In the world of intellectual property, the “UGG” name is a great example of the need to understand Intellectual Property laws globally. This ongoing legal struggle highlights the complexities of trademark law, particularly in cases where a term is generic in one jurisdiction but a registered trade mark in another. As an intellectual property specialist in the UK, National Business Register explores the legal intricacies of this case and what businesses can learn from it when protecting their brands internationally.
The Origins of the Dispute
The brand UGG is globally associated with the popular sheepskin boots manufactured by Deckers Outdoor Corporation. However, in Australia, “ugg” (or “ug”) is a generic term used to describe sheepskin boots. The issue arose when Australian bootmakers began selling their products internationally using the term “UGG,” leading to legal battles over trademark ownership.
Deckers owns the “UGG” trademark in several jurisdictions, including the United States, the European Union, and the UK. It actively enforces its rights against companies that attempt to market products using the “UGG” name outside Australia. However, Australian businesses argue that “ugg” is a generic term that should not be monopolised by a single company.
The Legal Challenges
The crux of this dispute revolves around the principle of genericism. In Australian law, a generic term cannot be registered as a trademark because it does not distinguish a particular trader’s goods. However, in the US, UK, and many other countries, Deckers successfully registered “UGG” as a trademark, arguing that consumers associate the name specifically with its brand and products.
The key legal battles include:
- Australian bootmaker Eddie Oygur’s case in the US: Oygur, who sells Australian-made “ugg” boots internationally, faced legal action from Deckers in the United States. In 2021, a US court ruled against him, stating that “UGG” is a protectable trademark in the US and cannot be used freely by other manufacturers.
- Trade mark protection in the UK: Like the US, the UK recognises “UGG” as a valid trade mark owned by Deckers, preventing other businesses from selling “ugg”-branded footwear unless licensed.
- Ongoing appeals and debates: The case continues to spark debates about whether companies should be allowed to claim exclusive rights over terms that are generic in their country of origin but distinctive elsewhere.
Lessons for Businesses
1. Understand Intellectual Property Differences Across Jurisdictions
A trademark that is generic in one country may be protectable in another. Businesses should research international trademark laws before expanding their brand overseas.
2. Register Trademarks in Key Markets Early
To avoid disputes, businesses should register their trademarks in all key markets as early as possible.
3. Monitor the Use of Your Brand Name
Trademark owners must actively monitor and enforce their rights. Deckers’ aggressive enforcement of its trademark has prevented unauthorised sales of “UGG” boots outside Australia, reinforcing the importance of vigilance in brand protection.
4. Be Cautious When Using Generic Terms
If a brand name is derived from a common term, businesses must consider the risk of it being deemed generic in some regions. This can affect the ability to enforce trademark rights – this needs to be a strategic consideration from the outset.
The UK Perspective
In the UK, businesses must be strategic when selecting brand names. If a name is potentially generic, it may face difficulties in obtaining trademark protection. However, a strong brand identity and consistent use can establish distinctiveness over time, making it easier to secure trademark rights.
For UK businesses looking to expand globally, consulting trademark experts is crucial. At National Business Register, we specialise in helping businesses navigate international intellectual property challenges, ensuring their brands remain protected in all relevant jurisdictions.
Final Thoughts
The UGG trademark dispute underscores the importance of understanding global intellectual property laws and acting proactively to protect your brand. Businesses should be aware of potential trademark conflicts, especially when dealing with terms that might be considered generic in some regions.
If you are looking to protect your brand in the UK and beyond, National Business Register can help. Contact us today for expert guidance on trademark registration and brand protection strategies. Contact us today by emailing info@nbrg.co.uk or by calling 0800 069 9090.
