US District Court orders Australian Leather to pay damaged to UGG for willful infringement of Trademarks

UGG to pay a Huge Amount for Trademark Dispute

30 May 2019

May 30,2019:

A Jury for the US District Court for the Northern District of Illinois ordered Australian Leather to pay a huge amount to Decker’s for willfully infringing Decker’s 'UGG' trademark.

The “UGG” war between Deckers and Australian Leather started in the year 2016. Deckers alleged that Australian Shoe Company has used the “UGG” trademarks without its permission, which amounts to infringement. UGG is a registered trademark of the California based company Decker’s Outdoor Corporation in over 130 countries worldwide including the U.S., the European Union and China. The Court developed an observation that twelve pairs of sheepskin-lined boots sold by Australian Leather infringed “UGG” trademark.

The Lanham Act is the primary federal trademark statue of law in the United States. In this case, the defendant represented UGG word in a generic sense. Statutory and actual damages are awarded to the owner of the infringed material, as per law.

Eddie Oygur, the owner of the Australian Leather fought the case under a belief that a UGG is a generic term, referring boots made of the skin of sheep, it cannot become a trademark under any circumstances. Australian leather first sold footwear bearing the UGG mark to the U.S. on October 27th 2014. Thus twelve footwear and two socks were sold worth $2000 between 2014-16 through the internet.

Brian Smith founded the sheepskin boot company UGG. Deckers acquired UGG Holdings and its UGG trademark in 1995. Deckers commissioned a survey of women in the age range between 16 to 54, who purchased UGG branded boots of Decker. It registered the “UGG” marks in Australia as “UGG Australia”. Deckers have 40 stockists in the country and charge $ 40 more than the local manufacturer.

Thus Decker’s Outdoor Corporation filed a trademark infringement case against Australian Leather PTY. Ltd. to limit the sales of Australian Leather’s boots to Australia and New Zealand, so that it won’t cause a likelihood confusion of brand names in the United States.

On May 10th 2019 the Court after hearing the argument of both sides observed that Australian Leather has used the name “UGG” with a wilful intention to do business with the mark. The Australian Leather defended the case on a point that “UGG” is a generic term. The Court rejected the argument. Earlier Decker prevented China from counterfeiting the trademark. The small business company Australian Leather faces a great loss by getting defeated in this case.