|The Australian Trade Mark Office removed UGG from the Australian trademark registry after determining that it was a generic term.||Deckers' Australian trade mark registration for UGG AUSTRALIA (Australian Registration No. 785,466) is valid and subsisting. The validity of registration No. 785,466 was challenged, but the Australian Trade Mark Office upheld the registration in the case, Luda Productions Pty Ltd. v. Deckers Outdoor Corp., IP Australia (11 August 2006). In a separate action, the Australian Trade Mark Office removed Deckers' Australian registration for UGH-BOOTS (Reg. No. 245,662) on the grounds that the UGH-BOOTS mark had not been used in Australia, not because the mark was generic. See, UGH-BOOT Non-Use Decision, January 2006, Pars. 29 and 46.|
|The validity of the UGG mark is in question outside of Australia.||
|Deckers has mounted a campaign against small Australian sheepskin boot dealers.||From time to time, some Australia-based websites have attempted to to deceive and confuse consumers outside of Australia, passing off their boots as UGG brand boots. Consumers outside of Australia widely recognize UGG as a brand name. Deckers regularly receives complaints from consumers that have mistakenly purchased Australian "Ugg" boots over the internet believing them to be the genuine UGG® brand. Some Australian dealers also sell knock-offs of popular UGG styles, including the knit Cardy™ and the Bailey Button™ boots. In appropriate circumstances, Deckers takes action against dealers in Australia and elsewhere that are engaged in such deceptive trade practices. Deckers welcomes fair competition and has entered into agreements with some Australian sheepskin boot dealers that facilitate lawful competition.|
|UGG has been a generic term for sheepskin boots in Australia and New Zealand dating to the mid-1900’s||There is no doubt that sheepskin boots have been manufactured in Australia and New Zealand for a very long time. However, use of the "UGG" term is more recent. Australian Trade Mark Office granted Shane Stedman registration No. 245,662 for UGH-BOOT in 1971, and registration No. 373,173 for UGH in 1982, and the New Zealand Trademark Office granted registration No. 99,794 for UGG FOOTWEAR in 1972. The Australian Trade Mark Office has stated, “Prior to registration, the Registrar of Trade Marks considers whether a trade mark has any descriptive or generic meaning that may make it unsuitable for registration. In the event that a mark passes this test, there is an opportunity for a concerned third party to oppose registration on a range of grounds including a belief that the mark is generic. Based on information available at the time, the UGH marks were found to be suitable for registration and in the absence of any successful opposition actions were subsequently registered.”
The “Ugg” term first appeared in the Macquarie dictionary in the early 1980’s, and shortly thereafter Macquarie corrected its entry to show the proprietary trade mark status of UGG.
There is no credible evidence that the “UGG” term was in general use (either a brand, trade name or generic term) prior to Shane Stedman’s adoption and use of the UGH trademark in the late 1960s. Indeed, Shane says he invented it.
|Blue Mountains Ugg Boots have been manufacturing “uggs” since 1933.||No evidence supports the 1933 claim. The New South Wales business name "BLUE MOUNTAINS UGG BOOTS" No. U9915006 was first registered on 2 September 1998. This company applied to register the Australian trade mark No. 998335 for "BLUE MOUNTAINS UGG BOOTS" on 16 April 2004.|
|Frank Mortel of Mortels Sheepskin Factory has stated that he began manufacturing “ugg” boots in the late 1950s.||No evidence supports the 1950s claim. A search of the Australia company registry reveals that “Mortels Sheepskins” was first registered in 1985 and that “Mortels Sheepskin Factory Pty Ltd” was first registered to do business in 2002.|
|Some Australian manufacturers were using "Ugg" to describe sheepskin boots in the 1950’s or earlier, with the earliest use traced to World War I Aviators that allegedly wore "flying ugg" boots, and Australian dictionaries have long had entries for UGG.||Other than unsupported folklore, no credible evidence of such use is known. The basis for the World War I aviator stories appears to relate to an alleged exhibit at the Canadian War Museum uses the term "fug" to describe sheepskin lined footwear or socks of World War I aviators. Any connection between the term "fug" and "flying ugg," however, is pure speculation. UGG first appeared in the Macquarie dictionary in the early 1980’s, and shortly thereafter Macquarie corrected its entry to show the proprietary trade mark status of UGG. The assertions that UGH or UGG was a generic prior to 1971 is not supported by any dictionaries or other credible sources, and consists mainly of unsubstantiated rumor.|
|Australian aviators wore "fug" boots in World War I, which is a shortened version of "flying ugg."||British WWI pilots are reported to have worn "fug" boots, but there is no evidence of any connection to Australia or to "fug" being a shortened version of "flying ugg." Instead, the invention of "fug" boots is widely attributed to British WWI flying ace Lanoe Hawker. Aerodome Forum explains, ““Fug,” by the way, is a slang term meaning close and fusty, as in the warm stuffiness of an RFC mess (in which, we are told, the windows were never opened, even in summer, because pilots treasured being warm).” “They were basically a kind of hip-wader, but lined with fur or fleece (and sometimes covered that way as well).” See, http://www.theaerodrome.com/forum/other-wwi-aviation/17155-wwi-aviators-clothing-uniforms-2.html. See also, http://www.iwm.org.uk/collections/item/object/30016195, and https://www.storeslider.com/rare-original-wwi-british-royal-flying-corps-fug-221919981102e.html.|
|If UGG is generic in Australia, it is permissible for Australian companies to promote and sell footwear with an UGG label around the world over the internet.||Trademark laws are national. A term might be generic in one country and a valid trademark in others, e.g. HOOVER. The simple fact is that UGG is an established, recognized and protected trademark in the U.S., Canada, the U.K., Europe, China, Japan and Korea, and scores of other countries. Australian dealers that use “UGG” to sell boots on the internet deceive and confuse international consumers and infringe Deckers’ rights. It is unlawful. IP Australia, the Australian Trademark Office, confirmed this in their UGG Boot Fact Sheet which states:
"The Internet provides easy access to global markets and takes no account of national borders. If you are trading on the Internet you need to understand the laws of the country into which you are selling goods or services. If you place an offer for sale on the Internet in Australia that invites purchase from overseas, this can amount to trading overseas and could leave you vulnerable to legal action and expensive litigation."