Roman Borisov v Shellin Pty Ltd

Roman Borisov, as the opponent, brought proceedings against Shellin Pty Ltd, the applicant, concerning the registration of a trade mark. The dispute centred on Borisov's opposition to Shellin's application to register a trade mark, based on grounds including section 60 of the *Trade Marks Act 1995* (Cth). The decision was made by Jock McDonagh, a Hearing Officer at Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the grounds of opposition, specifically those raised under section 60 of the Act, had been established. Section 60 of the Act concerns the registration of trade marks that are identical or deceptively similar to trade marks that have acquired a reputation in Australia. The time at which the grounds of opposition must be established is the date of filing of the application for registration.

The Hearing Officer was satisfied that the opposition had been established on the ground raised pursuant to section 60 of the Act. This conclusion was based on evidence demonstrating that Borisov had extensively used and promoted "JUMBO UGG brands," including a label, logo, and word mark, in connection with sheepskin footwear and other products in Australia since the late 1980s. The evidence included details of substantial sales figures exceeding $50 million between 2003 and 2014, extensive wholesale and retail distribution networks, and significant advertising and promotional activities across various media.

Accordingly, the Hearing Officer decided to refuse to register the trade mark applied for by Shellin Pty Ltd. As the successful party, Roman Borisov was awarded costs against the applicant in accordance with Schedule 8 of the *Trade Marks Regulations 1995*.