Trade marks represent a company’s CV in relation to the consumer public and have to fulfill a number of requirements expressly laid down by law, namely, inter alia, they have to be able to distinguish the goods or services of one company from those of other companies, to be distinctive and not descriptive (a word mark having its denomination OFFICE SEATS could not be registered for products such as OFFICE SEATS) and, of course, they have to respect good faith and the bona fide of commercial practices.
The aforementioned information is rather essential for understanding, by and large, why the famous UGG trade mark (famous especially among female consumers aged 18-45, as shown by a market study carried out in the USA) is a truly problematic one.
The UGG denomination was first registered during the 1980s in the USA under the trade mark UGH – UGG AUSTRALIA “in California, and not without reason.” At the time, entrepreneur Shane Steadman was setting up a business that was going to target Californian surfers as the consumer public. His project caught, and the product sold well locally.
Prior to the trade mark being registered in the US, the term UGG/UGH/UG had been used (and is still used as such to the present day) for decades to denote a specific type of sheep leather footwear worn in Australia and New Zealand during the cold months.
At the same time as Shane Steadman’s actions, another Australian entrepreneur having the same surfing track record, Brian Smith, started importing UGG-type boots from Australia into the US (this was happening back in 1979). In 1987, he founded UGG HOLDINGS INC. and in 1995 he bought Steadman’s trade marks.
In 1996 he sells his social shares to the Deckers Outside Corporation, crucial point in the history of UGGs, as this is the moment from which the trade mark and its product start making waves in the market. Deckers registered the UGG trade mark in the US and 25 other countries in 1999 and at this time it is currently registered in over 130 countries (including China and the EU). In order to defend the exclusive right conferred by the trade mark, Deckers starts notifying traders that infringe its rights regarding the UGG trade mark, by using its denomination for their products. The point to all this was that Deckers wanted said traders to stop infringing its rights by use of the UGG denomination
UGG is well known because of advertising investments worth millions of euros, but also because of the intelligent marketing campaign that involved many celebrities from the early 2000s. It is worth mentioning that even Oprah Winfrey was a part of this, and during an episode of her beloved TV-show, during the “Oprah’s favorite things” section, she calls UGGs a must-have and offers 350 pairs of boots to the audience – brilliant advertising, isn’t it?
As US civil procedure law states that cases are decided by the Jury, said Jury finds the Deckers claim valid and the boot-maker Australian Leather is banned from marketing its product in the US. The Jury also decides that $450.000 with the title of damages are to be paid to Deckers.
One of the main problems raised in this case was whether the name was/had become generic, as it had been used for a long time as an usual word in the vocabulary of the Australian population, a situation which, if the name were treated uniformly as a generic name, would make Deckers liable to lose its trade mark and with it the money it had made by the huge amount of sales (about six hundred million dollars).
All of the above considered, it comes as no surprise that Australian boot-makers created the AUSTRALIAN SHEEPSKIN ASSOCIATION, an association of traders that could not have fought the giant Deckers on their own, and whose primary aim is to obtain UGG registration as a geographical indication (similar to Champagne for France or Feta for Greece).
The complexity of the case stems not only from the popularity of the product, but also from the simplicity of the name – 3 letters, one vocal and two duplicate consonants – which made it easier for the consumer to retain it. The trade mark is great when it comes to it being remembered by the public and it lets the public pass information regarding it rather easily but, nevertheless, it is a controversial denomination.
Such a situation arises, more often than not, in practice, and Deckers is only one of the giants that imposes its rights with such aggressiveness.
It is precisely for this reason that we recommend that any procedure which may put the commercial life of your company at risk, or the success of the registration of a denomination, pass through the approved filter of an intellectual property specialist and that the procedures are carried out under his aegis.