Australian shoe company UGG Since 1974 forced to rebrand in international trade mark battle
Love them or loathe them, Ugg boots have frequently entered the fashion trend cycle across the globe. Whilst many of us think of ‘Ugg’ as a brand name, in Australia, where this style of shoe originated, it’s a generic term for any fleece lined sheepskin boots.
Trademark Battle with Deckers Outdoor Company
Recently, family-owned Australian boot makers UGG Since 1974 announced in a viral TikTok that they were being sued by California based Deckers Outdoor Company, after a decade long lawsuit, who own the trade mark for “UGG” in over 130 countries. UGG Since 1974 have been forced to drop ‘UGG’ from their name and become “Since 1974” if trading outside of Australia and New Zealand, where they hold the local trade marks and can continue to trade using their original name.
American Influence and Expansion
But how did an American company become the main player in the Aussie boot market? It began when Australian surfer Brian Smith moved to California and founded UGG in 1978 (four years after UGG Since 1974 first started), where the statement boots became a fashion staple in California beach culture. UGG, the brand with the capital G in their logo, was acquired by Deckers in 1995 with the multi-billion dollar company taking the brand global. Deckers are behind other well-known brands like Hoka and Teva.
Earlier Legal Battles
UGG Since 1974 aren’t the first Australian company to come up against Deckers over the iconic boots. Back in 2021, Australian Leather lost a bitter 5-year battle fighting to scrap the US trade mark for the word ‘ugg’, claiming it was a generic word across Australia and New Zealand and shouldn’t be trade marked. Deckers took them to court in 2016 for trade mark infringement after the company sold 13 pairs of the boots in the United States via their website. It was ultimately found that while the term ugg may be synonymous for these boots in Australia, it was not viewed as such in the States. Deckers have sent cease and desists to a number of Australian brands over the word since getting the trade mark back in the 90’s.
All of this means it’s hard for Australian ugg makers to extend their business to a global market without facing legal consequences. Whilst they are free to use the word ‘Ugg’ across Australia and New Zealand, as it is generic in these countries, if they tried to do so in places where it’s not generic and trade marked, like the United Kingdom, they could be accused of trade mark infringement of Decker’s earlier trade mark.
This case serves as yet another cautionary tale for Australian businesses looking to sell their ugg boots internationally, highlighting the roadblocks they might face trying to reach a global market. It goes to show what is common in one country, isn’t the norm in another.
How can Pure Ideas Help?
If you are looking to expand your business overseas, it is vital to understand the local trade mark laws and legal and industry landscapes of the countries you’re hoping to venture into.
Our expert team can help you navigate these challenges and provide you with local support and advice to help expand and protect your business abroad. Give us a call or email today to see how we can help you.