A small Western Australian company has triumphed over a large American corporation in a legal battle over the right to use the name ‘ugg boot’.
A small Western Australian company has triumphed over a large American corporation in a legal battle over the right to use the name ‘ugg boot’.
After a two years of legal wrangling, a decision handed down this week by the Trade Marks Office in favour of Uggs-N-Rugs proprietors Bruce and Bronwyn McDougall clears the way for Australian producers to use the term ugg boot.
Pending an appeal, US giant Deckers Outdoor Corporation, whose profits last year were $116.2 million, have been stripped of their trademark over the name ugg boot, due to non-use.
As previously reported in WA Business News, in recent years Deckers has threatened legal action against those it believed were infringing its trademark.
Family owned WA business Uggs-N-Rugs has been making the sheepskin boots for 28 years, and Bronwyn McDougall told WA Business News that she and husband Bruce were elated with the decision.
“I guess this goes to show the little people can win; we have spent two years collecting evidence and spent a lot of money to achieve this result,” Ms McDougall said.
“The decision means that we can call our boots ugg boots, and anyone in Australia also can, which is what we were aiming for all along. Ugg boots are a generic Australian term.”
She said they had received a lot of support from other producers, the public and the media.
The case will affect almost 100 other sheepskin boot producers around the country.
Minter Ellison special counsel Dave Stewart, who was instructed on the dispute by patent and trade make attorneys Wray and Associates, said the result was very pleasing for the McDougalls.
“It means that Deckers no longer has ownership of the trademark, and can’t send threatening legal letters to cease using the name ugg boot, which is what they were previously doing,” Mr Stewart said.
A ‘non-use’ argument was used by Mr Stewart to show that Deckers had not genuinely commercially used the ugg boot trademark by selling or marketing it in Australia.
The hearing officer who presided over the case said that there was no genuine attempt by Deckers to use its trademark in Australia.
Ugg boots were first associated with the Australian surfing scene in the 1960s. In 1995 Deckers bought the small Australian firm Ugg Holdings, and in 1999 registered the Ugg-boot trademark.
Ugg boots subsequently achieved cult status, thanks in part to their adoption as a fashion statement by Hollywood celebrities and the like.
The battle between Australian producers and Deckers has caught the imagination of many, and a documentary on the ugg boot struggle is understood to be in production for the ABC, and will air later this year.
