Ugg boots: the battle over trade mark rights
Court case pits American company against Australian manufacturer
American footwear giant Deckers has taken court action against local company Australian Leather for selling sheepskin boots called Ugg in the US.
Ugg boots a local phenomenon since the 1970s
In Australia warm woolly Ugg boots have been a winter staple since the 1970s. The sheepskin boots were warm and easy to slip into. The woolly boot has grown into fashionable footwear and a billion dollar industry around the world.
Local company Australian Leather argues that the name “Ugg” has its origins in Australia as a generic term for sheepskin boots and that Deckers should not have been allowed to claim a trade mark on a name that was already in use.
American company claims it has exclusive rights to “Ugg”
American company Deckers claims that it holds the trade mark to the name Ugg in the US and many other countries. According to Deckers, this means that nobody else can use the name Ugg to sell sheepskin boots.
Was the US trade mark on Ugg based on a falsehood?
According to Australian Leather, the US trade mark application falsely claimed that the word “Ugg” had no prior significance in the footwear industry. The Australian company claims that the current trade mark on “Ugg” held by Deckers should be cancelled, pointing out that Australian-made Ugg boots were exported to the US well before Deckers bought the US trade mark from an Australian entrepreneur in 1985.
Importance of protecting your intellectual property
The Ugg boots case revolves around the question of who has the trade mark rights to the word ‘Ugg’ in relation to sheepskin boots. The case demonstrates the importance of establishing trade mark protection in every jurisdiction in which a product is to be sold or distributed. It is crucial that trade mark protection is obtained early, so that would-be competitors do not have the opportunity to claim the trade mark for themselves.
The battle over the rights to “Ugg” is comparable to the battle over the right to use the term “champagne”. The French blocked the rest of the world from using the term on the basis that Champagne is a region of France. Consequently, we now have to label similar products as “sparkling wine”. It seems that Ugg boots are on the path to the same international legal battle.
If Australian Leather wins its case, the Ugg name may be available to all Australian footwear manufacturers to use when selling their products overseas.
Ironically, according to media reports, Deckers had been selling its boots stamped Ugg Australia, even though they are made in China.