Daimler AG v Sany Group Co Ltd

[2015] NZHC 290

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV-2014-485-010288 [2015] NZHC 290

UNDER	the Trade Marks Act 2002
IN THE MATTER	of an appeal from the decision of the Assistant Commissioner of Trade Marks dated 16 July 2014
AND	New Zealand Trade Mark Nos 843228 and 843229
BETWEEN	DAIMLER AG Appellant
AND	SANY GROUP CO LTD Respondent

Hearing:	26 February 2015 (via Telephone Conference)
Counsel:	T A Huthwaite for Appellant M T Lennard for Respondent
Judgment:	26 February 2015

JUDGMENT OF COLLINS J

[1]      This judgment briefly explains why I must recuse myself from hearing an appeal by Daimler AG (Daimler) against a decision of the Assistant Commissioner of Trade Marks dated 16 July 2014. The respondent is Sany Group Co Ltd (Sany).

[2]      The appeal is scheduled to be heard by me on 2 March 2015.

DAIMLER AG v SANY GROUP CO LTD [2015] NZHC 290 [26 February 2015]

Background

[3]      I have previously heard a related proceeding.  In Daimler AG v Sany Group

Co Ltd v Daimler AG,1 I said that the device elements in the Sany mark

were not visually or conceptually similar to the Daimler device marks.

[4]      My  decision  has  been  appealed  by  Daimler.     The  Court  of  Appeal  is scheduled to hear that appeal on 28 July 2015.

[5]      The essence of Daimler’s appeal to the Court of Appeal is that:

(1)I  failed  to  apply  the  correct  test  when  comparing  the  marks  in question;

(2)       I placed too much emphasis on the differences between the parties’

marks;

(3)My  finding  that  Daimler’s  marks  were  visually  and  conceptually different from Sany’s mark was wrong.

[6]      The appeal scheduled to be heard by me concerns Sany’s device mark

1      Daimler AG v Sany Group Co Ltd [2014] NZHC 532.

(ie the mark excludes the word SANY) and Daimler’s marks which were the subject

of my decision in 2014.

[7]      Daimler is concerned that my earlier findings preclude me from hearing the appeal on 2 March 2015.

[8]      The law which governs when a Judge should recuse himself or herself is substantially encaptured in the following extract from Muir v Commissioner of Revenue:2

It is not possible or desirable to create a catalogue of disqualifiers for judges in which a reasonable apprehension of bias may arise, but some broad principles can be stated.  First, a judge should not decide a case on purely personal considerations.  Secondly, there should not reasonably be room for a perception that the judge will decide the case on anything but the evidence in front of him or her.  Thirdly, a judge must be in a position to consider all potentially relevant arguments.  Fourthly, there may conceivably be a series of  events  or  rulings  which  reasonably  warrant  an  inference  that  the challenged judge’s perception is warped in some way.

[9]      Daimler relies on the second and fourth principles when submitting I should recuse myself.

[10]     The approach taken in Muir was substantially endorsed by the Supreme Court in Saxmere Company Ltd v Wool Board Disestablishment Company Ltd 3  where it was explained that a Judge was disqualified from hearing a case if a fair-minded and informed lay observer might reasonably apprehend there was a real and not a remote possibility that the Judge might not bring an impartial mind to the resolution of the question the Judge was required to decide.

[11]     I am satisfied that the similarity in the issues between the appeal which I have previously decided and the appeal which I am scheduled to be decided are such, that my earlier findings might reasonably lead an informed fair-minded lay person to

believe that I may not bring an impartial mind to determining the latest appeal.

2      Muir v Commissioner of Inland Revenue [2007] NZCA 334, [2007] 3 NZLR 495 at [64].

3      Saxmere Company Ltd v Wool Board Disestablishment Company Ltd [2009] NZSC 72, [2010] 1

NZLR 35.

[12]     Accordingly,  I  am  obliged  to  recuse  myself  from  hearing  the  appeal scheduled for 2 March 2015.

[13]     Inquiries reveal that, unfortunately, no other Judge can be allocated to hear the appeal on Monday 2 March 2015.  That hearing will be vacated.  Ultimately, this may not be as disruptive as might otherwise be the case, because the parties may very well  benefit  from  the  decision  of  the  Court  of Appeal  when  it  hears  and determines the appeal from my earlier judgment.

[14]     For this reason, the present appeal should not be heard until the Court of

Appeal has delivered its judgment.

D B Collins J

Solicitors:

Baldwins Law Limited, Wellington for Appellant

Ellis IP Limited, Wellington for Respondent