Australian Sheepskin Association Inc

Early in 2004 Deckers Outdoor Corporation threatened many Australian manufacturers of sheepskin products with legal action if they did not cease calling their sheepskin boots by their common name “ugg boots”.

A small group of these threatened manufacturers banded together to form the Australian Sheepskin Association Inc. to defend their right to use the ugg words – ug, ugh and ugg and to promote genuine Australian made sheepskin products.

American company, Deckers Outdoor Corporation (Deckers), who owns the brand UGG Australia, had their lawyers send out threatening letters to most if not all manufacturers and retailers in Australia selling ugg boots. In essence, Deckers claimed to own the trademark “ugg” which has been trademarked in the U.S. and “ugh” and “ugh-boots” which were old, unused trademarks they purchased in Australia in 1996.

Deckers argued that they had spent millions of dollars in marketing the term ‘ugg’ and those Australian manufacturers and retailers were misleading the consumer by calling uggs … well uggs.

For two years members of the Australian Sheepskin Association (ASA) searched for hard evidence that the ugg words in all spellings were generic. Thousands of references were found in magazines, newspapers and telephone directories in Australia, the U.S. and the U.K. going back to 1936. Many other documents were found with reference to “thigh high sheepskin Fug boots as early as 1916, which were worn by pilots and navigators in open-cockpit aeroplanes in World War I. Dozens of Statutory Declarations were made by people who had been in the ugg boot manufacturing industry for the past 50 years stating that sheepskin boots had always been referred to as ugg boots with various spellings.

In November 2005 Uggs-N-Rugs, members of the Australian Sheepskin Association, finally had a hearing with the Australian Trademarks Office (IP Australia) where their Trademark Attorney and Barrister presented the evidence and their case to have Deckers trademark for “ugh-boots” removed from the Register.

On 16th January 2006, the Trademarks Office handed down their decision that the evidence was “overwhelming” that the terms ‘ugg boots’, ‘ug boots’ and ‘ugh boots’ were generic terms and could be used by anyone in Australia to refer to sheepskin boots, and that the trademark ‘ugh-boots’ be removed from the Register. A complete copy of this decision is available online.

Mortels Sheepskin Factory, on behalf of the Australian Sheepskin Association, had applied for the removal of the trademark ‘ugh’ in 2004, and as a result of the above decision, Deckers agreed to the withdrawal of this mark from the Register without further hearings.

Deckers still own trademarks for the word ‘ugg’ in many countries for sheepskin footwear, but they can no longer legally threaten businesses in Australia from using the term in Australia.

Deckers brand UGG Australia is manufactured in China and Deckers is an U.S.A publicly listed company that also owns other brands of footwear.