The Australian Ugg Hill battle

Ugg boot manufacturing originated in Australia and New Zealand, hence when the US company Deckers registered a trademark for “UGG” in the US in 1999 and then went on  to secure the same trademark in over 130 countries around the world, trademark disputes ensued and are still continuing today. Decker’s trademark registrations have had a severe impact on the ugg manufacturers in Australia, reducing their client bases and therefore  putting many of them out of business.

Australian Leather Pty Ltd, a Sydney based ugg manufacturer that has been in the footwear business since the 1990s has recently come under fire from the American corporate. As part of their long term plan to trademark the word globally, Deckers filed a lawsuit against the boot manufacturer stating that they can no longer use the name “ugg” . The corporate has asked that all of the company’s stock and funds should be handed over to them as well as requesting punitive damages.

In Australia, the term “ugg boots” has become generic and is used by a number of manufacturers therefore it cannot be trademarked. However according to The Sydney Morning Herald, Nick Xenophon, the South Australian Independent Senator has declared that he has already taken action in order to protect the use of the word ‘ugg’ by Australian firms. He stated that like  "the French protecting champagne, the Portuguese protecting port, the Spanish protecting sherry and even the Greek protecting fetta", the Australians should protect their ugg boots.

Agricultural products, wines, spirits and food in general can have protected Geographical Indications (sui generis intellectual property rights). This means that only goods produced in that geographical area are legally allowed to use the geographical location in their name. Although Australia would not be able to obtain GI protection for their boots they may be able to protect it through new legislative measures.

This case is a perfect example of a brand name that has become generic due to consumers associating the name with the whole genre of goods rather than exclusively with the specific product. In order to prevent this happening to your brand you should  encourage your consumers from early on to only use your brand name when describing your product and not to use it for the type of goods or services into which your product falls.

The first court hearing for this new case is due to take place in July so we shall have to wait until then to hear the outcome.

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