*Please note – the main story below was written in 2009. Some of the links may be broken but they will be left as-is because they contain the original addresses for the reference information & quotes used. Other links were updated in June 2016; as Deckers has yet again launched legal action against an Australian manufacturer of ugg boots.
2014 March addition:
After reading the below story; appreciate the irony of American-owned “Ugg Australia” vehemently cautioning consumers about buying ugg boots from misleading companies? “A counterfeit product is a fake or imitation made with the goal of tricking you into believing it is genuine.” (Quote from this Deckers Outdoor Corporation website page.) Surely an American company running a business with ‘Australia’ in the title, fits Decker’s own definition? How many people, worldwide, have bought Ugg Australia footwear, believing they’ve purchased a product from a company owned by Australians, or run by Australians, or at least made in Australia?
Ugg boots – footwear made from tanned sheepskins, complete with the wool on the inside – have been popular in Australia for decades. Apparently they date back to the first world war, when aviators favoured wearing them in the non-temperature controlled aircraft of the time. The first pair I remember owning was in the early 1970s. A splendid long lace-up-the-front pair. You can’t beat ugg boots for keeping your feet warm when the air temperature is below zero, and they do look good with long skirts and Indian embroidered shirts. (Fair go, this was the early 1970s!)
So imagine the surprise of Australians in December 2003 when an American company called ‘Deckers Outdoor Corporation’ sent Australian ugg boot manufacturers letters threatening legal action if they did not stop using the word ‘ugg’ or ‘ugh’. Deckers Outdoor Corporation claimed they owned the registered trademark of the word ‘ugg’ – not just in the U.S., but in Europe and elsewhere – including Australia. The Decker’s Australian trademark claim was challenged in 2005 by Bruce and Bronwyn McDougall, owners of a Western Australian business called Uggs-N-Rugs. A ‘David and Goliath’ battle if ever there was one. In 2006 the McDougall’s case was upheld, it was directed that Decker’s trademark registration of ‘Ugg’ be removed from the Australian Trademark registry, and costs awarded against them. The Registrar of Trademarks delegate’s decision and reasoning makes very interesting reading.
Not to be outdone, apparently Deckers then went on to register the internet domain name ‘uggsnrugs’; so the McDougall’s had to be content with uggs-n-rugs, though this was their business name (not Deckers). (Sounds like a classic case of cyber squatting to me, but that’s another topic.) What Deckers Outdoor Corporation have written on www.uggsnrugs.com is astonishing. Deckers mentions that ‘dozens of unlawful websites and thousands of auctions have been shut down’, and there are direct threats to Australians who sell ugg boots on their own websites, and directions to journalists on how to correctly use the term ugg (‘it must be in capital letters; it is not a noun, it is an adjective; never just say ‘ugg’; it must be ugg boots, ugg slippers, etc’ and ‘always spell it ‘ugg’, not ‘ugh’ or ‘ug’, etc).
Deckers is a wholly owned American company, but their business is called ‘Ugg Australia’, apparently owned by ‘Ugg holdings’. Despite having ‘Australia’ in the title, their website has ‘America’ written all over it (figuratively speaking); from the ‘fall’ (autumn) range, to ‘Dakota’ styles and American spellings such as ‘cozy’. Hilariously, the website home page includes a link straight to the United States or the United Kingdom – but Australians have to choose Australia from a lengthy drop down menu listing every other country they export to, from Austria to Ukraine.
Decker’s ‘Ugg Australia’ website includes a ‘counterfeit warning’, which is very lengthy, but worth quoting:
Counterfeit Warning: the presence of counterfeit products in the market place is an unfortunate reality for many luxury brands including UGG (R) Australia. Though we aggressively pursue removal of this product through various means, please be aware that there is counterfeit UGG (R) Australia product being offered to consumers, primarily through on-line websites, auction sites and trade boards. If you are viewing UGG (R) Australia product on-line anywhere other than uggaustralia.com and the domain name includes ‘UGG’ or any variation of this word, or includes on of our style names in the domain address, e.g. ‘Cardy’, this produce is most certainly counterfeit. If you do not buy UGG(R) Australia product from uggaustralia.com. or one of our authorized retailers listed in the Dealer Locator you should assume you are purchasing counterfeit product. Furthermore if you are purchasing on-line and delivery to you is scheduled from anywhere other than the United States or from our authorized distributor’s warehouse (Davies Turner, Bristol) in the United Kingdom (for UK recipients only) the product is suspect. Please review our Warranty section on the limitations to our assistance should you purchase counterfeit UGG(R) Australia product.’
I am still falling around laughing when I re-read this piece of astonishing arrogance. So an American company buys one of many ugg booting making businesses, keeps the word ‘Australia’ in the business name, shifts the manufacture to China, registers trademarks all around the world, including in the country of origin where it is a generic term, and says anyone buying ugg boots that don’t come from the U.S. are buying ‘counterfeit’ goods. On top of that, they state on uggsnrugs that ‘misleading the public is not fair competition’. They are dead right! A little self-examination is perhaps slightly overdue? This is like an American company buying an Australian owned business producing thongs (rubber footwear, like sandals only simpler), shifting their manufacture to China, registering the term ‘thong’ as a trademark in as many countries as possible, including in Australia, then trying to prevent all the other Australian thong manufacturers – that have been making thongs since Adam was a boy – from calling their thongs ‘thongs’, and accusing them of copying – producing counterfeits and fakes. It’d be hilarious if they weren’t serious. Would Americans put up with an Australian company doing something similar with waffles, hamburgers or tyres?
If Deckers had any sense or sense of justice, they would have re-launched their footwear line with a unique name, like ‘Deckers Boots’ (or whatever), to distinguish them from the generic product that has been produced in Australia, by innumerable different businesses, for many decades. The word ‘ugg’ is undoubtedly derived from ‘ugh’ (as in ‘yuck, look how ugly that footwear is’) or as some suggest, ‘ugly’ (as in ‘crikey, that footwear is very ugly’). Trademark registrations cover ugg, ug, ugh and any combination of letters that sound the same. Surely an admission that it’s a generic term – slang – that doesn’t have a fixed spelling, as recognised brand names always do? And surely the word ‘ugg’, in itself, is no great prize for Deckers to get so hot and bothered about? Unless the term ‘ugg’ does actually have some value as an Aussie icon? In which case, it would be an admission that ugg is an established cultural/generic term in Australia. They reckon they’ve spent millions on promoting ugg boots to people who have never heard of them before. So surely this means re-naming their ‘luxury brand’ uggs with a unique title would have been smarter marketing, to differentiate their ‘superior’ product from that worn by Aussies who are debonaire-deficient? And money would surely have been infinitely better invested in re-branding, rather than endlessly chasing small business ugg boot makers on the other side of the Pacific Ocean, expending ceaseless quantities of time and money on litigation?
The Deckers website says the UGG (R) Australia ‘story’ began in 1978, when an Australian surfer called Brian Smith took some ugg boots to California. Who had manufactured these ugg boots? It doesn’t clearly state who actually made them. Deckers Outdoor Corporation bought the company in 1995. Well before 1978, ugg was an entrenched generic term in Australia – listed in dictionaries as a common term. What a pity that the US trademark registrar didn’t think to check that the term wasn’t generic in Australia, before registering ‘ugg’ as a trademark in the U.S. (generic terms can’t be trademarked; trademark registrations are only local – not international – however increasing internet sales complicate matters). The only reason that this trademark registration in the U.S. would not have been challenged by an Australian company is that there is no sufficiently large Australian ugg boot manufacturer who would have deep enough pockets to take on a multi-million dollar American company on their home ground.
The boots we all wore in the 1970s were made by various companies and I don’t imagine it would have occurred to any of them to register ‘ugg’ as a trademark – they would have been laughed out of the country. It would have been like trying to register ‘treadley’ (push bike) or ‘snag’ (sausage).
A business person told me a long time ago that if a big company was trying to get rid of a similar business there was only ever one reason why – the hip pocket nerve – either the other business was already putting a dint in their profits, or they were expected to. Decker’s ongoing threat of legal action on their website suggests that they either didn’t do their research and understand that ugg was already been an established generic term in Australia, or they did but ignored it, not realising just how profitable Aussie ugg boots would be, once they were marketed in countries that had very cold climates. In just one year, 2003, Deckers turned over $37 million USD.
Of course, there are still plenty of ugg (ug or ugh) boot makers in Australia – who use Australian sheepskins, and employ Australians to make the boots. Such as Melbourne-based Australian Ugg Boots Pty Ltd (which states that Decker’s ‘UGG Australia’ boots are made in China); and Ugg Boots Made in Australia (with a disclaimer pointing out that they are not in any way associated with Deckers). And, of course, Uggs and Rugs, Bruce and Bronwyn McDougall’s ugg boot manufacturing business – the small family owned business that ensured that Australians can still use the term ‘ugg’ within our own country, and not be sued by an American company.
In 2006 Jumping Dog Productions released ‘The Good, The Bad and The Ugg Boot’, a film on the whole saga. It can be purchased from the ABC (Australian Broadcasting Corporation). The Sydney Morning Herald also has an excellent summary, written before the McDougall’s successful legal action, which includes information on E-Bay banning Australians from selling ugg boots on E-Bay. AZRights,a London-based intellectual property rights law firm, also has an interesting article on the Deckers ugg boot saga, and there is also a specific page on the Australian Government’s IP website. There is an extensive list of other media articles on Save our Aussie Icon. Interestingly, there are also relatively recent overseas discussions on the Decker’s ugg legal action; eg in America and in the United Kingdom.
The terms ‘ugg’, ‘ugh’ and ‘ug’ were finally removed from the Australian Register of Trademarks by IP Australia in April 2009, three years after the original decision (and lodgement of appeal/s by Decker). Unfortunately, according to the Decker’s website page http://www.uggsnrugs.com/, they still have 45 registrations covering 79 countries and ‘additional registrations are pending’.
Just make sure that if you’re buying footwear made of sheepskin, you buy the genuine article. Real sheepskin and real wool. And if you want Australian-made ugg boots, read the fine print about exactly who owns the company, exactly where it is based, where they source their materials, and where the ugg boots are made. If their website doesn’t state it clearly, then ask them.
As The Australian Sheepskin Association states – as for pearls and diamonds – price is one of the best indicators of whether or not goods are the genuine article. Good quality sheepskin isn’t cheap, unlike synthetic materials. So if the ugg boots are relatively cheap (and they aren’t just good gear marked down to a special ‘sale’ price), then you can expect cheap (bodgy) quality – synthetics that result in sweaty feet. The Australian Sheepskin Association has a list of genuine Australian ugg boot makers.