Ugg boots are widely understood to have been invented in Australia. Thus, the current headlines involving Australian company UGG Since 1974 have sparked outrage as it becomes the next in a long line of ugg boots producers that US company Deckers Outdoor Corporation has threatened with a lawsuit due to the use of the name ‘ugg’.
In Australia, the term ‘ugg’ was deemed a generic name for sheepskin boots and cannot be trade marked after another ugg boot producer was threatened by Deckers in 2006 and the matter was taken to the Australian Trade Mark Office.1 However, globally in major markets such as the United States and the United Kingdom, Deckers owns the UGG trade mark and operates under the name UGG. Deckers are now pursuing UGG Since 1974 for using the name to sell sheepskin shoes outside of Australia, forcing the company to change its name to ‘Since 1974’ when selling products outside of Australia and New Zealand.
The case for a geographical indication?
A longstanding argument has been made that ugg boots should be given a geographical indication (GI) to be used on sheepskin boots that are authentically made in Australia. Data from the World Intellectual Property Organisation (WIPO) revealed that there were 58,900 protected GIs in existence worldwide in 2023.2 Some of the more famous GIs include champagne from the Champagne region in France, Parma ham from the Parma region in Italy and Darjeeling tea from the Darjeeling region in India. But when it comes to uggs, are they distinctive enough to claim a GI?
A GI is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. GIs are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production. It is possible for GIs to apply to an entire country as a region. Irish Whisky and Irish PoitÃn have a GI if the production of the spirits takes place anywhere on the island of Ireland and follows the agreed upon production processes.
Geographical indications in Australia
There are two ways to register a GI in Australia:
- Certification trade marks (CTM), administered by IP Australia; or
- Geographical indications for wines administered by Wine Australia.
CTMs indicate goods or services that meet certain standards. The use of a CTM as a GI indicates to consumers that a product comes from a specific geographical region and therefore can indicate that it has a distinctive set of qualities or reputation attributable to that region.
Applications to register a GI are assessed by Wine Australia’s Geographical Indications Committee using a range of factors such as the boundary of the GI and the conditions of use.
Could ugg boots acquire a geographical indication?
A GI for ugg boots in Australia would be gained through a CTM. To be eligible for registration as a CTM GI, the location must have a reputation for special characteristics attributed to the area that affects goods produced there, implying distinctiveness.
Therefore, ugg boot producers would need to show that the entire region of Australia creates a distinctiveness when it comes to ugg boots produced within the country compared to those produced overseas. Producers would also need to agree on specific rules and regulated standards of quality and production that ugg boots would need to meet in order to use the GI.
Rules on how GIs are registered and protected are subject to each country’s legal system. Unfortunately, in almost all jurisdictions, conflict with a prior mark is an obstacle to GI protection. This is due to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement which Australia became a party to in 1995. Article 24(5) of the TRIPS Agreement states that if a trade mark has been registered in good faith prior to a GI being protected in its country of origin, then the trade mark will remain valid and eligible to use. Thus, even if ugg boots were successfully given a GI in Australia, Deckers would be able to continue to use its trade mark worldwide as the trade mark was registered first.
HWL Ebsworth’s Intellectual Property team has extensive experience advising on trade marks and other avenues for protecting intellectual property. Please do not hesitate to contact us if you would like to discuss any branding issue.
This article was written by Luke Dale, Partner and Bellarose Watts, Law Clerk.
1 Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5
2 World Intellectual Property Indicators 2024
