A recent, transatlantic battle for the rights to the Ugg boots’ name is just the latest case in decades long battles between Aussie manufacturers and the US owner of the name. This case highlights the importance of trademarks, intellectual property rights and awareness of how rules vary in different countries, writes Business and Commercial Senior Associate, Tobie Mitchell.
Making national and international news recently, Aussie brand, ‘UGG Since 1974’ has been forced to change its name. This is due to the latest lawsuit brought against an Aussie manufacturer by US based, Decker Outdoor Corporation, the owner of Ugg Holdings Inc which trademarked the ‘UGG’ name in more than 100 markets, including the US and Europe.
Deckers was previously in a trademark battle with Sydney-based businessman Eddie Oygur and his company Australian Leather and has a consistent history of protecting its claim on the ‘Ugg’ name. This latest case won against ‘UGG Since 1974’ has meant the Australian manufacturer now has to change their name to ‘Since 74’ across the world. Fortunately, the Australian firm gets to keep the intellectual property rights over its original name in Australia and New Zealand.
Understanding Trade Marks and Intellectual Property
Intellectual property (IP) is generally accepted as a creation of the mind. Different types of IP can be registered such as a brand, logo, invention, design, artistic work, or a new plant variety.
In Australia, intellectual property rights and legislation are managed by government agency, IP Australia.
A trade mark is a type of intellectual property (IP) right which differentiates your brand, product or service from competitors. A trade mark can be used to protect your business name or aspects of your brand.
Some business owners may think registering your business name or even a website domain gives you sole rights to that name, however, this is simply not true. Anyone can use your business name if you don’t register it as a trade mark.
Importantly, it’s vital to remember a trade mark registration lasts only up to 10 years before it needs to be renewed. This can be done indefinitely and is vital business administration for your company, as forgetting to renew your trademark can have dire, financial consequences.
Just this month, British 80’s singer, Boy George has learnt this too late as it’s been reported he could lose the trademarks to his and his band, Culture Club’s names after he failed to renew their trademarks. ‘Boy George’ and ‘Culture Club’ were due for renewal on 12 December 2024, after the singer had registered had their names in 2014.
This is especially financially risky for the singer as he allegedly has around $24 million dollars of debt, and the consequences could be severe with the potential loss of valuable trade marks.
For instance, he could suffer a significant loss of revenue if he is no longer able to secure licensing and merchandising deals. The risk is that the expired trade marks could be re-registered by third parties or creditors who want to take ownership of the trade marks, and exploit the lucrative commercial benefits that are associated with those names’ trademarked goods and services.
Importantly, it’s wise to remember there are certain words, phrases and images that can’t be trade marked, or can only be registered under special circumstances. When it comes to trade marks and intellectual property disputes, a key consideration is whether a name is a brand or a type of product.
In the case of ‘UGG Since 1974’, to keep the claim to their name internationally, the Aussie firm would have had to prove the name ‘UGG’ was commonly known as a sheepskin boot, more so than a brand. This was achieved in Australia and New Zealand twenty years ago, due in no small part to pressure from numerous cease and desist letters from Decker in the early 2000s to local Aussie manufacturers.
Decker’s actions resulted in emboldening the Aussie firms to band together to form the Australian Sheepskin Association (ASA) and launch their case to have Ugg removed from the national register of trademarks. It was Perth-based small business Uggs-N-Rugs, who applied to trademark regulator IP Australia, which ultimately ruled that ‘Ugg boots’ referred to a generic category and directed it to be removed from the national register of trademarks.
At the time, trademark hearings officer Ian Thompson stated “The evidence overwhelmingly supports the proposition that the terms ugh boot(s), ugboot(s) and ugg boot(s) are interchangeably used to describe a specific style of sheepskin boot and are the first and most natural way in which to describe these goods.
Unfortunately for Aussie manufacturers, this definition does not apply in the rest of the world due to limitations of the Australian courts, and Deckers successfully establishing UGG® as a distinctive global brand. Something which business owners in this country would do well to remember when applying for a trade mark.
The value of a trade mark
There is an immense value in brands. Many enterprises simply wouldn’t exist without their brand and identity. It’s critical for customer retention, market share, and higher sales, just to name a few. Perceptions matter. It gives brands value and influences the decisions we make.
The Ugg boot is a good example of a brand which has been carefully cultivated to appeal to a global market. After all, it’s an iconic Australian export synonymous with comfort and warmth.
So, how can you protect your brand here and abroad? Conventional wisdom says that it’s a combination of strategic planning, legal protection and proactive management.
Legal protection for your business here and abroad
While registering a trade mark with IP Australia lays the groundwork for domestic and national success, an international trademark for businesses with global aspirations is just as important.
To trademark a business name internationally, it’s important to remember you cannot register a “worldwide” trademark. A trademark is only regulated at a domestic level, meaning each country establishes its own legal framework for registration, enforcement and protection..
For example, Australia does not have power to register a trademark in the United States or in any other country and vice versa.
You need to file a separate trademark application in each country where you want protection. Alternatively, there is precedent to use international treaties which have helped standardise regulation and enforcement in various countries, such as the ‘Madrid Protocol’.
This protocol allows you to submit a single application for the countries where you want trade mark protection through the World Intellectual Property Organization (WIPO).
If you choose not to register a trade mark, then your brand or ideas could be infringed, copied and used without your permission.
The legal battle between Ugg Australia and Deckers Brands serves as a precautionary tale to those wishing to compete with other companies on a global scale and the importance of first establishing a trade mark.
Attwood Marshall Lawyers; experts in intellectual property rights and trademarks
Let us help you safeguard your business’s most valuable assets – its intellectual property (IP) and trademarks – with tailored legal solutions from our experienced business and commercial law team.
Our lawyers can ensure your intellectual property and trade marks are secure, enabling your business to grow confidently.
Want to discuss how to protect your business and your brand? Please contact our Department Manager, Taylah Lein today on 07 5506 8208 or by email at tlein@attwoodmarshall.com.au to book an appointment with one of our lawyers and learn how you can safeguard your creative and commercial assets.
