For context, in 2023, the global UGG boots market was valued at USD2.6 billion. Outside of Australia, the dominant player is Deckers, the owner of UGG trade marks in various jurisdictions. Deckers maintains its brand dominance through monitoring the use of the word ‘UGG’ as a trade mark and pro-actively taking steps to prevent other traders using the mark.
Back in Australia, it is a different story. There is a proliferation of both online and bricks-and-mortar stores selling UGG-labelled boots of varying price, provenance, fit and quality. Various vendors claim to be the ‘original’ or ‘genuine’ UGG boot, but for the consumer, differentiating between brands and imposters can be a challenge. As a result, there is reduced brand clarity and brand loyalty in Australia.
In 1971 Australian surfer Shane Steadman registered the name “UGH-BOOTS” as a trademark in Australia with an accompanying logo. UGH-BOOTS were sheepskin boots that were popular among surfers during wintertime.
Some years later this style of boot was sold to surfers in California by Brian Smith. A new company controlled by Smith then purchased the Australian trademarks from Steadman. US company Deckers bought Smith’s company and registered the “UGG” trade marks in the United States and multiple other countries.
UGG boots became immensely popular globally after Oprah featured them on her show in 2003. This rise in popularity led to Deckers increasing efforts to stop competing brands using the name ‘UGG’.
In response to ‘cease and desist’ demands from Deckers, Australian manufacturers sought a declaration from IP Australia that the word ‘UGG’ was a generic term in Australia, and did not qualify for trade mark registration. There are numerous examples of brands which have risked becoming ‘generic’ in various jurisdictions, such as ‘Kleenex’ and ‘Hoover’.
In 2006, IP Australia declared “UGG” to be a generic term in Australia for a specific style of sheepskin boot. Accordingly, in Australia, traders (including Deckers) cannot assert exclusive rights to use the word ‘UGG’. Today, as a result, the Australian market for UGG boots is diverse, and brands are differentiated through their logos and designs.
However, this is only the position in Australia. In the USA, consumers overwhelmingly consider UGG to be a brand name, and not a generic term. Building on its existing trade mark registrations, Deckers has successfully prevented its trade marks from becoming generic, descriptive terms and secured dominance in markets outside of Australia.
Most recently, an Australian band trading as “UGG Since 1974” has rebranded its Australian-made boots sold outside of Australia to “Since 1974” following litigation commenced by Deckers. It sells in Australia under the label “UGG Since 1974”.
In this way, Deckers effectively took over the global market for a product that originated in Australia.
It remains optional for traders to register trade marks. However, UGG boots demonstrate the power of trade mark registration and how, over time, a brand strategy can contribute to a significant competitive advantage.
UGGS also illustrate how, while a product or service can become generic in one jurisdiction, trade mark registration in other jurisdictions can support growth in those markets. Traders must develop a brand protection strategy that best supports their markets and growth plans.
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Thank you to Ava Giuliani for her contribution to this note.
For specific legal advice relating to trade marks and broader IP, please contact Eva Lin or Elizabeth Tylich.