There has been considerable public outcry at the recent action of American shoe company Deckers Outdoor Corporation, which has sent letters of demand to 20 small Australian businesses telling them to stop using the word "ugg" to describe sheepskin boots.
Deckers bought the mark from an Australian named Brian Smith in 1995.
Smith had established an American company called Ugg Holdings Inc and had registered the ugg trademark in 25 countries.
The term "ugg boot" is generally regarded as a generic term in Australia for a boot made of sheepskin.
The boot has become popular since becoming a standard fashion item for a variety of Hollywood celebrities.
A coalition of Australian sheepskin ugg boot manufacturers and retailers have started an email campaign that claims: "We have documentation showing "Fug Boots" (presumably flying ugg boots) were worn by World War 1 pilots in 1917-1918. In addition, the Blue Mountain Ugg Boots company began back in 1933 and Mortels Sheepskin Factory, which sold long ugg 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 the Internet Corporation for Assigned Names and Numbers (ICANN), the body that rules on Internet domain names, in relation to the use of the word "ugg" in its website name.
Deckers have successfully used the Verified Rights Owner (VeRO) program on eBay to have the most non-Deckers branded ugg boots removed from eBay both in Australia and overseas.
Deckers are reported to have threatened to sue Australia’s Macquarie Dictionary for defining "ugg" as a generic term (as it has done so in every edition since 1982) and not referring to its status as a registered trade mark.
The dictionary is reported to have changed its definition to avoid litigation.
In Dubbo, New South Wales, a charity employing 65 intellectually disabled workers that does not sell ugg boots online but has a 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". Other small businesses operating as cottage industries have also been targeted.
The issue has also offended Australian national sensibilities.
On May 6 seven members of Federal 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 separately lodged trade mark applications with the Australian trade mark registry, which effectively dispute Deckers’ right to the trade marks.
Two freedom of information applications were lodged with the trade mark registry in March seeking documents setting out the decision-making process by which Deckers obtained registration of the "ugg" mark.
The dispute over the mark seems certain to head to the Federal Court of Australia.
David Stewart, partner 9429 7494