Trade mark oppositions receive vote of confidence from the NZ Court of Appeal
In a recent judgment, the Court of Appeal of New Zealand indicated that considerable weight should be given to the Trade Mark Commissioner’s findings in considering an appeal of a trademark opposition. Stichting Lodestar v. Austin, Nichols & Co. Inc.  NZCA 61 CA94/05. However, it remains to be seen whether New Zealand courts will follow this guide in practice.
The case essentially involved a determination as to whether the respective trademarks WILD TURKEY and WILD GEESE were so similar as to lead to confusion. The Assistant Commissioner rejected the opposition, on the basis that there was no confusing similarity between the marks. On appeal, Gendall J of the High Court of New Zealand found that the marks were confusingly similar. The judge considered that the idea or concept of the mark was critical, so that the contextual similarity of the marks was likely to lead to confusion.
The Court of Appeal reversed the High Court judge’s decision, allowing the appeal. In so doing, it held that the High Court should have deferred to the Assistant Commissioner’s expertise:
Our starting point is the observation of Hoffmann LJ in Re Grayan Building Services Ltd  Ch 241 at 254:
“[T]he standards applied by the law in different contexts vary a great deal in precision and generally speaking, the vaguer the standard and the greater number of factors which the court has to weigh up in deciding whether or not the standards have been met, the more reluctant an appellate court will be to interfere with the trial judge’s decision.”
 We endorse that view. In the present context, the determination of whether a proposed trade mark entails the possibility of confusion is a vague standard that can be influenced by any number of factors. Similarity is a matter of degree (The European Ltd. v. The Economist Newspaper Ltd.  FSR 283 at 288) and the decision as to whether two marks are similar is one that is influenced by many possible considerations….
 In our view, this was a case where deference by the High Court to the expertise of the Assistant Commissioner was called for. We say that because the conclusion reached by the Assistant Commissioner, in relation to an issue calling for an evaluative assessment on her part, appears to us to be a conclusion which cannot be fairly characterised as wrong. She adopted an orthodox approach to the task and directed herself appropriately as to the legal test she had to apply. Having done so, she reached a conclusion which involved a value judgment on the likelihood of confusion or deception, which appears to us to be soundly based. That being the case, the High Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the Assistant Commissioner’s conclusion. He was, of course, entitled to reach a conclusion contrary to that reached by the Assistant Commissioner, but not to do so without giving weight to her views. If he had done that, we believe that he would have upheld the Assistant Commissioner’s decision. We are satisfied that that should have been the outcome of the High Court appeal.
This case may provide some assistance for practitioners considering the prospects of succeeding in an appeal from an IPONZ decision. The case supports the view that substantial weight should be given to the Assistant Commissioner’s findings in the original hearing. However, anecdotal feedback indicates that New Zealand courts may not necessarily adopt this approach, which gives some hope to parties seeking to appeal a New Zealand opposition decision.
This article is reprinted with permission from INTA Bulletin Volume 62 Issue 13, Copyright © 2007 the International Trademark Association.