Save The Ugg

26 January 2004

Our fellow compatriots,

Many of you will have read recently that an American company (Deckers Outdoor Corporation [Deckers] trading as Ugg Holdings, Inc. in America) are having their lawyers send out threatening letters to most if not all manufacturers and retailers selling ugg boots. In essence, Deckers claim to own the trademark "ugg" which they have trademarked in the US and ugh and ugh-boots which they purchased as trademarks here in Australia.

However, under trademark law (Section 24 of the Australian trademarks legislation) it was pointed out by a patent attorney recently in an online forum:

"Section 24 Trade mark consisting of sign that becomes accepted as sign describing article etc.

(1) This section applies if a registered trade mark consists of ... a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, ...

(2) [In such a case] ... the registered owner (a) does not have any exclusive rights to use ... the trade mark in relation to (i) the article ... "

Further evidence in support of the fact that the terms ugg/ug or ugh boots are generic and/or descriptive is shown when we begin looking at their history. We have documentation showing "Fug Boots" (presumably flying ug boots) worn by World War I pilots in 1917/1918. In addition, the Blue Mountain Ugg Boots company began back in 1933 and Mortels Sheepskin Factory (who sold long ugh boots) started in 1958. These dates precede ANY use of the ugg boot term by Deckers and its predecessors. Hold a pair of sheepskin boots up to any Australian and ask them what they are and the overwhelming majority will say ugg boots.

Deckers have successfully used the Verified Rights Owner (VeRO) program on eBay to have most non-Deckers branded ugg boots removed from eBay both in Australia and overseas. This has resulted in a loss of business by all those affected and such behaviour by Deckers is anti-competitive and may be against the Australian Trade Practices Act. Deckers are currently disputing the registration of domain names with "ug" (and derivatives) with a test case underway with the organisation responsible for the upkeep of the domain system - ICANN. If this dispute is found in favour of Deckers, no one else will be able to use "ug" (and derivatives) in their domain name.

Many livelihoods are being threatened by Decker's campaign which could only be described as another example of a giant US corporate intent on monopolising an industry that was never theirs to own in the first place. The difference here is that ugg/ugh or ugh-boots were accidentally allowed to go through the trademark process. But this does not mean the trademarks can not be challenged - something that we intend doing through a variety of methods.

In yesterday's "The Sunday Telegraph", it was reported that Westhaven Industries, a non-profit organisation, which employs 65 intellectually disabled people to make ugg boots at its factory in Dubbo, have also been threatened with legal action.

"We have been selling sheepskin products for 30 years, long before ugg boots became trendy in America, and to have to give up the name is just ridiculous," Mr Sullivan, production manager, said.

"It's like registering the name sneakers � it's a generic term that everyone uses."

Many of you might say - so what - why not call them something else? But how then does one re-educate the public as to their new term when it has taken at least 100 years to do so for their existing terms? Many of the Australian retailers have taken their product to the Internet where search words and phrases become paramount to having products found. If we can't call them ugg/ug or ugh boots then how WILL our business be found?

Whether you like or dislike ugg boots is not the issue. The point is that yet another Australian icon is likely to go offshore through a failure in our system. And millions of export dollars and thousands of jobs are likely to go as a result. I urge you all to spread the word and forward this email to as many of your online friends as possible. We are in the process of setting up an Australian sheepskin manufacturers and retailers association and have already taken steps to build a website outlining information surrounding the issue. It is located at https://www.saveouraussieicon.com and if you wish to help us further, please visit it for more information.

A fresh copy of this email can be found at: https://www.saveouraussieicon.com /email_campaign1.html

Our fellow compatriots - please stand up and be counted. Help us spread the word, lobby the Australian government and save our icon - the Australian ugg boot!

Thank you,

The Australian sheepskin ugg boot manufacturers and retailers