Stichting Lodestar v Austin, Nichols & Co Inc

This appeal concerned the application to register the trade mark WILD GEESE in classes 32 and 33. The application was opposed by the proprietor of the well-known mark WILD TURKEY in class 33 for whisky. The case is noted for the Court of Appeal’s comments on the standard of appellate review and in particular its qualification on the approach set out by the High Court in VB Distributors v Matsushita Electric Industrial Co Limited (1999) 9 TCLR 349 at [32]. 

At first instance, the Assistant Commissioner held that the WILD GEESE trade mark was registrable. She held that the appellant had discharged the onus of showing that there was no likelihood of deception or confusion arising out of the use of its mark. She said that that the general overall impression was a degree of similarity but visually and orally the marks were significantly different and thus not confusing.

The respondent appealed to the High Court where Gendall J was persuaded that the conceptual similarity between the two marks, through a combination of words conveying the idea of a wild hunted game bird, was likely to lead to confusion. In reaching his conclusion the judge did not make reference to what weight, if any, he accorded the Assistant Commissioner’s conclusion on confusion and deception. Gendall J therefore allowed the appeal and disallowed registration of the WILD GEESE trade mark. 

The appellant appealed to the Court of Appeal. In considering the proper approach on an appeal against the decision of an Assistant Commissioner under s66 of the Trade Marks Act 1953 noted that the appeal is an appeal by way of rehearing and that the High Court exercises “the same discretionary powers as are conferred upon the Commissioner”. 

The law had previously been understood to be that set out by Hammond J in VB Distributors. In that case, the High Court held that how much the appropriate weight to be given to the Commissioner’s view may well depend on what is in dispute and suggested that more weight should be accorded where the issue was one of practice in trade mark applications as opposed to a comparison of the marks themselves. In the latter case it was said that an appellate Court was in as good a position as the tribunal when it came to reaching a conclusion.

The Court of Appeal held that the High Court on Appeal from the Commissioner of Trade Marks is required to give some weight to the decision of the Commissioner in an area within the Commissioner’s expertise. Importantly, the Court expressly noted that it did not consider that that approach was limited to issues involving matters of practice, as had been suggested in the VB Distributors case.

As a result, the Court of Appeal held that Gendall J had given insufficient deference to the expertise of the Assistant Commissioner. Applying the orthodox test for an appeal against the exercise of a discretion the Court held that the Assistant Commissioner had adopted an orthodox approach to the task and directed herself correctly as to the legal test she had to apply. Having done so, her conclusion on the likelihood of deception or confusion appeared soundly based. That being so, the Court of Appeal held that the High Court ought not to have embarked on a reconsideration of the issue without considering and giving weight to the Assistant Commissioner’s conclusions. 

The Court of Appeal then went on to agree with the Assistant Commissioner’s conclusion, adding that it regarded that the ideas associated with the two marks as being quite different. “WILD TURKEY” was said to be evocative of the region of the United States from which bourbon originated whereas WILD GEESE was said to have distinct Irish connotations and was thus appropriately linked with a brand of Irish whisky. The Court of Appeal’s assessment was that the two marks were unlikely to be confused for one another if used for liquor products sold in New Zealand in both bottled form in liquor outlets or as single drinks in bars. 

The respondent has filed an application for leave to appeal to the Supreme Court. This has yet to be heard. The grounds on which leave is sought include whether, in hearing an appeal from an Assistant Commissioner, the High Court must have deference to the Assistant Commissioner’s findings, only overturning a decision that can fairly be characterised as wrong.