Facts:

The Chartered Institute of Management Accountants (the respondent) applied for the trade mark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS. The New Zealand Institute of Chartered Accountants (the appellant) opposed the application.

In the context of that opposition, the respondent made an application for a direction under regulation 31 of the Trade Mark Regulations 2003, requiring the production by the appellant of a copy of an agreement that the respondent considered to be significant to the dispute. The application was granted.   However, general counsel for the appellant stated that he had been unable to locate the agreement. The respondent then filed a request under s160 Trade Marks Act 2002 for a direction permitting the appellant’s general counsel to be cross examined in respect of two particular matters. An Assistant Commissioner granted the request to cross examine following a hearing. The appellants appealed.

The grounds of appeal were that the Assistant Commissioner of Trade Marks:

1. erred in law in determining the appropriate test for whether cross-examination should be permitted in proceedings opposing an application for a trade mark under the Trade Marks Act 2002;

    

2. erred in fact and in law by permitting cross-examination of the appellant’s general counsel in respect of the two particular matters; and

    

3. erred in law by permitting cross-examination in the absence of good or compelling reasons, where there were no contradictions going to the heart of the matter and where cross-examination in trade mark proceedings should be permitted rarely.

The appellant submitted that the appeal was a general appeal and the approach in Austin, Nichols & Co Inc v Stichting Lodestar [2008] 2 NZLR 141 SC should apply. The respondent submitted that a decision under s 160(2)(b) permitting cross-examination was a discretionary decision to which the Austin Nichols approach did not apply.

Held, dismissing the appeal:

A         Approach on appeal

(1)        The legislative provisions governing evidence and cross examination in s160 Trade Marks Act 2002 were essentially similar to the previous provisions in s68 Trade Marks 1953 [26].   As to appeal rights, s170 of the 2002 Act made provision for all appeals against the Commissioner’s decision in a single section (incorporating the notion of an aggrieved person as the requirement for access to the appeal regime) [30].   The fact that all appeal rights were in one statutory provision was not determinative of the nature of the appeal. While decisions of the Commissioner on substantive matters such as opposition to registration will plainly be subject to general rights of appeal, it did not follow that this applied to procedural appeals [37]. The Commissioner’s powers to allow cross examination under section 160 should be viewed as discretionary for a number of reasons.

(a)       The first was because a decision to allow or refuse cross-examination was appropriately viewed as a part of a tribunal’s case management function in relation to which appellate courts traditionally exercised restraint [39].

 Knauf Insulation Ltd v Tasman Insulation New Zealand Ltd (2013) 21 PRNZ 535; Ashmore v Corporation of Lloyd’s [1992] 1 WLR 446 (HL); Badger v Whangarei Commission of Inquiry [1985] 2 NZLR 688 (HC); Hokochemie GmbH v Hokko Chemical Industry Co Ltd 0-158-08, 9 June 2008 referred to.

(b)        Appellate restraint was appropriate in relation to decisions of the Commissioner under s 160(2) because of the nature of the hearing process before the Commissioner; and the fact that cross-examination is for the Commissioner’s benefit [43]. The degree of control which the Commissioner was empowered to exercise over the nature and conduct of his or her determination process strongly suggested that his or her procedural determinations should be viewed as discretionary in nature [47]. The decision whether or not to permit cross-examination would turn on the Commissioner’s view of whether he or she was likely to be assisted by cross-examination in the substantive matter for decision [48]. This element of personal appreciation was significant [49]. The scope of personal appreciation was substantial where the determinant for allowing cross examination was whether it would be of material assistance to the Commissioner [50].

Beecham Group Ltd v Bristol-Myers Company (No 2) [1979] 2 NZLR 629 (NZSC); Ophthalmological Society of New Zealand Inc v Commerce Commission [2003] 2 NZLR 144 (CA) referred to.

B         Whether the Assistant Commissioner committed errors

(2)        The Assistant Commissioner had not provided an exhaustive statement of when cross-examination should be allowed. She had agreed with the observation in Alliance that it was not possible to give an exhaustive statement of the circumstances in which cross-examination would be allowed and had listed principles which she considered relevant to the exercise of discretion under s 160(2)(b) [52]. There was no error by the Assistant Commissioner as her statements were not intended to be determinative of the “appropriate test” [55].

(3)        As the Court had concluded that the Assistant Commissioner’s decision was discretionary, it was necessary to approach the appeal with reference to the May v May principles [63]. It could not be said that the Assistant Commissioner acted on a wrong principle or was plainly wrong in making her decision [66]. The Court was not entitled to set aside the decision [70].

May v May (1982) 1 NZFLR 165 applied; Novartis New Zealand Ltd v Aktiebolaget Hassle [2004] 2 NZLR 721 (CA) referred to.

 C         Matters relevant to exercise of discretion

(4)        It was not a pre-requisite for cross-examination being permitted on contradictions in written evidence that such contradictions “go to the heart of the matter”. The question of the relevance of the matters for cross examination to the issues in the substantive proceeding is a matter of degree [75].

            DB Breweries Ltd v Society of Beer Advocats, Inc [2011] NZIPOTM 19 referred to.

Observed:

(a)        Applications for permission to cross-examine in proceedings before the Commissioner were likely to be more frequent in the future than had traditionally been the case. A reason for this was the recognition given to the rule in Browne v Dunn which had been codified in s 92 Evidence Act 2006 [78]. In Aqua Technics the Supreme Court had not opined on the frequency of cross-examination [82]. Analogy with the approach in judicial review proceedings, where leave to cross-examine was rarely granted because of a rule of practice grounded in the nature of judicial review as a relatively simple, untechnical and prompt approach, was not appropriate in this context [83].

Browne v Dunn (1894) 6 R 67 (HL); World Brands Ltd v Tripp Ltd (EXTREME Trade Mark) [2008] RPC 2; Aqua Technics Pool and Spa Centre New Zealand Ltd v Aqua-Tech Ltd [2007] NZCA 90; Aqua Technics Pool and Spa Centre New Zealand v Aqua-Tech Ltd [2007] NZSC 52; Association of Dispensing Opticians of New Zealand Inc v Optician Board [2000] 1 NZLR 158 (CA); Zoggs International Ltd v Sexwax Incorporated [2013] NZHC 1494 referred to.

(b)        A second reason that cross-examination was likely to become more frequent was because of the inclusion in s 17(2) of bad faith as an absolute ground for refusal to register a trade mark [85]. However, even when allegations of bad faith were made, cross-examination would not necessarily be permitted [86].

            DAAWAT Trade Mark [2003] RPC 187; Alliance & Leicester Plc’s Trade Mark Application [2002] RPC 29 referred to.

(c)        It would not be useful for the Court to proffer some new epithet in an endeavour to convey the anticipated frequency of cross-examination in future. Cross-examination would only occur when the Commissioner was persuaded that he or she would be materially assisted in the task of reaching a substantive decision [87].