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Ugh! US corporate giant steals Australian brand and sues.

psionl0

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psionl0
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Australian ugg boot maker Eddie Oyger has been ordered by a Chicago court to pay Deckers Outdoor Corporation US$450,000 for selling 12 ugg boots in the US. Deckers is the legal copyright holder of the "ugg" brand and has been selling them as "Ugg Australia" up until 2017.

And how did this corporation get to own a brand name that was in common use in Australia for decades?
Despite its Australian origin as a generic term, the word ugg was registered as a brand in the US in the 1980s by Australian entrepreneur Brian Smith, who later sold the trademark to Deckers.

Ever since, Australian bootmakers have been banned from exporting if they use the word ugg, making it difficult to compete against Deckers' global Ugg Australia brand.
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https://www.abc.net.au/news/2019-05-11/western-sydney-ugg-boot-maker-loses-case-in-us/11104374

Needless to say, despite frequent appeals to the Australian government, no politician was game enough to oppose this corporate takeover.
 
It's a big deal in China too. In China, it's "first to register" and anyone wanting to sell their products in China will usually discover that someone else already owns it.
 
I remember an Ugg boot store in the Belly Up building, Solana Beach, Ca. in 1987. If that was Brian Smith, he's had the trade mark in use for a long time.

And as I recall, step one in a trade mark suit is to send a letter of explanation, asking the interloper to quit. A $450K settlement sounds like somebody got hostile.
 
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The thread title is wrong. Triply wrong.

First, there was no brand to steal. That's the actual "problem" in the OP story.

Second, there was no stealing. The brand, when actually created, was sold fairly to a paying customer.

Third, while a US corporation ultimately sued to protect the brand they bought, it was an Australian who registered the brand in the first place.
 
In reading the Wikipedia article on this subject, it seems to me that the claim that Ugg was a generic phrase in Australia is likely just a wee bit of a lie. Australia apparently allowed registration of "Ugh" as a trademark for decades (until it was dropped for non-use), so claiming "Ugg" as generic in Australia is just silly or, again (if we accept the Wiki timeline) a lie. The guy who started "Ugg" even eventually bought the "Ugh" name in an effort to settle the issue and then eventually abandoned that trademark.

This thread seems based on a fundamentally false premise: That the name Ugg/Ugh was so generic that it couldn't be trademarked. Australia itself granted the Ugh trademark which ended its existence owned by the company making Ugg brand boots.

It would be like denying Kleenex their trademark because their product was so successful that it became the common term for facial tissue. While Kleenex can't sue people for informally calling another facial tissue by their name, they can damn sure sue somebody for selling facial tissue and calling it Kleenex.

$450,000 sounds like an excessive judgment for so few boots, but I think the judgment is so high because it was decided the boots were sold in an effort to harm or profit from the Ugg trademark.

I'm open to being corrected with more evidence but, at the end of the day, given that Australia has apparently awarded "Ugh"/"Ugg" trademarks more than once (see link above), anyone claiming it as a generic term doesn't seem to have a leg to stand on.
 
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And you can lose a trademark if you don't take reasonable steps to protect it, so if the USA company didn't try to defend it they could lose it entirely. Larger companies with many trademarks often have a person or team tasked to looking for trademark infringements.

Theprestige summed it up well in this incident, can't see anything unfair nor unjust.
 
Darat said:
And you can lose a trademark if you don't take reasonable steps to protect it, so if the USA company didn't try to defend it they could lose it entirely. Larger companies with many trademarks often have a person or team tasked to looking for trademark infringements.

Theprestige summed it up well in this incident, can't see anything unfair nor unjust.
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That's why you get these occasional horror stories about some small restaurant owner being sued by Coca-Cola because they handed a Pepsi to someone who asked for Coke. They don't want to be the bully, but must defend the trademark.
 
Trebuchet said:
That's why you get these occasional horror stories about some small restaurant owner being sued by Coca-Cola because they handed a Pepsi to someone who asked for Coke. They don't want to be the bully, but must defend the trademark.
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I'd like to read one of these horror stories. Link?
 
Babbylonian said:
I'd like to read one of these horror stories. Link?
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The vampire smiled menacingly, fangs gleaming. "I'm afraid that as far as the average consumer feels, between Coke and Pepsi there is no real difference!"

"Noooooo!" screamed the Coca-Cola executives, their flesh bursting into flames as the dreadful reality of the Cyclopean abyssal madness consumed them with non-Euclidean geometries.

Frankenstein looked startled. "I say, these are Hydrox, not Oreos! And I couldn't even tell!"
 
TragicMonkey said:
The vampire smiled menacingly, fangs gleaming. "I'm afraid that as far as the average consumer feels, between Coke and Pepsi there is no real difference!"

"Noooooo!" screamed the Coca-Cola executives, their flesh bursting into flames as the dreadful reality of the Cyclopean abyssal madness consumed them with non-Euclidean geometries.

Frankenstein looked startled. "I say, these are Hydrox, not Oreos! And I couldn't even tell!"
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Frankenstein's monster shook his head sadly at his creator. "Seriously, dude. Everybody knows that Hydrox came first. Crack a Wikipedia sometime!" Then, a mob led by Lord Nabisco put the monster to the torch.
 
Trebuchet said:
That's why you get these occasional horror stories about some small restaurant owner being sued by Coca-Cola because they handed a Pepsi to someone who asked for Coke. They don't want to be the bully, but must defend the trademark.
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You should try being called McDonald! No way you can put your name to anything, you might think my friend Wendy McDonald was a bit Wimpy when she claimed her Husband (a bit of a Beefy Boy) had a Whopper; then got hit by multiple law suits.
 
I have three trademarks registered.
They are all variation's on my company name and they cover areas that I may need protection in.
You pay a fee for each area of trade you want covered.
Similar names are also covered for example if your trademark was 'Dexter's Cove'

Anything similar like Dexterscove Dexter Cove etc would also be covered.
Before you apply for registration you do a search and it will throw up any names similar to the one you are trying to register.
Once you put in your application it is reviewed and you are contacted with any possible conflicting trademarks and they are contacted to see if they want to object.
Then your trademark is published in a journal where it is visible for 3 months, if there are no objections after this time you are granted the trademark.

I also set up a Ltd company under the same to stop anyone 'grabbing' it. The company is registered but not trading.
I also got the .com and .co.uk domains in the same name.
 
theprestige said:
The thread title is wrong. Triply wrong.

First, there was no brand to steal. That's the actual "problem" in the OP story.

Second, there was no stealing. The brand, when actually created, was sold fairly to a paying customer.

Third, while a US corporation ultimately sued to protect the brand they bought, it was an Australian who registered the brand in the first place.
Click to expand...


Well that was a short thread! Triple fail!
 
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