WILD GEESE and WILD TURKEY – Birds of the same feather?

The Supreme Court of New Zealand recently considered whether the High Court, on appeal from a decision of the Assistant Commissioner of Trade Marks, must defer to that decision if the conclusion reached is one on which minds might reasonably differ (Austin Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103).

In June 2000, Stitching Lodestar applied to register WILD GEESE as a trade mark for various alcoholic beverages. Austin Nichols, the proprietor of the WILD TURKEY registration for whisky, opposed Stitching Lodestar’s application, claiming that the WILD GEESE mark is confusingly similar to its mark.

At the initial hearing, the Assistant Commissioner approved the WILD GEESE application for registration, claiming that confusion or deception would be unlikely to arise out of the use of the mark. The Assistant Commissioner found that the phonetic and visual differences between the marks outweighed the conceptual similarities. Specifically, she found that while both marks referred to birds, this was not enough to conclude that consumers would assume some kind of connection between the two marks.

Austin Nichols appealed to the High Court, where the decision of the Assistant Commissioner was consequently overturned. Gendall J acknowledged that the words “GEESE” and “TURKEY” did not look or sound alike, but held that both marks conveyed the idea of a “wild hunted game bird” and that this similarity would to lead to confusion or deception.

An appeal from a decision of the Commissioner of Trade Marks is by way of rehearing. In reaching his decision, Gendall J kept in mind the following comments of Hammond J in V B Distributors v Matsushita Electric Industrial Co Limited (1999) 9 TCLR 349 at paragraph 32:

“An appeal on the basis of a statutory provision of this character is not a case for deference. This Court is required to form its own views. How much (if any) weight should be given to the Commissioner’s views may well depend on what is in dispute. If, for instance, what is at issue is a matter of practice in trade mark applications then the experience of the Commissioner is not lightly to be disregarded. On the other hand, as with all specialist tribunals, there is a real benefit in that tribunal’s views being subjected to independent scrutiny. And to the extent that the determination of likelihood of confusion rests upon a comparison of the marks themselves, the appellate court is in as good a position as the trial tribunal to come to a conclusion.”

Gendall J accepted that some weight must be given to the decision of the Assistant Commissioner, but nevertheless felt that the case was one where “there is room for differing opinions or views, as to the probability of deception or confusion of the respondent’s mark” and that he must ultimately make his own assessment.

The dispute was appealed to the Court of Appeal, who agreed with the original decision of the Assistant Commissioner. In particular, the Court of Appeal agreed with the appellant that the concept of “wild hunted birds” is not a strong one and that the phonetic and visual differences between the marks are sufficient to distinguish them.

In finding in favour of Stitching Lodestar, the Court said that due weight must be given to the Commissioner’s decision and that Gendall J failed to do so. It is on this point that the leave to appeal to the Supreme Court was granted.

The Supreme Court held that Gendall J did not err in his approach. The case was one where minds might reasonably differ. Gendall J was free to use the Assistant Commissioner’s reasons as guidance in reaching his own conclusion, but the weight he placed on them was a matter for him, and he was quite entitled to disagree with the Assistant Commissioner’s decision. It was also noted that the Court of Appeal was wrong to leave the impression that Gendall J should have given more weight to the Assistant Commissioner’s views and depressed his own opinion.

The Supreme Court also considered whether the Court of Appeal formed its own view as a matter of fact and degree. The Supreme Court held that there was no error in how the Court of Appeal dealt with the matter on appeal. In the view of the Supreme Court, it was clear that the Court of Appeal had come to its own conclusion that the two marks were unlikely to be confused. It accordingly upheld the Court of Appeal’s conclusion that the WILD GEESE and WILD TURKEY marks are unlikely to be confused.

Barbara Sullivan - February 2008