The battle for the UGG BOOT continues
By Kerrin Anderson07 Feb 2011
Sheepskin boots, commonly known as UGH or UGG BOOTS, have been a part of the Australian culture for many years. Before accepting a trade mark application for registration, the Trade Marks Office will consider whether a trade mark has any descriptive or generic meaning that may make it unsuitable for registration, as other traders would need to use the term to describe their goods without fear of infringement of a registered trade mark.
In past years, there has been much media attention over who owns the term UGH or UGG BOOTS, and if it has become a generic term. The case first attracted media attention when American based company, UGG Holdings Inc (a subsidiary of Deckers Outdoor Corporation [Deckers]), litigated against Australian exporters and United States importers of such boots using the terms UGG and UGH in trade marks, as descriptions of their goods or in relation to online marketing and trade.
Deckers owned registered trade marks in Australia for the words UGH-BOOTS and UGH (the UGH marks), and for a logo featuring the words UGG AUSTRALIA and a stylised picture of the SUN (the UGG logo). The term UGH-BOOTS had originally been registered by an Australian in 1971, while UGH was registered by the same owner in 1982. Both trade marks were sold to UGG Holdings Inc in 1996 as a result of a private business transaction. In 1999 UGG Holdings Inc successfully registered the UGG logo.
Based on information available at the time, the Trade Mark Office found that the UGH marks were suitable for registration and allowed them to proceed to registration. In the case of the UGG logo, the registrar was of the view that the combination as a whole met registrability requirements and again raised no objections.
In 2006, UGG Australia, which is owned by Deckers, brought proceedings against a small family business near Maitland, Mortels Sheepskin Factory (Mortels), for infringement of their trade mark registrations. Mortels, along with West Australian company Ugg-n-Rugs, fought the claim and won the right to the term UGG BOOT/S and variations such as UGH UGG BOOT/S etc as the court found that Deckers had only been using the UGG logo, but not the UGH marks in relation to their products.
The court then ordered that the UGH marks be removed for non-use however, the UGG logo was maintained. It is important to recognise that UGG logo is a composite trade mark and trade mark protection only applies for the way the mark looks or appears in its entirety, rather than the words used within it.
Despite a lack of ownership of the words UGG BOOTS held through registered trade marks, Deckers announced in early December that they have filed a trade mark infringement lawsuit against Emu Australia, a well known sheepskin boot manufacturer. Deckers alleged that UGG Australia‘s success has led an 'entire industry of companies that market their wares by deliberately confusing customers'.
In a statement released shortly thereafter, Emu chief operating officer Mr Dave Porter said: 'The fact that UGG Australia has filed a lawsuit against a company for misleading consumers makes us laugh down here in Australia'. Emu allege that UGG is simply used to describe sheepskin boots and that there are more than 70 registered trade marks in Australia and New Zealand that include the term UGG, in various logos and designs.
Although Deckers has a registered trade mark for their UGG logo, they will find it hard to stop others from describing sheepskin boots as UGG BOOTS as these are understood to be generic terms. We will continue to report on this case as it progresses.