Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it's easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.
Boots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.
The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.
In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.
Deckers still has its trademarks in the EU and the US However, in Australia the company aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there. The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.
Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.
The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.
It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.
Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.
Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.