ON THE SUBJECT OF SUBJECTIVITY

Anyone practising trade mark law knows opinions often differ when two confusingly similar marks are compared.

In New Zealand, a perfect example is comparison of the marks "WILD GEESE" and "WILD TURKEY" - both used in relation to beer and other alcoholic beverages under classes 32 and 33. Registration of "WILD GEESE" was unsuccessfully opposed at a 2004 hearing, however, on appeal, the High Court held conversely. On further appeal, the Court of Appeal took the same view as the Assistant Commissioner (AC) at the initial hearing. In December 2007, the Supreme Court then determined what weight an appeal court should give to lower court value judgements: it confirmed that appellate courts are entitled to form their own opinions - "even if it was a conclusion on which minds might reasonably differ".

In 2008, the following two cases resulted in subjective decisions which equally divided opinion.

• LUCKY DREAM/LUCKY DRAW v LUCKY STRIKE
  Opposition was lodged against registration of the marks "LUCKY DREAM" and "LUCKY DRAW" under class 34, in relation to cigarettes, given the opponent's "LUCKY STRIKE" mark. Yet, the AC concluded that the marks were different conceptually, visibly and audibly. Moreover, she noted that in light of the legal restrictions around the sale and promotion of cigarettes (no advertising is allowed, nor any display of cigarettes on counters in New Zealand), consumers are generally brand loyal and would have to ask for a certain brand of cigarettes rather than purchasing them off the shelf, thereby further reducing any likelihood of deception or confusion.
  
  By contrast, in 2008, the High Court held that use of the marks was likely to cause deception and confusion as the marks had the same first word and shared the idea of success in a game of chance. The High Court therefore overturned the AC's decision, noting that due to the legal requirements limiting public display of the goods, consumers could point to and/or shopkeepers could select the wrong product with the former failing to recognise a different product had been retrieved or, worse yet, believing "LUCKY DRAW" or "LUCKY DREAM" products were part of the "LUCKY STRIKE" family. Accordingly, the Court thought a reasonable possibility of confusion existed.
• DAIMLERCHRYSLER v SANY GROUP
  DaimlerChrysler opposed Sany Group's application for registration of the mark "SANY" and device in relation to machines and vehicles in classes 7 and 12.
  
  The AC agreed there was substantial awareness of DaimlerChrysler's marks domestically, in relation to passenger cars and trucks. However, she considered that the marks were visually and conceptually different, as the device element of Sany's mark suggested rotational movement and the barbed lines pierced the circle around it, coupled with inclusion of the prominently displayed word "SANY"; whereas DaimlerChrysler's device marks were said to consist of a sleek (not barbed), symmetrical, three-point star within an unbroken ring, that therefore appeared as a static mark.
  
  Ultimately, the AC did not think use of Sany's marks would be likely to deceive or cause confusion, and registration was allowed. However, a straw poll at a meeting of the New Zealand Institute of Patent Attorneys in 2008 showed that opinion on confusing similarity was still divided. The AC's decision is currently under appeal.

In light of the "WILD TURKEY" dicta, can any of these views be referred to as "correct" or "incorrect", and what is the likelihood of success on appeal? Again, opinions vary: even amongst the judiciary.

By Rachel Dawson, Senior Solicitor