A David and Goliath Trade Mark battle hit newsstands yesterday with a local Australian retailer being sued for trade mark infringement in the US by Deckers Corporation.
Deckers Corporation is the owner of a US trade mark for UGG covering footwear (US Registration No. 4292446). Australian consumers have responded in disbelief that a monopoly has been granted to Deckers in the US and over 130 other countries worldwide over UGG, a word which is generic in Australia for sheepskin boots. What seems to have been lost in translation though, is that trade marks are territorial rights, and just because a trade mark is generic in Australia doesn’t mean that it can’t function as a trade mark in other countries around the world.
Generic Trade Marks
‘Genericism’ is the scenario where a trade mark that was once distinctive and acted as a badge of origin for a particular trader becomes the term by which a particular product is widely known. Some of the more well-known examples include TRAMPOLENE, CELLOPHANE or ESCALATOR. Whilst these terms are now so generic that it is hard to imagine them ever having functioned as trade marks, at one point these words were considered to be distinctive. Some trade marks that might be considered on the cusp of becoming generic include KLEENEX for tissues and XEROX for photocopiers.
The UGG Debate
So what about UGG? In Australia, we know this name to be a generic descriptor for sheep skin boots, and the Australian Trade Marks Office’s position seems to be that the word in isolation is at least non-distinctive, if not generic. In Australia, there are over 100 registered trade marks in the relevant class for footwear that contain the word UGG. Because the Trade Marks Office appears to have taken the position that the word in itself is non-distinctive, many traders are able to co-exist in the marketplace and on the Register because their trade marks contain additional distinctive features, such as logos or additional words. Because the word UGG is understood as being non-distinctive in Australia, consumers won’t be confused just because multiple traders use trade marks containing the word UGG.
In the US though, the word UGG does, at least for the moment, appear to function as a trade mark, by denoting one particular brand of sheepskin boots. The situation in Australia therefore has no bearing on whether the trade mark is valid and enforceable in the United States.
For Australian producers of the UGG boot there are two options available – rebrand for the overseas markets or risk being sued! It is every trader’s responsibility to ensure prior to selling goods overseas that they have freedom to operate in that market. Decker is notoriously litigious in this area, and any overseas sales of sheepskin boots using the name UGG will almost certainly end up in a law suit.