Ugg: trade mark or descriptive term?
Ugg: trade mark or descriptive term? - Griffith Hack
|15 December 2010|
|In an interview that went live yesterday on Boardroom Radio Australia, Nicola Scheepers commented on a recently filed trade mark infringement lawsuit against Emu Australia for allegedly breaching the US company Deckers Outdoor Corporation (Deckers) which owns various trade mark registrations for or incorporating UGG in the US in respect of footwear.|
Nicola highlighted that Australia has seen similar trade mark cases in relation to the use of the term UGG before, again involving Deckers. In this instance Deckers was trying to preserve a registration for the UGG trade mark which it had in Australia, but was ultimately unsuccessful. This was due to the fact that the UGG trade mark was removed for non-use and as a result Deckers no longer has any monopoly rights in this term for footwear in Australia. Part of the problem Deckers has in Australia is that the term UGG and its phonetic variations are descriptive whereas that may not be the case in the US.
Nicola noted that whether a trade mark is generic, descriptive or distinctive depends on the mark itself and is relative to the goods and services used. In this instance the term UGG in Australia is in the dictionary and refers to a type of fleecy sheepskin boot and is therefore descriptive in Australia. As a result it’s not possible for any one person to monopolise that term in relation to those goods.
Nicola expressed that when businesses use their trade marks in another country they should consider whether or not the word has a descriptive meaning in that country. She also emphasized the point that just because a trade mark is descriptive in one country, this may not be the case in another country and could potentially be breaching a trade mark overseas.
Nicola urged that businesses should firstly conduct a trade mark search to make sure their trade mark, in relation to the product, is distinctive. If the trade mark is already registered in that country and is not descriptive then they may not be able to sell the goods in that country under the mark and may have to consider rebranding.
|Click here for the full interview|