Wolverine Outdoors, Inc v Marker Volkl (International) GmbH

This matter concerned an opposition by Wolverine Outdoors, Inc. (the opponent) against an International Registration Application (IRDA) by Marker Volkl (International) GmbH (the holder). The opposition was heard by Claudia Murray, a delegate of the Registrar of Trade Marks, in Melbourne on 12 April 2010. The dispute centred on whether the IRDA should be granted protection in Australia.

The primary legal issue before the court was whether the IRDA was substantially identical with, or deceptively similar to, another person's trade mark application or registration that had an earlier priority date, and covered goods or services that were similar or closely related to the holder's goods or services, pursuant to section 44 of the relevant legislation. The opponent also relied on grounds under sections 58 and 60, but these were not pressed or explored in detail by the court.

The court found that the opponent had met the onus of establishing its ground of opposition under section 44 on the balance of probabilities. The opponent, a subsidiary of Wolverine World Wide, Inc., demonstrated continuous use of its MERRELL trade mark and M device trade marks on footwear and clothing in Australia since 2000, with earlier adoption and use in the US. The court determined that the IRDA was either substantially identical or deceptively similar to the opponent's earlier trade marks for goods within classes 18 and 25.

Consequently, the court decided to extend protection in Australia to the IRDA only in relation to specific goods and services in classes 9, 28, and 41, which did not overlap with the opponent's established rights. The opponent was awarded costs against the holder.