Trademark dispute turned UGG-ly


Ugg boots are as iconically Australian as the Opera House and Harbour Bridge, but over the last several years, the little old sheepskin boot has been the centre of a very un-Australian brand name battle between a large American company and small Aussie manufacturers.

In Australia and New Zealand, “ugg” has been used as a generic term referring to flat-heeled, pull-on sheepskin boots, and multiple Australian manufacturers use the term when naming, listing and advertising their products. However, one American company staked their claim on the name and it has led to one UGG-ly trademark dispute.

If there was ever an example of the risks in trading under a name that hasn’t received trademark protection, the Ugg Boot case would have to be it.

Luda Production, a family firm, has been making sheepskin shoes under the name “Ugg Boots”, in its local Australian factories, for decades. However, Deckers Outdoor Corporation, an American company that makes sheepskin boots in China and New Zealand, launched an attack on businesses like Luda that were using the name “Ugg Boots” on the basis that it held the trademark registration in Australia for that name.

Luda Production realised they were in trouble and tried to protect themselves from being driven out of business by the American company by registering a trademark with the words “Ugg Australia”.

And so the trademark battle ensued.

It seemed as though Luda Production would come out of the dispute successful. They argued that they had started using the phrase in Australia before the American company’s mark had been used. Even though it seemed that Luda had used the name first, Deckers had the right to appeal to the Federal Court, a battle no one wants to have to face.

The frustration of the situation is set out perfectly in a quote from Luda Production’s general manager Lena McDonald: “We have a US company that doesn’t manufacture in Australia but wants to exclusively own the name Ugg Australia. They are telling us we don’t have a right to our own history.

The trademark battle serves as a stark reminder to all businesses that even though you have used a business or brand name for years, and even if you believe you are the first one to have used it, one day down the road, you might be forced into a trademark battle to prove your rights to use the name you always assumed you had.

Don’t risk the potentially dire consequences of failing to take steps to protect your business and brand names before someone else stakes a claim on them. The best way, of course, to avoid this kind of fight is to take pre-emptive action and be the first to register your mark.

About the Author

Joanna Oakey is the Director of Aspect Legal, a progressive legal company focused on providing a proactive and innovative approach to the law. Joanna draws from key experiences in multiple jurisdictions, and has experience working with a large and diverse portfolio of organisations ranging from SMEs to corporates in the areas of commercial law, mergers and acquisitions, procurement and branding. She has also conducted seminars throughout Australia in contract law, compliance and the Competition and Consumer Act. Get in touch via Aspect Legal, Facebook, Twitter, LinkedIn.

  • Graham Apolony

    This serves as a lesson to all of us that assumed that the name we use actually belongs to us. Many people mistakenly believe that they are protected because they have registered a business name with ASIC.

    You need to cover all the bases before it becomes a problem as most of us can’t afford the cost of defending our right to use the name, in court.

    Graham Apolony
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