Deckers win victory over Australian Leather: UGG brand trade mark dispute

The company Deckers has made the use of leather, suede and sheepskin an all year fashion necessity through its UGG boots (sold under the UGG band). The UGG boot is not only practical and comfortable, but it has become synonymous with leisure and luxury. This resurgence in popularity has given it a new generation of consumers.  As a result, it has been involved in constant litigation to protect its designs and trade marks.

The latest round of trade mark litigation involves the brand Australian Leather. On 2016, Deckers filed a legal action against Australian Leather, as it claimed that the company had intentionally infringed their UGG trade marks by using the name UGG on their shoes.

Initially, Deckers had argued that Australian Leather should be limited to selling their products in Australian and New Zealand, in order to avoid consumer confusion in the US (as the UGG brand has an established reputation there). 

Australian Leather argued that the term ‘ugg’ was one that originates from the 1960s surfing community in Australia. Thus, it found the term to be generic. However, the court rejected this argument, probably due to the fact, that the term ‘ugg’ has mainly been used globally in the last ten years to refer to Decker’s UGG trade mark.

The jury of the US District Court for the Northern District of Illinois, reached the finding that 12 pairs of sheepskin-lined boots sold by Australian Leather did in fact infringe Deckers’ US-based trade marks. Consequently, Australian Leather was ordered to pay $450,000 to Deckers. 

By Fatima Amedu