Trademark disputes
In 1971, Shane Steadman registered the trademark UGH-BOOT on the Australian Trade Mark Registry, and obtained an Australian registration for UGH in 1982. These registrations remained valid in Australia until they got removed for non-use in 2006. Steadman sold his UGH brand boots widely in Australia throughout the 1970s and 1980s.[31] This registration was subsequently sold to Ugg Holdings Inc. in early 1995. In August 1995, Deckers Brands purchased Ugg Holdings, and in 1999 registered Ugg Holdings trademarks, including the UGG AUSTRALIA label (with sun-like device), in Australia. Attempts by Deckers to stop other traders from using the "UGG" mark in Australia were challenged, ultimately leading to 2006 decisions by IP Australia to remove company's "UGH" and "UGH-BOOTS" trademarks due to non-use, finding that they had not been used during a three-year period ending one month before a removal application was submitted.[32][33] The Australian trademark that contains "UGG Australia" in stylised text was maintained. But there are many other similar trade marks in Australia that contain the words "UGG Australia" along with other graphical elements.[34][35] In 2016, the Australian Competition & Consumer Commission investigated Deckers because of a complaint that the reference to "Australia" in its branding was misleading and deceptive, and therefore in breach of Australia's consumer protection and fair competition laws. In response, Deckers rebranded to "UGG", instead of "UGG Australia".[21] Deckers now refers to the UGG brand as "Californian" rather than "Australian".[22]
Deckers continues to hold registrations for the UGG trademark in the United States, China and over 130 other countries. The validity of the UGG trademark outside of Australia has also been challenged, but courts have consistently upheld its validity. In 2004, Deckers filed a case against Koolaburra in the California federal court asserting that their use of "Ug" was trademark infringement.[36][37] Koolaburra argued that the UGG trademark was invalid as being generic and obtained by fraud.[36] In February 2005, the court ruled for Deckers stating that survey evidence clearly demonstrates that the UGG mark is not generic. There was no evidence that Smith acted with an intent to defraud the Trademark Office, and consumers would likely be confused with the similarity in "appearance, sight and sound" between "Ug" and "UGG" as the parties were marketing in direct competition with identical products. However, the court declined to rule on the validity of Deckers' Australian trademark registrations in the context of the US case.[36]
Other UGG trademark disputes have occurred with companies including Luda Production Pty[38][39] and Emu Australia,[40][41][42] as well as local manufacturers in countries such as Turkey and China.[43]
In August 2016, Australian senator Nick Xenophon called for international protection of the Australian footwear term ugg.[44]
Trademark enforcement against other manufacturers
Deckers actively enforces its trademark rights in those countries in which it has succeeded in obtaining trade mark rights to "UGG". According to Deckers' brand-protection unit, in 2009 it took down 2,500 "fake" websites, 20,000 eBay listings and 150,000 other online auction listings with 60,000 pairs of "counterfeit" UGG footwear confiscated by customs agents.[45]
Law enforcement officials in the UK, the US and China have reported seizures of counterfeit UGG brand boots.[46][47][48] In 2009, US customs agents confiscated 60,000 pairs of boots falsely marked with the "UGG" trade mark, and the company took action against 2500 websites that were selling fraudulent products, as well as some 170,000 listings on eBay, Craigslist and similar sites.[49][50]
