By Alexandra Chubb, Senior Associate
US-based footwear and clothing giant, Deckers Outdoor Corporation, has launched legal proceedings in a US court against Sydney-based company, Australian Leather Pty Ltd, for using the word “ugg” to describe its sheepskin boots being sold in overseas markets. This is the latest in a series of disputes relating to use of the word “ugg” by Australian manufacturers of sheepskin boots.
Locally, “ugg” is a generic term to describe a flat-soled, sheepskin boot with fleece on the inside. While there are dozens of trade marks registered in Australia which contain the word “ugg” as part of a phrase or logo, the term “ugg” itself is non-distinctive and not able to be registered here. As a result, it is used by multiple manufacturers in the local market without issue. Overseas, where “ugg” has not entered the local vernacular, it’s a different story. Deckers Outdoor Corporation has successfully registered “UGG” as a trade mark in the US and over 130 other countries, including China and members of the EU. This means that manufacturers like Australian Leather who describe their boots as “ugg boots” in these countries run the risk of being sued for trade mark infringement by Deckers, who is well-known for being litigious in this area.
It is early days in the lawsuit against Australian Leather, but reports suggest that Deckers is seeking sweeping orders against the Australian company, including delivery of all its stock to Deckers in the US for destruction, transfer of all funds in Australia Leather’s bank accounts to Deckers, and millions of dollars in punitive damages. The first hearing is scheduled to occur in late July.
Closer to home, Senator Nick Xenophon has started a petition calling on Prime Minister Malcolm Turnbull to protect the Australian ugg boot industry, and to seek immediate support for Australian Leather in its dispute with Deckers. He has also foreshadowed introducing legislation
into the Senate, if he is re-elected, to protect Australian companies who use the word “ugg” to describe their products, stating that “If the French can protect ‘Champagne’, the Portuguese ‘Port’, the Spanish ‘Sherry’ and the Greeks ‘Feta’, then surely Australia can protect the word ‘Ugg’”.
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