Considerable outcry has erupted at the recent action of American shoe company Deckers Outdoor Corporation, which sent letters to 20 small Australian businesses demanding that they stop using the word “ugg” to describe sheepskin boots.
Deckers bought the UGG mark from an Australian named Brian Smith in 1995. Smith had established an American company called Ugg Holdings Inc., and registered the UGG trademark in 25 countries. However, the term “ugg boot” is generally regarded as a generic term in Australia for a boot made of sheepskin. The boot has quickly gained popularity since becoming a standard fashion item for many Hollywood celebrities.
A coalition of Australian sheepskin boot manufacturers and retailers have started an email campaign, which claims, “We have documentation showing ‘Fug Boots’ [presumably ‘flying ugg’ boots] were worn by World War I pilots in 1917/1918. In addition, the Blue Mountain Ugg Boots company began back in 1933 and Mortels Sheepskin Factory (who sold long ugh boots) started in 1958. These dates precede ANY use of the ugg boot term by Deckers and its predecessors. Hold a pair of sheepskin boots up to any Australian and ask them what they are and the overwhelming majority will say ‘ugg boots.’” Mortels Sheepskin Factory has already failed to win an appeal before the tribunal of ICANN, the body that rules on Internet domain names, in relation to the use of the word “ugg” in its website name.
Deckers has successfully used the Verified Rights Owner (VeRO) program on eBay to have most non-Deckers-branded ugg boots removed from eBay both in Australia and in other countries. Deckers is also reported to have threatened to sue Australia’s Macquarie Dictionary, which defines “ugg” as a generic term (as it has done in every edition since 1982) without referring to its status as a registered trademark. The dictionary is reported to have changed its definition to avoid litigation.
Furthermore, in Dubbo, New South Wales, a charity-owned factory shop called the “Westhaven Ugg Boot Shop” was ordered by Deckers to hand over all price lists, brochures and labels containing the words “ugg,” “ug” or “ugh.”
The issue has offended Australian national sensibilities. On May 6, 2004, seven members of the Australian Parliament wore ugg boots to work for the day to show their support for Australian ugg boot manufacturers.
Several Australian industry players, including the Australian Sheepskin Association, have filed trademark applications that effectively dispute Deckers’ right to the trademarks. Two Freedom of Information applications were lodged with the Australian trademark registry in March this year, seeking documents that establish the decision-making process by which Deckers obtained registration of the UGG mark.
The dispute regarding the mark seems certain to head to the Federal Court of Australia.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.