Battle of the sheepskin boots

American company UGG Australia filed a lawsuit against competitor, Emu, for their use of the “UGG” registered trade mark on Emu sheepskin boots.This is not the first courtroom fight involving Emu in the USA – Deckers Outdoor Corporation, who own

UGG Australia, has previously sued Emu Australia in the Californian courts for describing their products as “ugg boots” on the Emu US website.

In defence of the most recent lawsuit, Emu argues that “UGG” is a generic word used in Australia, meaning “sheepskin boots”. This is irrelevant here, as the key question is whether the term “UGG” is generic in the US. If it is generic, then in common with other countries such as Australia, trade mark protection will not apply.

It may seem strange that Deckers/UGG Australia are not relying on design rights as well as trade marks to stop rip-offs. After all, it is the shape, style and colour of the boot as well as the term “UGG” that they are looking to protect. This is likely to be because basic designs are not protectable in the US. If the case was being heard in the UK Deckers/UGG Australia would also be unable to rely on design rights as under UK law designs must be new and original. Trade marks are easier to obtain as there is no originality requirement.

Protecting designs through trade marks can therefore offer an alternative means of protection against rip offs, where the rip-off uses a trade mark protected term or logo. Deckers/UGG Australia rely on their registered trade marks, having registered the UGG trade mark in more than 100 countries worldwide.

Turning back to consider the most recent lawsuit filed in the US, Deckers has a good track record in the US courtroom. In 2005 it was successful in the Californian courts in arguing that the UGG trade mark was not generic. As the strength of the brand has continued to grow since then, it would be surprising if the US court holds “UGG” to be a generic term.

Image: Ugg Jimmy Choo