The famous Aussie icon, the Ugg boot, has won the well publicised battle with American corporate, Deckers Outdoor Corporation (“Deckers”), regarding the validity of two registered trade marks for the terms “Ugh” and “Ugh-boots”.
The dispute surrounded two applications for removal for non-use of the trade marks “UGH-BOOTS” and “UGH” owned by Deckers. The decision by a Delegate of the Registrar of Trade Marks in the first Application for Removal issued on 16 January 2006 in Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5. For trade mark owners, it is a salutary reminder of the necessity of use of marks for retention of rights. The decision also contains interesting commentary on how trade marks must be strictly used to ensure use of the actual mark as registered thereby avoiding vulnerability to removal for non-use from the Register.
A Delegate of the Registrar of Trade Marks issued a decision to remove Registration No. 245662 UGH-BOOTS from the Trade Marks Register for non-use and dismissed the opposition by Deckers to the Application for Removal by Bruce and Bronwyn McDougall of Uggs–N–Rugs, Western Australia. The Application for Removal was based on the contention that there had been no use in Australia of the registered trade mark UGH-BOOTS for a three-year period ending one month before the filing date of the removal application (“the Relevant Period”). Deckers opposed the removal application on a single ground alleging simply that there had been use of the trade mark within the Relevant Period.
Central to the broader dispute between Deckers and Australian manufacturers of the Ugg boot is whether the term “Ugg boot” is generic as the descriptive name for a fleecy lined sheepskin boot or whether, because UGH and UGH–BOOTS have been registered as trade marks since the early 1970’s, those terms are distinctive of the fleecy lined sheepskin boots manufactured by Deckers and its predecessors. The decision of whether a trade mark is generic or has become generic can not be decided by the Trade Marks Office but only by the Australian Federal Court.
The Registrar’s Delegate in the removal proceedings found that it was proper for him to consider the inherent capability of the term UGH–BOOTS to distinguish because of the wealth of evidence filed by the Removal Applicants showing descriptive use of the term. One other crucial piece of evidence in the proceedings was a copy of an advertisement dated 3 November 2003 (“the Advertisement”) that appeared in the Sydney Morning Herald newspaper entered into evidence by Deckers. The date on which the Advertisement appeared was crucial because it purported to show use of UGH–BOOTS during the Relevant Period.
The Registrar’s Delegate found that the Advertisement could not be construed as a genuine attempt by Deckers to use UGH-BOOTS as a trade mark in Australia and also that it did not constitute use of a trade mark in good faith in the sense of being ‘genuine and commercial’ use of the trade mark. Deckers’ own evidence demonstrated that the only use that had been made was of UGG and UGG AUSTRALIA (outside of the Advertisement) and did not provide any documentary evidence to show use of the registered trade mark UGH–BOOTS i.e. with the hyphen. The Advertisement purported to seek sales from Deckers website which, according to the evidence, was not possible for Australian customers. As the web site purported to seek sales the Registrar’s delegate found that it could not be construed as seeking a licensee. A subsequent appointment of Pacific Sheepskins Pty Ltd as licensee after the Relevant Period was therefore irrelevant.
The Registrar’s Delegate found that “the evidence overwhelmingly supports the proposition that the terms UGH BOOT(S), UG BOOT(S) and UGG BOOT(S) are interchangeably used to describe a specific style of sheepskin boot”. As a result, those terms are not inherently capable of distinguishing those particular goods. The trade mark UGH–BOOTS “… is exceptionally weak trade mark material from the viewpoint of its inherent capacity to distinguish the opponent’s goods”.
The Registrar’s Delegate found that because the term UGH–BOOTS lacks inherent capacity to distinguish any identity that the term might have as a trade mark is derived “… from the hyphenated nature of the expression”. Any representation of the term without the hyphen so that it becomes UGH BOOTS therefore constitutes a material alteration to the identity of the trade mark. As the Advertisement of 3 November 2003 showed use of UGH BOOTS (without the hyphen) and not use of UGH-BOOTS (with the hyphen), the Registrar’s Delegate found that the Advertisement did not show any use of the trade mark as registered. It was therefore directed that the trade mark be removed from the Register subject to Deckers’ right to appeal the decision to the Federal Court by 6 February 2006.
Deckers did not appeal the Registrar’s decision to remove Registration 245662 UGH-BOOTS from the Register for non-use. The decision has therefore been made final and the trade mark UGH-BOOTS has been removed from the Register. In a parallel Application for Removal for non-use by Mortels Sheepskin Factory of Registration Number 373173 “UGH”, also owned by Deckers, the Australian Trade Marks Register indicates that opposition by Deckers to the Removal Application was withdrawn and that the registration has been removed for non-use.
