Court case pits American company against Australian
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
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
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
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
This judge granted an injunction in broad terms, consistent with the usual trade mark and copyright infringement orders.
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