Samantha Joseph was a solicitor with Arts Law.
The term 'ugg' has become engulfed in a nasty fight as an American corporation has been granted registration rights over the term 'ugg' to the disbelief of many Australian companies, politicians and the media. As Australians we firmly believe that the infamous 'ugg' boot is an Aussie icon. The question then is 'who owns the term 'ugg'?' This article will provide a snapshot of the trade mark system and, in particular, the requirements for registration and grounds for opposition of a trade mark.
The ugg boot apparently originated in rural Australia in the 1920's. At that time, no one bothered to register the term 'ugg' as it was a considered a term that was common and used by people in the 'ugg' sheepskin industry. In 1971, however, an entrepreneurial Australian surfer capitalized on the popularity of the boot and registered the term UGH – BOOT. He then sold his rights to an American conglomerate, Deckers Outdoor Corporation (Deckers). In 1999 Deckers registered the term Ugg Australia. Deckers are now trading in Australia as Ugg Holdings Inc (Ugg Holdings). This means that every company trading, advertising or using the term ugh may be contravening Ugg Holdings' rights to the term as the owners of the trade mark.
Recently, Deckers issued letters to a number of small Australian companies who produce or deal with ugg boots, threatening them with legal action, including litigation, if they continue to use the term 'ugg'. This would include prohibiting companies from selling 'ugg' boots on EBay and in domain names. As trade mark owners Deckers (or Ugg Holdings) have exclusive rights to issue such action. This includes bringing action for infringement.
What is a trade mark?
The Trade Mark Act defines a trade mark as a sign which distinguishes goods or services from any other person's goods or services. Trade mark registration requires goods or services to be distinctive, in that the sign must be inherently capable of being distinguished from another person's goods or services. Distinctiveness is established where the trade mark is unlike other goods or services used by another in the course of business. Where a trade mark is similar to another in trade then it is not distinctive and incapable of registration.
There are a number of ways that a trade mark can be opposed. This includes where someone else had used the trade mark prior to the date of application or where the trade mark is a generic term.
Is 'Ugg' a generic term?
Australian opponents of Deckers argue that the term 'ugg' has been used widely in Australian from as far back as 1920's. One might, therefore, imply that as a result the term is generic. Media reports have also claimed that no-one bothered to register the trade mark in the past as the term was so obviously generic. To establish if a term is generic, however, you need to show that the word or phrase is or has come to be a common term associated with a particular category of goods or services to which it relates.
The question then is – does the term ugg boot have the capacity to distinguish the goods of one 'ugg' boot producing company from another? In Westinghouse Electric Corporation v Thermopart Pty Ltd (1967) 1A IPR 647 the word 'Laundromat' had become a generic term – that is, no longer specific to one particular washing machine company, Westinghouse, who produced washing machines called 'Laundromat'. The Court analysed various forms of evidence, including magazine and television shows which suggested that the term had taken on a general meaning. In the end, the Court held that the evidence was in fact “flimsy” and that the word 'Laundromat' had not achieved generic meaning. This means that Westinghouse, who had registered the trade mark 'Laundromat', could succeed in stopping others from using the term in trade as a trade mark.
Whether or not a term is generic or not, however, can be very difficult to predict and can only be determined on a case-by-case basis. And whether or not the term 'ugg' has a generic meaning is yet to be determined.
For the most part, Australian companies do think that the word 'ugg' is generic and therefore should not be registered as a trade mark. If this is their view, it may be tested if and when one or more of these companies are sued by Deckers. Alternatively they may apply to the court to have the Trade mark registration to be removed. None seem to have initiated such an action yet. To be continued …