In the recent decision of Austin, Nichols Inc v Stichting Lodestar  NZSC 41, the Supreme Court of New Zealand has clarified the weight that should be given to the decision of the Commissioner of Trade Marks by the High Court on an appeal.
An application for the trade mark WILD GEESE in respect of alcoholic beverages was opposed by the registered proprietor of the trade mark WILD TURKEY. The Assistant Commissioner of Trade Marks held that the two marks were “too dissimilar” to be deceptive or confusing and allowed registration of the trade mark WILD GEESE.
This was appealed to the High Court, which allowed the appeal and refused registration of the trade mark WILD GEESE. Whilst acknowledging that “judges, of course, invariably accord a Commissioner’s decision considerable weight because of his or her position as an expert tribunal”, Gendall J held that in his opinion the applicant had not discharged the onus or burden on it to satisfy the Court that use of the trade mark WILD GEESE would not be likely to cause confusion or deception.
Court of Appeal
The Court of Appeal allowed the applicant’s further appeal and granted the application for registration. In its judgment the Court of Appeal suggested that the High Court had arrived at its decision wrongly, because it had erred in giving insufficient weight to the Assistant Commissioner’s views. Controversially, the Court of Appeal expressed the view that:
 …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.
The Court went on to agree with the Assistant Commissioner’s conclusion, holding that the two marks were unlikely to be confused.
Leave to appeal was granted by the Supreme Court. The short point raised by the appeal was whether the High Court on an appeal under s27(6) of the Trade Marks Act 1953 must defer to the assessment of the Commissioner, if the conclusion he or she has reached is one on which reasonable minds may differ.
This case attracted a great deal of attention, notably from the International Trademark Association which sought and was granted leave to intervene, being concerned with certain passages in the Court of Appeal’s judgment and their possible implications for future trade mark appeals.
In its decision, the Supreme Court of New Zealand held that an appeal under the Trade Marks Act 1953 (and similarly the Trade Marks Act 2002) is a general appeal and the High Court is required to form its own opinion on the merits of the case.
The weight that an appellate court gives to the decision of the Commissioner is a matter of judgment; however it is an error for the High Court to defer to a tribunal or Lower Court’s assessment without forming its own opinion. Thus, the Supreme Court concluded that the approach adopted by the High Court Judge was “consistent with his appellate obligations” and that the Court of Appeal was wrong to imply that the High Court Judge had erred in his approach.
Nonetheless, the Supreme Court dismissed the appeal, being satisfied that the Court of Appeal had also considered the merits of the appeal and had come to its own decision.
The Supreme Court of New Zealand upheld the general principle that each court is entitled to come to its own decision on an appeal, in particular when that decision is a matter of reasoning or comparison.
This decision is in keeping with the well-established principles governing all general appeals. It should be a relief to those concerned at the prospect of a narrowed scope of appeal, which could only create additional jurisdictional hurdles for appellants.