All All Industry Insights Industry News Media Release Member Only Articles NRA Events NRA Legal NRA Partners NRA Projects NRA Training and Development Policy & Advocacy Policy Updates Technology Tenancy & Leasing Testimonials Thought Leaders Weekly CEO Update WHS Update

A guide to trademarking

June 24, 2016

Anyone in business would know that it is always a good idea to register your trademarks to protect them for your business. In fact, there’s a little saying that’s been going around, especially when it comes to the topic of UGG boots:

“Don’t be an Ugg. Register your trademark before it gets Ugg-ly”

While it seems that there are many trademarks registered in Australia using the word “UGG” in some form or another, in a global economy, the situation is not so straightforward.

Sharon Givoni, a Melbourne-based IP lawyer and one of the speakers in the inaugural Retail Therapy business seminars at Reed Gift Fairs Melbourne August, shares her expertise on the tumultuous world of trademarking.

Fights over this word have had a long history – starting in the 70s, when Australian surfer Shane Stedman registered the name “UGH-BOOTS” as an Australian trademark for sheepskin boots.

Another Australian surfer, Brian Smith, then set up his own company in the US to sell the boots. Smith subsequently sold his company to a US Company, Deckers Outdoor Corporation Pty Ltd, who then registered various US trademarks containing the word “UGG”.

This is pretty much where the drama began. In 1999, Deckers began sending out threatening letters to Australian UGG boot manufacturers requesting that they stop selling the boots by reference to the brand name “UGG”, because they had an Australian registered trademark for the word.

It is hardly surprising then that the Australian companies were unhappy about this development and grouped together to form the Australian Sheepskin Association Inc., claiming the word “UGG” had been used since the 1920s and no one, including Deckers, should be able to own it for themselves.

At the time, several general managers of some major sheepskin boots companies were quoted as saying that the word UGG was “as generic as a meat pie or tomato sauce” and that if they had to stop using the word “UGG”, they would basically be prevented from “a right to own their own history.”

The whole thing was resolved – albeit indirectly – when the Australian Trademarks Office removed several of Deckers’ trademarks for non-use.

The issues resurfaced in 2010, however, when a court ruled that Luda Production Pty Ltd had the right to use and register three different “UGG AUSTRALIA” trademarks in spite of Deckers’ opposition to all three, based on factors including reputation and prior use.

The real difficulty arises in the international use of the word “UGG”. Despite anything that happens in Australia, the fact of the matter is that Deckers still owns the UGG trademark in the US and people in the US would recognise the word “UGG” exclusively with their shoes.

Australian companies may be okay to manufacture and sell in Australia, but if they do in fact sell and ship overseas, it could be trademark infringement, even if an Australian company doesn’t have a shop front or is not actively marketing to international customers.

This is what has happened to Eddie Oygur of Australian Leather, who has found himself in hot water with Deckers for selling online to US customers. If another business makes a similar mistake, it could ultimately spend thousands defending any action brought by Deckers.

The lesson is, if you do have a trademark, not only do you need to be protected and registered in Australia, but also in any others countries in which you will be using it.

The other thing to bear in mind is that iconic words can be trademarked even though they might seem cultural, iconic or generic, including:
• BLOODY OATH (for clothing and alcoholic beverages);
• G’DAY (for cosmetic goods);
• a “SHE’LL BE RIGHT” logo (for clothing); and
• TRUE BLUE (for alcohol).

So what can we gather from all of this?

Firstly, is to think ahead.

If you have an Australian brand with plans to expand overseas, register it as a trademark in all relevant countries. Otherwise, someone else can get in first in that country.

Secondly, is to take steps to ensure your trademark does not become generic, including using the ® symbol and seeking advice to stop anyone who does use your registered trade mark.

This article was written by Sharon Givoni, a Melbourne-based intellectual property lawyer that advises clients in many areas of the law, including branding and marketing Australia-wide. She has recently written a book titled “Owning It: A Creatives Guide to Copyright, Contracts and the Law”, which has been a huge success and she can be contacted on: 0410 557 907 and at info@iplegal.com.au.

This article is not to be relied upon as a substitute to tailored legal advice and is intended as a general overview of the subject matter only.

Sharon will be presenting a session entitled “The Law Made Easy for Creative Businesses” as part of the Retail Therapy program at Reed Gift Fairs Melbourne August.

NRA Media

  • National Retail Association strengthens support for members on leasing and tenancy
    June 01, 2021

    We are pleased to have strengthened our partnership with Lpc Cresa, a leading advisor to retail tenants across Australia and New Zealand, to assist our…

    Read More
    September 03, 2018

    To download the nomination form, click here

    Read More
  • Closing Loopholes Bill No. 2 passes Parliament 
    February 20, 2024

    Earlier this month, it was confirmed that both Houses of Parliament passed the second tranche of amendments to the Fair Work Act 2009 (Cth) under…

    Read More
  • Jump start your business for 2021 and step ahead of the competition
    November 20, 2020

    2020 has undoubtedly been one of the most challenging years for all of us. It has created unprecedented trends in every industry, and shown retailers…

    Read More
  • NRA members winners in new partnership with Aussie Broadband
    November 16, 2020

    You must be logged in to view this content.

    Read More

What our clients say

Want to chat?
Contact our team today!