‘UGG Since 1974’, has recently decided to change its brand outside of Australia and New Zealand to ‘Since 74’, following a protracted dispute with US entity Deckers Outdoor Corporation.
UGG Since 1974 is an Australian owned business that has been creating the well-known footwear for over 50 years. The company was founded by Arthur and Faye Springthorpe, and is now owned and run by their grandson Todd Watts. Watts made the statement regarding the rebranding outside of Australia and New Zealand via TikTok.
According to UGG Since 1974’s own website, the term “ugg” is used generally in Australia to refer to the type of sheepskin boots, and is therefore seemingly a descriptive term in relation to these products. Generally speaking, a single entity cannot own a trade mark or the exclusive right to use a word or term that is descriptive, non-distinctive or commonly used to refer to a particular product.
The brand UGG Since 1974 is a registered trade mark in Australia; however, there are various registrations containing the term “ugg” in class 25 for clothing and footwear in Australia, owned by different companies. These registrations grant protection for the marks as a whole, and not for the use of the term “ugg” in isolation. This commonly used and descriptive meaning of the term “ugg” in Australia does not necessarily extend to other countries.
An Australian surfer, Shane Stedman, made and sold “ugg” boots in Australia in the 1970’s. He said that they called them Uggs because they were ugly. The boots became popular in the US, and this did not go unnoticed to another Australian surfer, Brian Smith. He and Doug Jensen founded UGG Holdings Inc in the US in 1978, and trade marked the term UGG in the US. In 1995, UGG Holdings Inc was sold to Deckers Outdoor Corporation, who now owns trade marks for the brand in many countries all over the world. Deckers Outdoor Corporation is now enforcing its registered rights, preventing UGG Since 1974 from using the mark UGG.
There has been an ongoing online debate regarding what “Uggs” are the genuine or original. So, it is perhaps unsurprising that this conflict over the ownership and right to use the brand has come about.
This is another example of why it is so important for companies to protect their trade mark(s), not only in their own country, but also further afield.
- Kirsten Coetzee, Trae Mark Attorney
WHERE INNOVATION THRIVES
We put you in control of your destiny by organising, optimising, & monetising your Intellectual Property.