UGG Since 1974™, a family-owned Australian business has been forced to change its name to, “Since 1974™” dropping all reference to UGG for customers outside of Australia and New Zealand (maintaining Ugg Since 1974™ in Australia and New Zealand only). This is as a result of  a ten-year legal dispute with US multi-billion dollar company Deckers Outdoor Corporation (Deckers), owners of the UGG® trade mark. The is the latest in an ongoing saga between the two companies which recently resurfaced after the owner of UGG Since 1974™ announced the transition on social media earlier this year.

   

Background

UGG Since 1974™ has been making the traditional Australian ‘Ugg’ style boots for over 50 years, for which they own the trade mark in Australia and New Zealand. The ‘Ugg’ style sheepskin boots are an iconic part of the Australian culture, intended to be worn for warmth and were often worn by Australian surfers in the 1960s.

Throughout the 1970s, popularity of the boots was on the rise, the name ‘Ugg’ or ‘Ugh’ became widely used in relation to the sheepskin boot in Australia.

In the late 1970s, Brian Smith, founded a competitor company selling ‘Ugg’ style boots in California which he later sold to a US multi-national corporation now known as Deckers. Following the acquisition, Deckers secured registered trade mark rights for the UGG® brand, and now owns the trade mark in over 130 countries. UGG® is undeniably one of the most recognisable brands globally for the sheepskin style boot.

Whilst UGG Since 1974™ pride themselves on offering handcrafted boots made from natural sheepskin authentic to Australia, they claim that the UGG® boots are made from synthetic materials to imitate natural sheepskin and are mass-produced outside of Australia. The similarity of the brand names and the goods provided has no doubt led to consumer confusion, whereby consumers who purchase UGG® boots may think they are purchasing an ‘authentic’ Ugg boot from Australia, with the same quality and craftsmanship as those made by the likes of UGG Since 1974™.

UGG Since 1974™, along with other Australian boot makers, remains in an ongoing dispute with Deckers who are targeting those companies for using the term ‘UGG’ even though the term originated in Australia and has become generic in its country of origin.

The rebrand to “Since 1974™”, removing reference to UGG outside of Australia and New Zealand, is seen by the Australian owner as a legal necessity; despite Deckers winning the right to use the ‘UGG’ name globally, the Australian manufacturers continue to defend the cultural heritage of the ‘Ugg’ boot, challenging whether ‘UGG’ can be protected as a trade mark globally at all. The rebrand has reignited the debate amongst consumers as to whether Deckers have misappropriated Australian culture by monopolising a culturally significant term. As it stands, Deckers cannot use the registered trade mark UGG® and instead can only refer to the boots as ‘UGG’ boots on their website in Australia and New Zealand.

The case is another example of a ‘David v Goliath’ IP dispute, where the uneven power dynamics and resource imbalance ultimately make it hard for small businesses to compete against multinational corporations, eventually getting pushed out the market.

Key takeaways

The ‘UGG’ case highlights the importance of a proactive, strategic and future-focused approach when obtaining brand protection. The key takeaways are:

• Secure international brand protection early to avoid future legal challenges. It helps to future-proof your brand and protect against any future knockouts from larger businesses.

• Consider filing in all countries in which you operate, including countries where you sell, manufacture and market, all whilst thinking about future expansion, to prevent others getting there first. In most of the world trade mark protection is granted on a first to file basis.
• Bear in mind that a term that is descriptive in one jurisdiction may not be regarded as such in another – and therefore be capable of protection.

If you would like to know more about protecting your brands, please get in touch with one of our trade mark attorneys.