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UGG Boots
The usage of the words 'UGG' and 'UGH' in relation to sheepskin boots by Australian manufacturers came to the attention of IP Australia through the Department of Foreign Affairs and Trade and media reports. The issue has provoked considerable media attention as manufacturers of sheepskin boots expressed their concern over action taken by the owner of trade marks containing UGH and UGG. There was discussion over whether these words can function as trade marks or are really generic terms
The issue first attracted media attention when American-based company, UGG Holdings Inc (a subsidiary of Deckers Outdoor Corporation), apparently threatened to litigate against Australian exporters and United States importers of sheepskin boots may have been using the terms UGG and UGH in trade marks, as descriptions of their goods or in relation to Internet activities. Deckers Outdoor Corporation owned registered trade marks in Australia for the words UGH-BOOTS and UGH, and for a logo featuring the words UGG, AUSTRALIA and a stylised picture of the SUN (the UGG logo). They are also the owner of trade marks in the United States.
When were Deckers’ trade marks registered?
The term UGH-BOOTS was registered in Australia as a trade mark 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.
Prior to registration, the Registrar of Trade Marks considers whether a trade mark has any
descriptive or generic meaning that may make it unsuitable for registration. In the event that
a mark passes this test, there is an opportunity for a concerned third party to
oppose registration on a range of grounds including a belief that the mark is generic.
Based on information available at the time, the UGH marks were found to be suitable for
registration and in the absence of any successful opposition actions were
subsequently registered. In the case of the UGG logo, the Registrar was of the view that
the combination as a whole met registrability requirements.
Current situation
To date, there have been three applications for
removal for non-use for trade mark registrations
owned by Deckers Outdoor Corporation. These
removal applications have all been filed by
Australian business owners and all three were
opposed by Deckers.
On 11 August 2006 the Registrar of Trade Marks
issued a decision relating to non-use of a stylised
form of the word UGG. The decision was that the
trade mark (number 785466) had been used in
Australia in the three year period ending 30 June
2004. Therefore the particular trade mark in
question will remain on the register.
It is important to recognise that trade mark
number 785466 is a composite trade mark and
trade mark protection only applies for the way the
mark looks or appears in its entirety (see below),
rather than the words used within it.
A previous decision on 16 January 2006 did result
in the removal of the trade mark UGH-BOOTS
(trade mark no. 245662). In this case the
Registrar determined that the trade mark had not
been used in Australia within the three year period
ending 30 November 2003 and was therefore
removed from the register as of 22 February 2006.
Similarly, the trade mark number 373173 (UGH)
was also removed from the Registrar due to nonuse.
The trade mark was removed on 27 March
2006 after Deckers Outdoor Corporation
withdrew their opposition.
It should be noted that once decisions are issued
by IP Australia, they may also be subject to appeal
to the Federal Court.
Does an Australian trade mark provide protection if you are trading on the Internet?
A trade mark registered under Australia's trade mark laws only provides rights for trade
within Australia's borders. Trade mark laws are national laws and each country registers
and protects trade marks within their own jurisdiction.
The Internet provides easy access to global markets and takes no account of national
borders. If you are trading on the Internet you need to understand the laws of the
country into which you are selling goods or services. If you place an offer for sale on the Internet in
Australia that invites purchase from overseas, this can amount to trading overseas
and could leave you vulnerable to legal action and expensive litigation. Likewise an overseas
proprietor selling goods in Australia via the Internet may infringe an Australian trade mark.
Can Deckers Outdoor Corporation enforce their trade marks?
Trade mark owners will always seek to protect their rights through available legal means and
have every right to take infringement action where appropriate. It may be possible to
successfully defend an infringement action if use has been clearly descriptive rather than of a
trade mark nature, but this is a complicated area and IP Australia cannot advise on the likely
outcomes of such a defence. Affected Australian businesses are strongly advised to
seek legal advice from professionals well versed in trade mark law.
If a trade mark has become generic, a case may be made before a court for removal of that
mark from the register of trade marks. Only the court system can give a definitive answer about
whether a term is generic. The question of whether the term UGG or UGH is generic has
not been considered by the courts.
What has been done to prevent situations like this from arising?
IP Australia is raising awareness about the importance of understanding prospective
markets prior to filing to reduce the possibility of litigation. Information is also provided in
relation to potential conflicts between trade marks and domain names through trade on the
Internet. IP Australia is committed to improving knowledge of intellectual property amongst the
general business community.
What action has the Government taken?
While the Australian Government is naturally concerned about the implications of the current
issue for our manufacturers, the enforcement of trade mark rights is a private legal matter
between the relevant parties. As IP Australia is not an enforcer of IP rights it does not have a
basis for intervention in any dispute.
In an effort to ensure that businesses involved in the manufacture of sheepskin boots are well
aware of potential conflicts in connection with trade mark matters, IP Australia has made
contact with industry representatives to provide correct and up-to-date information to the
sector. This organisation will continue to monitor the dispute and provide information as
is appropriate.
Who can help?
Advice and assistance from an IP professional should be sought. A list of
IP professionals can
be found on the IP Australia website, www.ipaustralia.gov.au.
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