Iconic Australian brand ‘UGG Since 1974’ has been force to change its name after a lawsuit instigated by US shoe company ‘Deckers Outdoor Corporation’ over the trade marked word ‘UGG.’
Deckers Outdoor Corporation owns the trade marks for Ugg in more than 25 countries, including the United States.
As a result, the brand will now be known as Since 74 in all countries outside of Australia and New Zealand, where the company holds the local trade mark.
“We’ve been proudly making Australian boots for over five decades and three generations. We also own the trade mark in Australia and New Zealand, where the boots originated — where UGG boots originated,” Mr Watts said in a video posted to TikTok.
Mr Watts, who is the grandson of founders Arthur and Faye, said it was “extremely hard” to fight a lawsuit against a multi-billion-dollar company.
In Australia and New Zealand, the brand will continue trading as UGG Since 1974. But internationally, it will be renamed Since 1974.
“We are the original and we will still be the original no matter what our label says on the back of our boots,” he said.
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The lawsuit is still ongoing after being launched in April 2024, but it’s not the first time an Australian business has been sued over the UGG trade mark by Deckers.
Previously, Deckers sued Australian Leather over the rights to the term ‘Ugg’ for overseas sales. Australian Leather chief executive Eddie Oygur argued that Ugg is such a common word in Australia that it should be protected worldwide from trade mark infringement claims.
In May 2021, Oygur lost his trade mark US court appeal against the footwear giant.
Should Australian Place Names and Iconic National Products be Owned by Overseas Companies?
Similar situations have happened around the world where a common name has been granted protection to the country of origin (prohibiting international countries from claiming ownership of the term). France was granted ‘Champagne’, Portugal was granted ‘Port’, Greece was granted ‘Feta’ and Spain was granted ‘Sherry.’
The term Ugg boots are a quintessentially Australian product as the product and name were invented within Australia. They’re considered a part of Aussie culture and create local jobs and export earnings (hindered by the American company Deckers owning the trade mark rights).
Not only is the term Ugg claimed by Deckers but similar well known Australian landmark names have been claimed by overseas companies preventing Australian businesses from registering their trade marks internationally.
Bondi Wash (a Sydney cosmetics company) was initially unable to register their trade mark in America as the term ‘Bondi Beach’ is owned by Abercombie & Fitch. Other iconic place names that have been registered in the US include Uluru and Kakadu.
Other Notable Cases
In July 2019, tv star Kim Kardashian caused controversy when she announced a new fashion line named “Kimono Solutionwear” and filed a number of trade marks including ‘Kimono’ (in a stylised font), ‘Kimono Body’ and ‘Kimono World.’ ⠀
While reports initially said she was simply trade marking the word ‘Kimono,’ she was trade marking a specific stylised font of the word, not the word itself. However, that didn’t stop outspoken critics claiming Kardashian was appropriating Japanese culture and commercialising the word Kimono which is a traditional garment unique to Japan.⠀
Kardashian addressed the controversy, announcing that she would change the name of her Shapewear Fashion Line; “my brands and products are built with inclusivity and diversity at their core and after careful thought and consideration, I will be launching my Solutionwear brand under a new name.” This is now known as Skims.
Also in 2019, Disney filed a notice of opposition at the US Patent & Trademark Office (USPTO) against Chinese supply chain management company Qianhai Qisheng over their ‘Hakuna Matata’ trade mark.
They argued that Qianhai Qisheng would infringe on their goods and services related to the Disney brand if they released ‘Hakuna Matata’ branded balloons, confetti, infant toys and toy fireworks (among others).⠀
Disney had originally filed their contentious trade mark in 1994 after the release of The Lion King and was granted protection of it in 2003. Many people opposed the decision as they believed Disney were commercialising the Swahili term ‘Hakuna Matata.’⠀
The ‘Hakuna Matata’ trade mark opposition reminds us of the issues around international companies having the right to commercialise cultural terms/products or services that don’t belong to their country of origin.⠀
