Save Our Aussie Icon - The Great Australian Ugg Boot

Issue 6 - The Australian Sheepskin Association Supporters Newsletter

Tuesday 27 September 2005

Dear supporter,

We would like to thank all of you who have supported - and continue to support - our cause, both morally and/or financially.

The battle to keep the Australian term 'ugg boot' generic (and/or descriptive) is still raging. 

Unfortunately, in the US case, brought by US Deckers Outdoor Corporation (Deckers) against US company Koolaburra (importers of Australian made ugg boots) the US Judge ruled against Koolaburra - in a summary judgement (i.e. the case did not go to a jury). Deckers had claimed infringement of their US 'UGG' trademark, by Koolaburra referring to their ugg boots as Koolaburra 'ugs'. Our Intellectual Property (IP) legal advice is that the Judge did not consider that the original US 'UGG' trade mark (now owned by Deckers) was gained by a false declaration (in 1986); that Koolaburra had been referring to their ugg boots in the US (unchallenged) as 'ugs' for around 13 years; that evidence showed many years of the descriptive (and/or generic) use of the word ugg in the US; and numerous dictionaries listed the word ugg (also in different spellings). 

Also (and more recently) we were unsuccessful in preventing Deckers from registering 'Ugg Australia' as a trademark in the UK. This was despite the Australian Sheepskin Association Inc. (ASA) submitting a legal challenge and mass of evidence to the UK trademark office (through a UK IP lawyer) to show the word 'ugg' was descriptive, and/or generic in the UK. Our legal submission was rejected and the 'Ugg Australia' trademark was subsequently registered to Deckers. This means that a US company, trading as Ugg Australia, making most of their ugg boots in Asia, now own the only registered 'ugg' trade mark in the UK which we consider to be morally wrong and misleading.

Although this is not good news, we certainly haven't given up the cause and we continue to refer to ugg boots as ugg boots - and believe that the Australian actions have a very good chance of achieving success. The trademark office in Australia (Intellectual Property Australia - IPA) will be conducting a Hearing on the first of the issues relating to Australian use (non-use of the trademark 'UGH-BOOTS') in the foreseeable future and we remain extremely confident.

We have recently exposed the false labelling of fake ugg boots by a large Australian importer. The boots carried large labels in the shape of a map of Australia claiming 100% Wool Lining and sewn in labels claiming Australian Merino Wool. Official tests on these boots proved they were 100% synthetic lining. As a result of this exposure retailers removed the falsely labelled boots from their shelves.

Jumping Dog Productions Pty. Ltd. is currently filming a documentary about the ugg saga which will be released early next year.

There has been ongoing media coverage in recent months.

Thanking you

Australian Sheepskin Association Incorporated