New York - On May 10, 2019, an eight-person jury in Illinois federal court found Sydney-based company Australian Leather Ltd. and owner Adnan Oygur liable for willful infringement of the “UGG” trademark (U.S. Reg. No. 3,050,925), registered to Deckers Outdoor Corporation since 2005.

These boots were made for walkin’– no not your ugg boots, my UGG® boots

In Deckers Outdoor Corporation v. Australian Leather Pty Ltd, 1:16-cv-03676 (N.D. Ill.), Oygur, accused of selling 12 pairs of boots called “ugg boots” online to U.S. customers, was ordered to pay Deckers 450,000 USD in statutory damages and possibly millions more in attorney’s fees. During the four-day trial, Oygur tried -but ultimately failed- to convince the Illinois jury that in Australia, “ugg” is a generic term for the sheepskin boot style of footwear, claiming it should never have been granted trademark protection in the first place. He based this argument, in part, on his 35 years of experience in the sheepskin industry and 20 years of manufacturing the “ugg boots.”

Deckers’ victory perhaps showcases the importance for brand owners to actively and aggressively police and protect their trademarks, lest a rogue infringer, however sympathetic, chip away at their brand—and its attendant intellectual property rights.

Written by Preetha Chakrabarti, attorney of Crowell & Moring. Crowell & Moring LLP is an international law firm with an antitrust/competition law practice representing clients across the United States as well as in Europe. Our European competition (antitrust) practice covers the full spectrum of European competition law matters, including compliance, distribution agreements, cartel investigations, abuse of dominance, damages litigation, IP/antitrust and mergers.

 

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