Ugg Australia
Encyclopedia
UGG Australia is an American footwear company and is a division of the Deckers Outdoor Corporation
, Goleta, California
.
UGG Australia footwear is manufactured in China.
UGG is a registered trademark in the United States and over 100 other countries for their brand of sheepskin boots
and other footwear, as well as bags, clothing, outerwear and other goods. Deckers also owns registrations for their UGG AUSTRALIA brand in various countries around the world.
The UGG Australia brand is best known for its "Classic" sheepskin boots in the Australian ugg boot style
, worn by both men and women. Sheepskin boots have been identified as a fashion trend for men and women since the early 2000s. The range has expanded to include not only footwear, but UGG brand bags, clothing, outerwear, hats, gloves and other goods. Deckers has reported sales of US$689 million under the UGG brand in 2008, an increase from US$14.5 million in 1995.
Bruce and Bronwyn McDougall, owners of Uggs-N-Rugs
, a Western Australia
-based manufacturer, started legal action against the UGH-BOOTS registration in 2005. Specifically, they brought a non-use action against Deckers alleging that Deckers had not actively used the UGH-BOOT trademark in Australian commerce for the past three years. Their action was successful, and the UGH-BOOT registration was removed from the Australian Trademark Registry. In their reasons, the officer states:
In a second non-use action between Deckers and Luda Production Pty, IP Australia confirmed that Deckers owned the trademark of their UGG AUSTRALIA label (with sun-like device), however the scope of the trademark was narrowed, restricted to just footwear. In their decision, the officer states:
Finally, in 2010, IP Australian ruled on a dispute dating back to 2004. The decision rejected Deckers Outdoor Corporation Inc's objections, and granted Luda Production Pty Ltd the right to move to the registration phase of their UGG AUSTRALIA and MADE BY UGG AUSTRALIA labels and the phrase MADE BY UGG AUSTRALIA, subject to appeal. In their decision, the officer specifically refers to the phrase UGG AUSTRALIA:
Deckers Outdoor Corporation holds registrations for the UGG trademark in the United States, China and the European Union and 100+ other countries. The validity of the UGG trademark outside of Australia has also been challenged, but courts have consistently upheld its validity. In 2005, the validity of the UGG trademark was challenged in Federal Court in California; the court ruled for Deckers, stating that consumers in the United States consider UGG to be a brand name. A similar challenge was also rejected in the Netherlands
, where the court ruled that UGG is a well-known brand in the Benelux
economic zone. In that case the court stated: "... the objection (to validity) will be stricken down. [Defendant's argument is] that Australian companies, such as Jumbo Ugg believe that the word UGG is a generic name. One cannot establish the fact that this is considered a generic name in Benelux based on the opinion of one or more companies in Australia. ... therefore, the legitimacy of the brand is upheld. The court has no reason to doubt that [UGG] is a well-known brand in Benelux."
Likewise, the National Arbitration Forum
, which has been appointed by ICANN
to resolve most Internet domain name
disputes, has used Deckers Outdoor Corporation ownership of the UGG trademark in the United States as part of its decision to direct Internet domains containing UGG to be transferred to Deckers.
On February 10, 2011, Ugglebo Clogs filed suit against Deckers Outdoor Corp with allegations of unfair competition and deceptive trade practices based on Deckers’ use of the UGG trademark for clogs and footwear. In the suit Ugglebo alleges that through "aggressive litigation, coincidence, and advertising, Defendant has successfully converted "ugg" from a generic term for sheepskin boots in Australia into a trademark for boots in the United States. Furthermore, Defendant has now extended the trademark to many non-boot footwear products such as, for example clogs, slippers and moccasins, as well as non-sheepskin." The suit also alleges reverse confusion, a situation where the senior user’s mark (Ugglebo) becomes dwarfed by the junior user’s mark (Decker), causing consumers to presume the senior user to be the infringer. Ugglebo brand clogs have been manufactured since 1965.
and trade dress
case, a generic term defense was rejected by a Dutch
court. La Cheapa distributed sheepskin boots on an Internet site from the Netherlands, describing them on its website as "100% authentic Ugg Australian boots!!!" with "UGG logo on the heel" in boxes virtually identical to Deckers packaging. Ruling in favor of Deckers with costs awarded against La Cheapa, the officer who heard the case stated it cannot establish as fact that "ugg" is considered a generic name in the Benelux
, based on the opinion of one or more companies in Australia. The case is binding law throughout much of Western Europe under the Madrid Protocol.
Law enforcement officials in Great Britain, the U.S. and China have reported seizures of counterfeit 'UGG Australia' boots. Deckers continually monitors usage of the UGG trademark on the World Wide Web, taking action against auctions and websites that infringe its trademark. The Australian Trade Marks Office, IP Australia cautions:
In response to counterfeits being sold on the Internet, people of various ages and nationalities have generated websites, blogs and videos on how to spot fake 'UGG Australia' boots.
. In the decade beginning in 2000, the group called for the boycott of ugg boots and their replacement with alternatives not made from animal skin.
In 2007, Pamela Anderson
, realising that ugg boots were made of skin, wrote on her website: "I thought they were shaved kindly? People like to tell me all the time that I started that trend — yikes! Well let's start a new one — do NOT buy Uggs! Buy Stella McCartney or juicy boots." In February 2008, the Princeton Animal Welfare Society staged a campus protest against the fur industry, particularly attacking the ugg boot industry. "Students lay in the newly fallen snow on the Frist Campus Center's North Front Lawn on Friday afternoon, feigning death, wearing coats covered with fake blood and sporting signs that read, 'What if you were killed for your coat?' "
Deckers Outdoor Corporation
Deckers Outdoor Corporation is a footwear manufacturer based in Goleta, California, United States. It began in 1973 as a sandal producer, run by Doug Otto. Deckers currently manufactures six brands, Teva, UGG Australia, Simple Shoes, Sanuk, Tsubo, Ahnu and Mozo.- Teva :Mark Thatcher was the...
, Goleta, California
Goleta, California
Goleta is a city in southern Santa Barbara County, California, USA. It was incorporated as a city in 2002, after a long period as the largest unincorporated, populated area in the county. As of the 2000 census, the Census-designated place had a total population of 55,204, however, a significant...
.
UGG is a registered trademark in the United States and over 100 other countries for their brand of sheepskin boots
Sheepskin boots
Sheepskin boots are boots made from sheepskin. The wool on sheepskin has good insulating properties and so such boots are commonly worn when it is cold....
and other footwear, as well as bags, clothing, outerwear and other goods. Deckers also owns registrations for their UGG AUSTRALIA brand in various countries around the world.
The UGG Australia brand is best known for its "Classic" sheepskin boots in the Australian ugg boot style
Ugg boots
Ugg boots are a unisex style of sheepskin boots, made of twin-faced sheepskin with fleece on the inside and with a tanned outer surface, often with a synthetic sole....
, worn by both men and women. Sheepskin boots have been identified as a fashion trend for men and women since the early 2000s. The range has expanded to include not only footwear, but UGG brand bags, clothing, outerwear, hats, gloves and other goods. Deckers has reported sales of US$689 million under the UGG brand in 2008, an increase from US$14.5 million in 1995.
History
In 1978, an Australian surfer, Brian Smith, introduced his UGG brand boots to the United States, arriving with two dozen pairs. In his first season in business, Brian sold 28 pairs of boots. The UGG brand steadily grew, and in 1995 Deckers Outdoor acquired the business and continued to expand it. Sheepskin boots are now very popular worldwide.Trademark controversy
In Australia and the United States, Deckers' rights in the UGG mark have been challenged, with differing outcomes. In 1971, Shane Steadman registered the trademark UGH-BOOT on the Australian Trade Mark Registry, and obtained an Australian registration for UGH in 1982. These registrations remained valid in Australia until removed for non-use in 2006. Steadman sold his UGH brand boots widely in Australia throughout the 1970s and 1980s. This registration was subsequently sold to Deckers Outdoor Corporation, which also registered other trademarks including the UGG AUSTRALIA label (with sun-like device) in Australia.Bruce and Bronwyn McDougall, owners of Uggs-N-Rugs
Uggs-N-Rugs
Uggs-N-Rugs is a small business in Perth, Western Australia, manufacturing and retailing ugg boots. In 2006 Uggs-N-Rugs successfully challenged the registration of ugg/ug/ugh as a trade mark in Australia and continues to challenge the trademark registration through the Australian Sheepskin...
, a Western Australia
Western Australia
Western Australia is a state of Australia, occupying the entire western third of the Australian continent. It is bounded by the Indian Ocean to the north and west, the Great Australian Bight and Indian Ocean to the south, the Northern Territory to the north-east and South Australia to the south-east...
-based manufacturer, started legal action against the UGH-BOOTS registration in 2005. Specifically, they brought a non-use action against Deckers alleging that Deckers had not actively used the UGH-BOOT trademark in Australian commerce for the past three years. Their action was successful, and the UGH-BOOT registration was removed from the Australian Trademark Registry. In their reasons, the officer states:
- The opponent has not demonstrated any use of the trade mark as registered, whether before, during, or after the period in question. In fact, read closely, Mr Kalinich’s sworn statement, above, appears to affirm that the opponent has not used the trade mark as registered.
In a second non-use action between Deckers and Luda Production Pty, IP Australia confirmed that Deckers owned the trademark of their UGG AUSTRALIA label (with sun-like device), however the scope of the trademark was narrowed, restricted to just footwear. In their decision, the officer states:
- I am satisfied that there has been genuine commercial use of the trade mark in relation to the following goods: footwear, including boots, shoes and clogs. Subject to any appeal from this decision, I direct that after 28 days from this decision, the trade mark registration be restricted to these goods.
Finally, in 2010, IP Australian ruled on a dispute dating back to 2004. The decision rejected Deckers Outdoor Corporation Inc's objections, and granted Luda Production Pty Ltd the right to move to the registration phase of their UGG AUSTRALIA and MADE BY UGG AUSTRALIA labels and the phrase MADE BY UGG AUSTRALIA, subject to appeal. In their decision, the officer specifically refers to the phrase UGG AUSTRALIA:
- The applicant [Luda Productions Pty Ltd] has attested to use of the words ‘UGG Australia’ in various forms over the years. None of the versions are particularly embellished, though some are accompanied by various descriptive additions. All the various versions provided as examples in the evidence of use fall into the category of substantially identical trade marks. All are clearly identified via the words ‘UGG Australia’. There is no other significant identifying feature in any of the applicant’s trade marks when in use. I am satisfied that the applicant has substantiated appropriate use for the provisions of subsection 44(4), and that it is thus appropriate to apply that subsection in the applicant’s favour.
Deckers Outdoor Corporation holds registrations for the UGG trademark in the United States, China and the European Union and 100+ other countries. The validity of the UGG trademark outside of Australia has also been challenged, but courts have consistently upheld its validity. In 2005, the validity of the UGG trademark was challenged in Federal Court in California; the court ruled for Deckers, stating that consumers in the United States consider UGG to be a brand name. A similar challenge was also rejected in the Netherlands
Netherlands
The Netherlands is a constituent country of the Kingdom of the Netherlands, located mainly in North-West Europe and with several islands in the Caribbean. Mainland Netherlands borders the North Sea to the north and west, Belgium to the south, and Germany to the east, and shares maritime borders...
, where the court ruled that UGG is a well-known brand in the Benelux
Benelux
The Benelux is an economic union in Western Europe comprising three neighbouring countries, Belgium, the Netherlands, and Luxembourg. These countries are located in northwestern Europe between France and Germany...
economic zone. In that case the court stated: "... the objection (to validity) will be stricken down. [Defendant's argument is] that Australian companies, such as Jumbo Ugg believe that the word UGG is a generic name. One cannot establish the fact that this is considered a generic name in Benelux based on the opinion of one or more companies in Australia. ... therefore, the legitimacy of the brand is upheld. The court has no reason to doubt that [UGG] is a well-known brand in Benelux."
Likewise, the National Arbitration Forum
National Arbitration Forum
The National Arbitration Forum , founded in 1986, provides arbitration and mediation services to businesses, based at its Minneapolis, Minnesota headquarters and offices in New Jersey. The company is one of the United States's largest and most controversial dispute resolution companies...
, which has been appointed by ICANN
ICANN
The Internet Corporation for Assigned Names and Numbers is a non-profit corporation headquartered in Marina del Rey, California, United States, that was created on September 18, 1998, and incorporated on September 30, 1998 to oversee a number of Internet-related tasks previously performed directly...
to resolve most Internet domain name
Domain name
A domain name is an identification string that defines a realm of administrative autonomy, authority, or control in the Internet. Domain names are formed by the rules and procedures of the Domain Name System ....
disputes, has used Deckers Outdoor Corporation ownership of the UGG trademark in the United States as part of its decision to direct Internet domains containing UGG to be transferred to Deckers.
Pending USA cases
On December 25, 2010, Deckers Outdoor Corporation filed a trademark infringement suit in a bid to stop Emu Australia from using the UGG name on its sales website (.com). On December 30, Emu Australia counter-sued for the cancellation of Decker's UGG trademark in the U.S. Emu's suit alleges that Decker's trademark was obtained after a false statement to the U.S. Trademark Office and was therefore invalid.On February 10, 2011, Ugglebo Clogs filed suit against Deckers Outdoor Corp with allegations of unfair competition and deceptive trade practices based on Deckers’ use of the UGG trademark for clogs and footwear. In the suit Ugglebo alleges that through "aggressive litigation, coincidence, and advertising, Defendant has successfully converted "ugg" from a generic term for sheepskin boots in Australia into a trademark for boots in the United States. Furthermore, Defendant has now extended the trademark to many non-boot footwear products such as, for example clogs, slippers and moccasins, as well as non-sheepskin." The suit also alleges reverse confusion, a situation where the senior user’s mark (Ugglebo) becomes dwarfed by the junior user’s mark (Decker), causing consumers to presume the senior user to be the infringer. Ugglebo brand clogs have been manufactured since 1965.
Counterfeiting
During a trademark infringementCounterfeit
To counterfeit means to illegally imitate something. Counterfeit products are often produced with the intent to take advantage of the superior value of the imitated product...
and trade dress
Trade dress
Trade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers...
case, a generic term defense was rejected by a Dutch
Netherlands
The Netherlands is a constituent country of the Kingdom of the Netherlands, located mainly in North-West Europe and with several islands in the Caribbean. Mainland Netherlands borders the North Sea to the north and west, Belgium to the south, and Germany to the east, and shares maritime borders...
court. La Cheapa distributed sheepskin boots on an Internet site from the Netherlands, describing them on its website as "100% authentic Ugg Australian boots!!!" with "UGG logo on the heel" in boxes virtually identical to Deckers packaging. Ruling in favor of Deckers with costs awarded against La Cheapa, the officer who heard the case stated it cannot establish as fact that "ugg" is considered a generic name in the Benelux
Benelux
The Benelux is an economic union in Western Europe comprising three neighbouring countries, Belgium, the Netherlands, and Luxembourg. These countries are located in northwestern Europe between France and Germany...
, based on the opinion of one or more companies in Australia. The case is binding law throughout much of Western Europe under the Madrid Protocol.
Law enforcement officials in Great Britain, the U.S. and China have reported seizures of counterfeit 'UGG Australia' boots. Deckers continually monitors usage of the UGG trademark on the World Wide Web, taking action against auctions and websites that infringe its trademark. The Australian Trade Marks Office, IP Australia cautions:
- "A trade mark registered under Australia's trade mark laws only provides rights for trade within Australia's borders. Trade mark laws are national laws and each country registers and protects trade marks within their own jurisdiction."
- "The Internet provides easy access to global markets and takes no account of national borders. If you are trading on the Internet you need to understand the laws of the country into which you are selling goods or services. If you place an offer for sale on the Internet in Australia that invites purchase from overseas, this can amount to trading overseas and could leave you vulnerable to legal action and expensive litigation. Likewise an overseas proprietor selling goods in Australia via the Internet may infringe an Australian trade mark."
In response to counterfeits being sold on the Internet, people of various ages and nationalities have generated websites, blogs and videos on how to spot fake 'UGG Australia' boots.
Concern for animals
Being one of many clothing products made from animal skin, the production of ugg boots has been the subject of criticism by the animal liberation movementAnimal liberation movement
The animal-liberation movement, sometimes called the animal-rights movement, animal personhood, or animal-advocacy movement, is a social movement which seeks an end to the rigid moral and legal distinction drawn between human and non-human animals, an end to the status of animals as property, and...
. In the decade beginning in 2000, the group called for the boycott of ugg boots and their replacement with alternatives not made from animal skin.
In 2007, Pamela Anderson
Pamela Anderson
Pamela Denise Anderson is a Canadian-American actress, model, producer, author, activist, and former showgirl, known for her roles on the television series Home Improvement, Baywatch, and V.I.P. She was chosen as a Playmate of the Month for Playboy magazine in February 1990...
, realising that ugg boots were made of skin, wrote on her website: "I thought they were shaved kindly? People like to tell me all the time that I started that trend — yikes! Well let's start a new one — do NOT buy Uggs! Buy Stella McCartney or juicy boots." In February 2008, the Princeton Animal Welfare Society staged a campus protest against the fur industry, particularly attacking the ugg boot industry. "Students lay in the newly fallen snow on the Frist Campus Center's North Front Lawn on Friday afternoon, feigning death, wearing coats covered with fake blood and sporting signs that read, 'What if you were killed for your coat?' "
External links
- The Good, The Bad and the Ugg Boot Study
- The Good, The Bad and the Ugg Boot 2006 documentary film on the trademark dispute (see also Australian Film Commission database)
- "Putting the Boot In", Sydney Morning Herald, 13 March 2004
- Direction to remove 245662 (UGH-BOOTS) from the Register of Trade Marks. Trademarks Act 1995: Decision of a Delegate of the Registrar of Trademarks with Reasons: Findings of Australian Trademark Hearing. 16 January 2006. (PDF file)