Wolverine World Wide, Inc v Khoda Ali Ahmed

This matter concerned an opposition by Wolverine World Wide, Inc. (the Opponent) to the registration of a trade mark by Khodar Ali Ahmed (the Applicant). The dispute arose from the Applicant's trade mark application, which the Opponent contended should be refused registration. The hearing was conducted before Michael Kirov, acting as a delegate of the Registrar of Trade Marks.

The court was required to determine several grounds of opposition raised by the Opponent, specifically those based on sections 42(b), 44, 59, and 60 of the relevant Act. The core of the opposition under section 44 related to whether the Applicant's trade mark was substantially identical with, or deceptively similar to a trade mark with an earlier priority date registered by another person for similar goods or services, and whether exceptions such as honest concurrent use or prior continuous use applied. The ground under section 42(b) concerned whether the use of the Applicant's trade mark would be likely to deceive or cause confusion.

The delegate found that the Opponent had established its grounds of opposition under sections 44, 42(b), and 60 of the Act, and had partially established the ground under section 59. In reaching this decision, the delegate considered the substantial and long-standing reputation of the Opponent's trade mark, particularly in relation to footwear and related items. The delegate found the Applicant's adoption of the distinctive element "PUPPIES" (in its singular form "PUPPY") to be significant, noting that it was likely to mislead or deceive consumers, especially given the visual association with the Opponent's promotional material. The delegate also concluded that the substitution of "POSH" for "HUSH" in the Applicant's mark likely enhanced the likelihood of consumers being misled.

Consequently, the delegate refused to register the Applicant's trade mark application. As the successful party, the Opponent was awarded costs against the Applicant.