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UGG Trade Mark Battle: A Lesson in Brand Protection

By Blair Beven | Principal

Who gives an UGG! Many clients wonder why it’s necessary to formally trade mark their brand, especially if they have used their brand for many years without issues. The battle in Australia over the term UGG is a good lesson on why prior trade mark searches, evidence of prior use, and global registration is crucial for your business.

In 2004, as a surprise to many, Deckers Outdoors Corporation, a Californian company started to assert its legal rights in the term UGG which it owned in Australia. It threatened legal action against several Australian sheepskin manufacturers using “their” registered trade mark “UGG.” These threats were based on several Aussie companies using generic terms like ‘ug,’ ‘ugh,’ and ‘ugg’ to promote authentic Australian-made sheepskin products.

Deckers, claiming ownership of the “ugg” trade mark, initiated legal threats against every sheepskin manufacturer in Australia. What Decker had failed to realise is that by the early 2000s, “ugg” became synonymous with Australian sheepskin boots. That didn’t stop Deckers Outdoor Corp conducting prolonged legal battles with Australian manufacturers.

Despite the ‘Ugg Australia’ branding, Deckers’ UGGs and slippers are manufactured in China and exported worldwide, in contrast to the Australian Uggs made in Australia. Deckers built their case on branding, claiming to have invested millions in marketing the term “ugg,” accusing Australian manufacturers and retailers of misleading consumers.

Over the next two years, the Australian Sheepskin Association (ASA) searched for evidence that “ugg” is a generic term in Australia. They found ample evidence, dating back to World War I, in newspapers, magazines, and directories across Australia, the U.S., and the UK. In 2005, Uggs-N-Rugs, part of ASA, presented evidence to the Australian Trade Marks Office, leading to the success of having Deckers’ trade mark for “ugh-boots” removed from the register. The ASA defended their use of UGG by claiming prior use.

The outcome

While Australia and New Zealand’s sheepskin businesses (i.e. ‘UGG SINCE 1974’) can use the term “ugg,” Deckers still owns the trade mark UGG AUSTRALIA in Australia and UGG globally. Australian manufacturers are prevented from using the term and selling products under the UGG brand in the USA and many other countries. This doesn’t stop confusion in Australia.

Lesson learned

When searching for a business name or naming a product, ensure that you conduct thorough trade mark searches and register your trade mark to avoid costly litigation and consumer confusion before you engage in trade.

To delve deeper into the importance of trade marking, connect with us at XVII Degrees.

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