UGG-ly trademark disputes

The Ugg Boot is seen by some to be as iconically Australian as the Opera House and Harbour Bridge. But the little old sheepskin boot has over the last 6 years been the centre of a very un-Australian brand name battle between a large American company and small Aussie manufacturers.

This battle serves as a reminder of the dire consequences of failing to take steps to protect business and brand names before someone else gets in first.

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.

The family firm Luda Production has been making sheepskin shoes under the name “Ugg Boots”, in its local Australian factories, for decades. But 6 years ago 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, realising they were in trouble, then tried to register a trademark including the words “Ugg Australia” to protect themselves from being driven out of business by the American Deckers. And what ensued has been a battle of David and Goliath proportions.

Last September, it looked as though Luda would be successful on the basis of their argument that they had started using the phrase in Australia before the American company’s mark had been used. But now, even though it seems that Luda had used the name first, Deckers has appealed, and the matter now looks set to go the doors of the Federal Court.

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 Ugg Boots battle is a stark reminder that even though you have used a business name or brand name for years, and even if you believe you are the first one to have used it, one day down the track, you might be forced into an Ugg Boots type of battle to prove your rights to use the name that you always assumed you had.

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…

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