would now be questionable.  All that must be shown is that the Commissioner was wrong. Whether in any particular instance deference should be given to the Commissioner’s decision, will be a matter for the Court but is not a jurisdictional requirement before the appeal can be allowed.