Deckers Gets Major Win in “Ugg” Boots Trademark Lawsuit
Orange County – In a lawsuit that has gone on for three years, a small Australian bootmaker has recently lost a decision and has been ordered to pay $450,000 for trademark infringement. The case involves the popular “UGG” trademark and footwear design owned by United States-based Deckers Outdoor Corporation. Deckers filed the lawsuit in March of 2016 on the claim that Sydney-based Australian Leather had willfully infringed upon the trademark by selling sheepskin-lined boots also referred to as an “Ugg.”
Deckers’ UGG boot generates over $1 billion in annual revenue for the American company. The infringing boots in question were sold in the U.S. by Australian Leather between 2014-2016 via its e-commerce website. Australian Leather argued that in Australia the term “Ugg” is used generically to describe a type of boot. Therefore, Australian Leather argued that the use of “Ugg” to describe the Australian boot was not a trademark violation. The case also includes design patent infringement claims relating to the design of the boot. Australian leather has argued that Deckers should not be allowed to hold a global monopoly over the generic design of the boot.
The lawsuit did result in one major win for Australian Leather. The company claimed that Deckers should not be permitted to use “UGG Australia” when in fact the boots are manufactured in China. The Australian Competition and Consumer Commission agreed and Deckers agreed to cease using that designation.
However, in late 2018 the argument that “Ugg” is a generic term was rejected by a federal judge in Chicago. The case is not yet over but it is looking increasingly grim for Australian Leather. In addition to the trademark and patent infringement claims, Deckers is alleging that the infringement is willful and thus is requesting an award of its attorney’s fees which will be a figure in the millions. To be awarded its attorneys fees, Deckers will have to convince the judge that the case is exceptional. Australian Leather plans to appeal the decision. Despite the ruling Australian Leather has the support of prominent Australian citizens. Lawyer and former senator Nick Xenophon released a statement that the term “Ugg” should never have been trademarked. Australian Leather believes that the Australian government should intervene to declare that the trademark generic.