UGG Trade Mark Dispute

The UGG trademark has been the subject of dispute in several countries. The trademark for “Ugh-Boots” has been removed from the trademark registry in Australia for non-use. Outside Australia and New Zealand, UGG (written in capital letters) is a registered trademark of Deckers Outdoor Corporation.
In 1971, an Australian surfer, Shane Steadman, registered the name “UGH-BOOTS” as a trademark in Australia and began selling sheepskin boots under that name. In 1982 he registered the name “UGH” and a logo containing a stylised Sun with the words “UGG AUSTRALIA”. In 1979, Brian Smith, another Australian surfer, brought several pairs of Australian-made boots to the US and began selling them in New York and to surfers in California. He set up Ugg Holdings Inc. and in 1996 purchased the trademarks from Steadman. In 1996 he sold his interest to Deckers and in 1999 Deckers registered the trademarks for “UGG” in the US.

In 1999, Deckers began asserting its new trademark and sent out cease and desist letters to Australian manufacturers. In the early 2000s, demand for ugg boots was soaring, partly as a result of US$8 million spent on marketing by Deckers, but also due to several celebrity endorsements. Australian and USA based manufacturers began selling uggs over the Internet, and Deckers’ began a serious effort to halt the Australian companies’ sales. In 2004, Deckers sent cease and desist letters to a number of Australian and USA based manufacturers, including Mortels Sheepskin Factory, preventing them from selling uggs on eBay or from using the word in domain names.

In response to these actions by Deckers, some Australian manufacturers formed the Australian Sheepskin Association to fight the corporation’s claim, arguing that “ugg” is a generic term referring to flat-heeled, pull-on sheepskin boots. They further argued that Australian manufacturers had been making and trading this style of boot for decades, including exporting them to the US. One of these manufacturers, Perth’s Uggs-N-Rugs, appealed to Australian trademark regulators. The officer who heard the case stated that the “evidence overwhelmingly supports the proposition that the terms (ugg, ugh and ug boots) are interchangeably used to describe a specific style of sheepskin boot and are the first and most natural way in which to describe these goods.” In 2006 Uggs-N-Rugs won the right to use the term UGG BOOT/S and variations such as UGH UGG BOOT/S. IP Australia also ruled that the trademark “Ugh-boots” should be removed from the trademark register for non-use as Deckers had only been using the UGG logo, not the UGH marks. Deckers retained the rights to their UGG logo as trade mark protection only applies for the way the mark appears in its entirety and not for the words it contains. To date Deckers have declined to pay Uggs-N-Rugs legal costs as required by the ruling. The 2006 ruling only applies in Australia and Deckers still owns the trademarks in all other jurisdictions, including the US, China, Japan and the European Union.

In 2005, the validity of the UGG trademark was challenged in federal court in California; the court ruled for Deckers, stating that consumers in the US consider UGG to be a brand name. In his final order, the judge stated that the defendants had provided anecdotal evidence of the term’s generic usage, but Deckers countered through submitting declarations from four professionals in the footwear industry who stated that “UGG” is widely recognised in the industry as a brand name, not a generic term. Deckers also petitioned the Oxford English Dictionary to change the definition of “ugg” from “a kind of soft sheepskin boot” to a definition that included UGG’s trademark.

In 2010, IP Australia ruled on the trademark opposition dispute between Deckers and Luda Production Pty Ltd, granting Luda the right to register the trademarks UGG AUSTRALIA (& Design) and MADE BY UGG AUSTRALIA with costs awarded against Deckers. The court found that based on sales, advertising and other promotions, Deckers did not have a significant reputation in an Australian market which was dominated by Luda Productions, and thus failed the requirements of the Trade Practices Act regarding public misapprehension of the origin of the manufacturer. The court noted that use of the trademark in Australia by Luda Productions predated Deckers infringement application by 22 years which negated Deckers claim that Luda was trading upon their reputation. Deckers has appealed the decision. (Source Wikipedia 21 Jan 2012)