Cross-examination in IPONZ proceedings: Part 2

The Appeal

The High Court of New Zealand recently issued its judgment in New Zealand Institute of Chartered Accountants v The Chartered Institute of Management Accountants ([2015] NZHC 818). 

At issue in the case was whether the Assistant Commissioner of Trade Marks had been correct to allow the respondent’s application to permit cross-examination of a witness in Registry proceedings.

The significance of the case

The case is significant for three reasons. 

First, it confirmed that the over-arching principle in determining such applications is “whether the Commissioner is persuaded that he or she will be materially assisted in the task of reaching a substantive decision” by the cross-examination sought.

Second, Brown J held that a decision under s 160(2)(b) of the Trade Marks Act 2002 permitting cross-examination is a discretionary decision. 

It therefore follows that the approach to be adopted on an appeal of such a decision is that recognised in May v May (1982) 1 NZFLR 165 (CA) and not that followed in cases concerning a general right of appeal (i.e. that outlined in Austin, Nichols & Co Inc v Stichting Lodestar ([2007] NZSC 103).  Accordingly, in an appeal from a decision which declined or allowed cross-examination in Registry proceedings, the appellant must persuade the Court that the Assistant Commissioner acted on a wrong principle, took into account irrelevant matters or omitted to factor in relevant matters or made a decision that was plainly wrong.  

Third, the Court ventured to suggest that applications for permission to cross-examine in proceedings before the Commissioner are likely to be a little more frequent than has traditionally been the case. 

Brown J thought that there were two reasons for this. 

One reason was “the degree of recognition nowadays given to the rule in Browne v Dunn” which has been “codified in s 92 of the Evidence Act 2006”.  Put simply, in a number of recent decisions the Courts have made it clear that it is not open to the Assistant Commissioner to resolve an evidential conflict against a party in the absence of cross-examination.

His Honour’s second reason for greater use of cross-examination was the inclusion of bad faith as an absolute ground for refusal to register a trade mark under New Zealand trade mark legislation.  The point being that where it is alleged that a trade mark has been applied for in bad faith it will often (but not always) be essential that the opportunity should be available to put to the witness the facts and matters relied on as disclosing bad faith.

Comment

Overall, the case confirms that the approach that the Assistant Commissioner had taken to the respondent’s application was not in error and that the guidelines she had outlined were useful and appropriate.