| One of the more difficult aspects of trademark | | | | the fact that UGG boots are made in China and |
| protection to explain to clients is that a trademark | | | | not Australia. They promote themselves as being |
| is only territorial in nature and not in fact | | | | the Australian made boots and focus on the fact |
| international. This means that each trademark that | | | | that Deckers are made in China. In essence they |
| is registered in each additional country will have to | | | | are trying to change UGG into more of a regional |
| be dealt with as an individual. This is especially true | | | | mark like Champagne. They want consumers to |
| when it comes to enforcement. A good example | | | | associate UGGS with a particular type of |
| of a brand owner failing to do this is Deckers the | | | | sheepskin boot being made in Australia and not a |
| makers of UGG boots. | | | | trade mark which indicates they are made by |
| The story of the UGGS Trademark Dispute | | | | Deckers. |
| In the past decade there has been a lot of | | | | What Not to Do |
| controversy over whether UGG is a brand name | | | | Just because Deckers has had their trademark |
| or a geographical indicator for a type of boot. | | | | revoked in Australia doesn’t mean that they |
| The boots themselves are made of tanned outer | | | | shouldn’t be as persistent in policing their |
| sheepskin and an interior made of wool. They | | | | marks in the EU and the US. One of the major |
| have been worn around the world particularly in | | | | problems for them is going to be with selling on |
| rural locations and then by aviators in WWI and | | | | the internet. As we have recently discovered, one |
| WWII. The term Ugg for this specific type of | | | | of their competitors will sell to the EU from a |
| sheepskin boot has been used in Australia since | | | | confusingly similar website in Australia. Although |
| the 1950’s and now many consumers believe | | | | there is not much they can do about the domain |
| that the boots are specifically related to Australia. | | | | name: AU because of the status of UGG as a |
| In 1971, someone first registered the term | | | | trademark in Australia, but they can get them to |
| UGH-BOOT as a trademark in Australia. The | | | | stop selling to the European and American |
| trademark lapsed due to non use. In 1999 the | | | | markets. Just because the website and the |
| American outdoor company Deckers registered | | | | boots are not an infringement in Australia |
| the term UGG Australia in 1999. By the early | | | | doesn’t mean that they are not in other |
| 2000’s the boot became widely popular being | | | | jurisdictions where Deckers still owns the trade |
| worn by celebrities and become sought after all | | | | marks for UGG. Many consumers in these |
| over the world. As a result Deckers became | | | | markets have probably bought the boots thinking |
| more protective of their brand and began issuing | | | | that they were buying boots from Deckers and |
| legal threats against over companies in Australia | | | | not from some random Australian boot company |
| who were using terms similar to UGG such as | | | | which is producing a lower quality boot. |
| UGH. | | | | Since Deckers is allowing this confusion to go |
| In 2006 a competitor of Deckers, Uggs-N-Rugs, | | | | unchecked they are unwittingly colluding in this |
| succeeded in having UG, UGG and UGH Boots | | | | public confusion. Their very logo contributes to the |
| removed from the Australian Trade marks | | | | confusion since it is UGG Australia even though |
| Registry. The Registry decided that the term was | | | | the boots are made in China. It would be so easy |
| generic and used to describe a specific type of | | | | to avoid this public confusion if they changed their |
| sheepskin boot in Australia. Deckers did not appeal | | | | brand to DECKERS UGG Australia. They should at |
| this decision. They still have retained their marks in | | | | the very least do a campaign to educate the |
| the EU and the US and competitors in those | | | | public about their boots and respond to their |
| countries can not market their boots as Uggs but | | | | competitors claims. |
| instead must market them as Australian | | | | Clearly, Deckers needs to do something fast to |
| Sheepskin boots. | | | | prevent confusion in the market place thus |
| One of the more interesting aspects of the case | | | | ensuring that the name UGGS is associated with |
| is that competitors of Deckers are focusing on | | | | quality products and not controversy. |