UGG is an American Footwear Company and is a division of Deckers Outdoor Corporation, a footwear designer from California since 1973. However, 'ugg' is also a generic term used in Australia which refers to unisex sheepskin boots originating from Australia and New Zealand.
The issue cropped up in 2016, when an Australian ugg manufacturer sold 12 pairs of ugg boots to customers in USA and the description of the boots were displayed as 'ugg'. Deckers instantly took cognizance of the case and initiated legal proceedings against the Australian manufacturer claiming infringement of the 'UGG' trademark and the design patent of its shoes. Deckers submitted that it has the registration of the UGG trademark in over 130 countries worldwide.
The jury in the abovementioned case awarded Deckers damages to the tune of USD 450,000, however, the two issues remains pending before the court,
- Did the Australian manufacturer willfully infringe upon Decker's trademark?
- Is the mark 'UGG' enforceable keeping in mind the generic nature of the term?
Generic names are common words used in a certain lingo/country, as per Trademark laws, such words/terms cannot be registered as a trademark simply since one single person/entity cannot be the sole proprietor of a term used widely across a region! The word 'ugg' similarly, cannot be registered as a trademark in Australia as per the Trademarks laws of the country unless it is depicted as a logo. Thus, the public is free to use to use the term 'ugg' simply to describe sheepskin boots.
For example, the terms 'lassi', 'khadi', 'namaste' cannot be registered as a trademark in India since they are generic words used commonly amongst the public at large. However, if one of these words is registered out of India as a trademark, this would bring us to the question that would an Indian manufacturer/seller be held liable in such a country for using its own region's generic term?! How can this issue be combatted? Maybe a law should be passed where persons using generic terms originating in their country are not liable to trademark infringement in other countries? Or is it just the responsibility of the individuals selling in foreign land to conduct a thorough search on whether or not the generic terms used by them are violating the rights of any third party?! What do you think?
Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan
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