One Trade Mark Dispute Could Be Getting UGGlier

Australian boot maker Ugg Since 1974 has changed its name amongst a trade mark infringement dispute which was brought by American rival Deckers Outdoor Corporation. Ugg Since 1974 has changed its trading name to ‘Since 1974’ in all jurisdictions other than Australia and New Zealand in order to avoid confusion.

The legal battle between the two brands started in 2016 when Deckers, who owns the exclusive sales rights for Ugg footwear in over 130 countries, sued Australian Leather, the owner of Ugg Since 1974. Deckers had acquired the Ugg brand in the US in 1995 for $14.6 million from the founder of Ugg Australia, Brian Smith, who had registered the word as a trade mark in 1985. Deckers then registered the word in a further 130 countries. The claim arose as a result of allegations that Ugg Since 1974 had started selling Ugg branded shoes in the US.

In most jurisdictions, Ugg branded footwear has strong connotations with the specific style sold by Deckers. However, in Australia “ugg” is used generically as a term to describe sheepskin shoes which were first popularised by surfers in the 1960s. On this basis, many companies in Australia and New Zealand have taken issue with Decker’ ownership of its global marks. Owner of Australian Leather, Eddie Oygur, has stated that fighting this infringement case is not just about him, but is about Australia taking back “ugg”.

Deckers brought a lawsuit against Ugg Since 1974 in the US District Court for the Northern District of Illinois Eastern Division in April 2024 for trade mark infringement. In a TikTok video posted by Todd Watts, owner of Ugg Since 1974, he shared that they would rebrand to ‘Since 1974’ in all jurisdictions other than Australia in New Zealand (where Ugg Since 1974 owns various trade marks containing the word ugg) as a result of the lawsuit. He stated that it is “extremely hard to fight a lawsuit against a multibillion-dollar company, especially as a family-owned Australian-made business.”

If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.

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