Australian company Emu Australia (pictured) and US company Decker Outdoor Corporation are currently battling over the use of the term Ugg and its trademark ramifications.
On December 30 2010 Emu Australia counter-sued Decker Outdoor Corporation for the cancellation of the UGG trademark in the US. Emu’s suit alleged that Decker’s original generic “ugg” trademark was obtained after a false statement to the US Trademark Office and was therefore invalid. Potentially, the false statement could result in Decker’s eventually losing all of its registration rights in the US.
“Decker’s have aggressively marketed their Ugg Australia marks and many consumers are unaware of the fact that Ugg Australia is in fact American owned and based,” said Emu managing director Paul Neate.
[A separate Australian owned and made brand, Ugg Australia, does exist, but is owned by Victorian company Luda Productions, which has no relationship with Decker Outdoor Corporation.]
“There is a lot more to be told about the history of the word “ugg”, not only in Australia and Asia but also in the US, Canada and in the UK and Europe,” Neate said. “We believe in time the courts will come to hear the truth in different jurisdictions and will hand down decisions that make this history clearer for all concerned.”
Emu Australia prided itself on contributing key innovations to the ugg boot style, he added.
“Sheepskin and wool products are what we do. We offer the best in class water resistant sheepskin boots that are made using premium Australian sheepskin and we encourage consumers be the judge. It is innovations such as our Emu soles, removable arch support inserts and water resistant sheepskin that threaten larger competitors who have been dishing up the same product offering year after year.”
Emu Australia’s counter suite followed news reported 25 December 2010 that Decker Corporation was challenging Emu’s use of the “ugg” name, by filing a trademark infringement suit in United States District Court in California in a bid to stop Emu using the title on its sales website.
Decker acquired rights to the name Ugg Australia in 1995 and reportedly describes its sheepskin products as “one of the biggest stories in the footwear industry in recent decades”.
Emu, which sells sheepskin ugg boots in 67 countries and has offices in Germany, Britain and California in the US, boasts a string of celebrity clients including actresses Katie Holmes, Ashley Greene and Kate Hudson, and British fashion industry icon Alexa Chung. Managing director Paul Neate said his company’s Woolmark-branded sheepskin and wool apparel and accessories had proven so popular in North America and Europe that stocks were selling out. Decker was uncomfortable because its lines were being pushed off the shelves in many retail fashion outlets, he claimed.
Emu Australia also stated that while the name “ugg” is a generic term in Australia, used by almost 70 sheepskin footwear makers, adding that Emu did not promote its products in overseas retail stores as “ugg boots”.