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