UGG – The little word that brings big trade mark disputes

A new year and a new federal court battle looms in the saga of UGG. The UGG Boot is the sheepskin boot which always attracts attention. Some view the thing as a fashionable must-have item while others view it as a ridiculous fashion crisis. Whatever the case may be, claims for ownership of the brand are ruthless.

The term UGG is now accepted as being a generic term. However, trade mark rights can be attached to uniquely stylised logos which include the word.

Deckers Outdoor Corporation is a U.S. company which notoriously acquired a number of trade mark registrations and rights in various UGG marks and aggressively attempted to enforce those rights. A few years ago, certain marks owned by Deckers were successfully challenged on the basis of non-use. However, Deckers still own a number of other UGG registrations and continue to seek rights for other variations.

A new player in the UGG trade mark saga is Luda Productions, an Australian company which has been selling UGG boots for a significant number of years. Luda sought trade mark protection for a number of logos which include the word UGG.

Deckers challenged the registration of Luda’s marks in an opposition before IP Australia. The oppositions were dismissed. The key factors which influenced the decisions being that Luda were able to provide convincing evidence of prior use of their marks and Deckers failed to prove that they held a reputation in the marks in the Australian market at the time the marks were filed.

Deckers are not giving up and have filed for an appeal of the opposition decisions with the Australian Federal Court. It is likely the case will not be heard until late 2011, so stay tuned!

by Simon Ellis

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